The Three Faces of Prometheus: Alice and Generic Application

Today continues our mini-symposium on Alice v. CLS Bank with a guest post by Jeffrey A. Lefstin, Professor at the University of California, Hastings College of the Law.  

Alice Corp. marks the Supreme Court’s eighth subject-matter eligibility case since the 1952 Act. Without question, the most problematic aspect of the Supreme Court’s § 101 jurisprudence has been discerning the actual test for patent-eligibility. In Mayo v. Prometheus, the Court purported to establish a general framework for subject-matter eligibility: that to be patent-eligible, a claim must include an “inventive concept” beyond an underlying fundamental principle, such as a law of nature, natural phenomenon, or abstract idea. The Court’s omission of significant reference to Mayo in Association for Molecular Pathology raised some doubt as to whether Mayo defined a universal test for eligibility under § 101.  Yet Alice Corp. appears to confirm that Mayo is a universal framework for discriminating between ineligible principles and patent-eligible applications.

Mayo’s ambiguity led to the Federal Circuit’s fracture when it heard CLS Bank en banc.  Mayo suggested three possible tests for patent-eligibility, without committing definitively to any one of them:  inventive application, pre-emption, and “more than just apply it.” Justice Thomas’s opinion in Alice does not expressly commit to a single interpretation of Mayo. Yet Thomas’s presentation of Mayo, his framing of the Court’s prior precedent, and his application of Mayo to Alice’s claims all indicate that Alice endorses the last aspect of Mayo: that a claim must do more than set forth a fundamental principle and add a generic instruction to “apply it.”  If this interpretation is correct, then Alice may in the long run be more significant for fields such as biotechnology, where Mayo’s “inventive application” aspect has cast doubt on the patent-eligibility of many discovery-based inventions.

Mayo’s first test of patent-eligibility is a test for inventive, or non-obvious, application of a fundamental principle.  Drawing from Flook, where Justice Stevens wrote that “conventional and obvious” post-solution activity cannot transform an unpatentable principle into a patentable process, and Funk Brothers, where Justice Douglas held that a composition of matter was not patentable because the patentee’s application was “a simple step” once his discovery was assumed away, Justice Breyer invalidated Prometheus’s claims because the steps of the claimed method beyond the underlying natural law were merely “well-understood, routine, conventional activity already engaged in by the scientific community.” Breyer contrasted those steps with the additional steps claimed in Diamond v. Diehr, which in context were not “obvious, already in use, or purely conventional.”  The Mayo Court drew support for this test from the Court of Exchequer’s 1843 opinion in Neilson v. Harford, where the patent was said to have been sustained because the patentee implemented his newly discovered principle “in an inventive way.”*  This view of Mayo – that obvious applications of fundamental principles are not patent-eligible – was the one taken by the Northern District of California in the Ariosa v. Sequenom litigation, where Judge Ilston invalidated Sequenom’s claims largely because once Sequenom’s discovery of cell-free fetal DNA in the maternal bloodstream was assumed to be known, the application in the form of a test for fetal abnormalities required only routine and well-known methods of DNA amplification.

The second test of eligibility suggested by Mayo is a test of pre-emption. The Court explained that subject-matter exclusions were grounded in pre-emption, echoing Benson’s concern that patents should not monopolize “the basic tools of scientific and technological work.”  Mayo seemed to state that pre-emption was analytically secondary to categorical exclusion:  the concern that Prometheus’s claims would tie up too much future use of the underlying natural laws “simply reinforces our conclusion” that the claimed processes were not patent-eligible.   Yet Breyer’s opinion intertwined pre-emption with inventive application as a criterion for patent-eligibility:  Diehr was described as a case where the patentee had not sought to pre-empt the use of the Arrhenius equation. While the patentee in Flook had failed to “limit the claim to a particular application,” the supposedly unconventional steps in Neilson had “confined the claims to a particular, useful application of the principle.” This interpretation of Mayo was followed by the majority of the Federal Circuit when it heard CLS Bank en banc. Both Judge Rader and Judge Lourie rejected the notion that Mayo’s “inventive concept” demanded “inventiveness” in the sense of a non-obvious application. And while they disagreed on the proper framework, both Judge Lourie and Judge Rader founded their analyses on the question of whether Alice’s claims would pre-empt every practical application of the underlying abstract idea.

But Mayo suggests a third test beyond inventive application or pre-emption: that a claim must represent more than a mere direction to apply a fundamental principle. According to Justice Breyer, one could not transform a law of nature into a patent-eligible application by simply disclosing the law of  nature, and adding the words “apply it;” Einstein or Archimedes, for example, could not have patented their famous discoveries by merely appending an instruction to apply them. This aspect of Mayo has received the least attention in subsequent cases and commentary. And yet in Justice Thomas’s opinion in Alice, it is this aspect of Mayo that becomes the core of the doctrine.

In Alice’s framework, once it has been determined that a claim is drawn to an abstract idea, ‘step two’ of the Mayo test is to determine whether it contains an “inventive concept” sufficient to transform the claim into a patent-eligible application. But in contrast to Flook and Mayo, “inventive concept” in Alice bears little trace of “inventiveness.” Justice Thomas does describe the computer implementation in Alice as “conventional.” But nowhere does he label it non-inventive, and the word obvious is conspicuously lacking from the opinion. And while Alice hardly addresses the Federal Circuit’s opinions at all, it may be significant that Thomas never contradicts Judge Lourie’s and Judge Rader’s rejection of “inventiveness” as an aspect of “inventive concept” in their CLS Bank opinions.
The contrast between Alice and Mayo is most apparent in their treatment of Diehr.  In Mayo, the claims in Diehr represented an inventive application of the Arrhenius equation, and were not “obvious, already in use, or purely conventional.” But in Alice, the claims in Diehr were sustained not because they were non-obvious, but because “they improved an existing technological process,” and achieved a result the industry had not been able to obtain. Likewise, in Mayo, the failing of the Flook claims was that the steps of the claim were well-known, conventional or obvious; in Alice, while Thomas notes that the Flook implementation was purely conventional, Flook primarily stands for the proposition that limitation to a particular technological environment does not render an abstract idea patent eligible.

As for pre-emption, which intertwined so closely with inventive application in Mayo, is hardly present for ‘Mayo step two’ in Alice. Again the characterization of precedent is telling: in Mayo, the claim in Benson was vulnerable because it was “overly broad.”  In Alice, Benson requires a “new and useful” –  but not inventive – application of an idea for patent eligibility, but the lesson of Benson is that simply implementing a principle on a computer is not a patentable application.

For Justice Thomas, the ‘step two’ inquiry involves neither inventiveness nor pre-emption, but revolves around Mayo’s proscription against “more than just apply it.” Alice follows Flook and Mayo in holding that “conventional” activity cannot transform a principle into a patent-eligible application, but in Alice “conventional” seems to connote generic more than it connotes obvious.  Thus Thomas introduces ‘step two,’ the search for an inventive concept, by invoking the third aspect of Mayo: patent-eligible application requires more than a statement of the abstract ideas plus the words ‘apply it.’  And while Thomas notes that the measuring steps in Mayo were “well known in the art,” he again quotes the ‘more than apply it’ language from Mayo to establish that those steps adding nothing of significance to the underlying natural law.

Most significantly for the Alice analysis, Thomas ends his summary of Mayo by quoting language that played little role in Mayo itself: it was not that conventional steps cannot supply an ‘inventive concept,’ but “conventional steps, specified at a high level of generality” (emphasis added) could not supply an inventive concept. For it is genericness, not lack of invention or pre-emption, that dominates the remainder of Thomas’s opinion.  His summary of the Court’s § 101 jurisprudence touches upon the notion of pre-emption, but emphasizes above all else the requirement of “more than generic” application:

These cases demonstrate that the mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention. Stating an abstract idea “while adding the words ‘apply it’” is not enough for patent eligibility. Nor is limiting the use of an abstract idea “‘to a particular technological environment.’ ” Stating an abstract idea while adding the words “apply it with a computer” simply combines those two steps, with the same deficient result. Thus, if a patent’s recitation of a computer amounts to a mere instruction to “implemen[t]” an abstract idea “on . . . a computer,” that addition cannot impart patent eligibility. This conclusion accords with the pre- emption concern that undergirds our §101 jurisprudence. Given the ubiquity of computers, wholly generic computer implementation is not generally the sort of “additional featur[e]” that provides any “practical assurance that the process is more than a drafting effort designed to monopolize the [abstract idea] itself.”

(citations omitted).

Similarly, Alice’s application of the test to the claims in suit emphasizes “more than apply it” and generic application;  the question for Justice Thomas “is whether the claims here do more than simply instruct the practitioner to implement the abstract idea of intermediated settlement on a generic computer.” Thomas does describe the functions performed by the computer as “routine, conventional, and well-known in the field,” but his characterization serves to support the conclusion that the claimed steps do nothing more than define generic computer implementation. And taken as a whole, the claims at issue fail not because they lack inventiveness, nor because they reach too broadly, but because they amount to “’nothing significantly more’ than an instruction to apply the abstract idea of intermediated settlement using some unspecified, generic computer.

So Alice may fail to provide clear boundaries for the eligibility of computer-implemented inventions. But it could clarify something more important.  As I have described in a recent paper, the actual test for patent-eligibility in cases like Neilson v. Harford, and in American jurisprudence for the next century, was a requirement that the patentee claim a specific mode of application of a fundamental principle, rather than a generic claim to the principle as applied. If Alice does indeed endorse the third aspect of Mayo, then the test for patent-eligibility is not a question of non-obvious application, nor a question of pre-emption, but a question of whether the claim does significantly more than state a fundamental principle coupled with an instruction to “apply it.” Embracing that aspect of Mayo could signal a return to the historical standard of patent-eligibility.

*As I discussed in a previous post, the Court’s reliance on Neilson in Mayo and Flook was entirely misplaced.  The patent in Neilson was sustained not because the patentee’s implementation was inventive, but precisely because it was entirely conventional and well-known in the art.

175 thoughts on “The Three Faces of Prometheus: Alice and Generic Application

  1. I think you are splitting two fine a hair here. If it isn’t conventional by a non patent lawyers view even one who is a lawyer (aka the supreme court) it is inventive. So while yes you need to have more than just apply it that more needs to be inventive in some way. Part of the oral arguments in fact turned around the fact that this was limited to a very specific situation, this turned out not to be enough to save it. The California case you mentioned has received the supreme court seal of approval. A patent limiting Einsteins equation to say use in recycling would not be patent eligible unless the recycling steps the parts other than Einsteins equation were somehow inventive aka not conventional.

      1. Then try to remember that there is a very real difference between patent eligible and patentable. That difference is NOT a matter of “splitting too fine a hair here.”

  2. Please forgive, peeps, if what I now say has been pointed out already, somewhere in the plethora of comments, but I have only just read the Decision.

    See its page 14, last passage, just before sub-section “2” begins.

    As an EPO guy, I am troubled by the elision here of eligibility and patentability. The EPO would vigorously dispute that doing no more than recognising the eligibility of a claim to a computer system would be enough to “eviscerate” any rule about its patentability.

    Is the nine member SCOTUS Team here sloppy and unaware of the conceptual difference between eligibility and patentability, or is it that it does know but doesn’t care, preferring to be cavalier, fast, loose and in love with the powerful word “eviscerate” as evidence that its incisive mind is aggressively scything through the difficult thickets of patent law?

    Reassure me somebody, will you?

    1. I do not understand what answer would reassure you, MaxDrei.

      Do you want an ends-justifies-the-means reassurance?

      Do you want a one-world-law reassurance?

      Do you want a we-are-the-law reassurance?

      Do you want a rule-of-law reassurance?

      1. Multiple choice, is it? Well then, anon, why don’t you choose the one you think fits best, and run with it. Meanwhile, I’m pleased there are so many possible answers. Perhaps your listing of them will inspire others to write.

        But anon, you know, you don’t have to write anything more at all. I won’t take offence, really.

        What I was actually looking for was a robust defence of the intellectual integrity of the passage on page 14. This would have reassured me of the intellectual integrity of Justice Thomas and his co-signatories. But I see you are minded to provide such a defence. That’s OK. It is what I was expecting anyway.

        1. Well then, anon, why don’t you choose the one you think fits best, and run with it.

          I would rather answer the question you meant to ask.

          You did mean to ask an intelligent question, right?

          But I see you are minded to provide such a defence

          If you mean, “not minded to” then it appears that you want me to guess at the incomprehensible, and you really are not paying attention to anyone else out here on these blogs. You ask unintelligent questions and have not yet peered beyond your navel. To co-opt your phrase: “That’s OK. It is what I was expecting anyway.

          1. See, folks, anon now reports that the instant SCOTUS Decision is “incomprehensible” to him. No wonder he is incapable of meaningful comment on it.

            1. See folks, MaxDrei completely misses the point.

              Yes, he really is that dense.

              Come man, who asked for reassurance in the first place?

              You sir, are a bonehead.

    2. Max, don’t worry about Alice. Fundamental mistakes were made in Bilski when it declared business methods to be statutory, thereby overruling 100 years of case authority that held business method is to be nonstatutory.

      Having held business methods to be statutory in Bilski, the Supreme Court no longer had any legal grounds to hold the claims before it unpatentable except on novelty aspects – and they declared the claims before it to be notoriously old.

      This is why the holding of Bilski was so confusing. Just what was the Supreme Court trying to say?

      Having screwed patent law so royally in that case, the Alice court had nothing to do but follow it, or to potentially adopt the Stevens concurring opinion.

      1. or to potentially adopt the Stevens concurring opinion.

        LOL – how did that work out for you?

        Oh wait, you have already been informed (and yet purposefully choose to remain in ignorance):

        3 (the new 4), is not 5.

      2. Having screwed patent law so royally

        Um, haven’t certain posters been trying to tell you of the Royal Nine’s work?

        Hello… McFly, hello….

        1. Bad Joke, well the Federal Circuit cannot overrule the 2nd Circuit, can it?

          Moreover, a Federal Circuit panel cannot overrule prior CCPA decisions to the contrary, can it?

          No, Rich is not king, but he thought he was a god, and certainly the patent bar treated him like an emperor, but he had no clothes.

    3. Well, Max, at this point I might be willing to import European patent law or export the royal 9. You could also have the great and powerful Lemley, Posner, etc.

  3. This post illustrates so well that the 1952 Patent Act was right in trying to separate 101 from 102, 103, and 112. What one must ask is gained by the SCOTUS approach over the 1952’s Patent Act’s approach?

    1. the 1952 Patent Act was right in trying to separate 101 from 102, 103, and 112

      No try – do. Or do not. There is no try.

      The dark side clouds everything. Impossible to see the future is.

    2. Night, the reason for the separation was because Frederico was trying to fold into the new §102 not only the conditions for patentability but the defenses to infringement that, in the former statutes, were placed in different sections. The separation had nothing to do with trying to change anything about §101.

      1. Frederico was trying to fold into

        Um, you kind of don’t have the full picture there Ned.

        The separation had nothing to do with trying to change anything about §101.

        DEAD WRONG. I have shared the Congressional record, Frederico himself and the Cornell Law commentaries directly showing you otherwise Ned.

  4. “Like electricity, nuclear power, or biotechnology before it, data will shape the next age of innovation and invention. With a bright new IDEA, Rensselaer is positioned at the forefront of this technological revolution.”

    link to nxtbook.com

    data will shape the next age of innovation and invention?

    this technological revolution?

    did Justice Thomas major in a technological discipline in college or was it English literature?

  5. Getting back to the writing of this post by Prof. Lefsten, errors abound.

    One of the more flagrant: “Mayo, the claims in Diehr represented an inventive application of the Arrhenius equation, and were not “obvious, already in use, or purely conventional.”

    Simply not true in the least. It was most certainly true that the Arrhenius equation itself was conventionally used. The “Point of Novelty” (to intentionally borrow a phrase) was NOT the use of the equation, but rather, the software program as a component of the machine that used the equation in a highly iterative manner.

    This re-telling of history in order to paint a new picture should be troubling to all.

    1. his re-telling of history in order to paint a new picture should be troubling to all.

      Are you troubled, anon? Is that why you called people who disagree with you about the subject eligility of software “killers and rapists”?

      What’s “troubling” is that Jason and Dennis allow an unredeemed path 0 l0gical l i a r and nxtcse like you to keep posting your drivel here. There’s plenty of far less toxic people to pick up whatever crumbs of insight you blindly stumble across but for some weird reason they still keep you around. Maybe Hricik knows why.

        1. NWPA This group is little better than the fundamentalist that are raping and killing in Iraq. Reason and the enlightenment mean nothing to this lot.

          You (direct response) They want their ends no matter what their means.

          Some other twerp: Who are “they”

          You “they” are the attackers of the patent system

          Life is about choices, psy cho. You made yours. Now own it. You act as it was the first time some looneytoons nxtsanity spilled out of your endlessly flapping pi ehole. Of course that’s not true. You do this on a regular basis and you’ve been doing it for years.

      1. “troubling” is that Jason and Dennis allow an unredeemed path 0 l0gical l i a r and nxtcse like you to keep posting your drivel here.

        Lovely AOOTWMD – tell me Malcolm who exactly – BY FAR – has the most posts removed for offensive content and drivel?

        Hint: YOU

        That’s right and yes, we all know that you just don’t care.

        How’s that working for you?

          1. Lol – as if that makes a difference when it is YOUR apoplectic rants of rage that are expunged.

            What was that advice you liked to give out?

            Oh yeah: Grow Up.

            1. You really don’t get what sociopaths do do you? You just don’t get it.

              Maybe calling it “antisocial personality disorder” would help clarify it for you on a kindergarten level. What they do, as a whole, is break down the social atmosphere because of their marked inability to get along with others or abide by societal rules.

              That’s you brosef anon. All the time picking at people. Telling them they’re wrong. Being severely confrontational. Set aside the remorseless trolling that you used to do (lessened of late, though not completely diminished, congrats there btw).

              1. Pretty funny 6 as you should be aiming at your pal Malcolm as his is the clearly egregious behavior.

                Yet for some odd reason, your passive/aggressive focus is on me. I am honored (I guess), but kind of wonder if I need a restraining order….

              2. Anon I’m not goig to pretend that mms behavior in re you, or even my own is the best. That’s the kind of behavior that results from a sociopath being around. The “antisocial” part of being a sociopath creates that in those that surround you.

                Regardless I could focus on mm forever and it wouldn’t help your sociopathy/psychopathy/antisocial personality disorder get better. And it wouldn’t help diminish the effects thereof. Not one little bit.

                Also you really need to look up what passive aggressive means. Your using it wrong just like you do the rest of the psycological terms you’ve used for the last year. Or maybe you’re just making up your own new / term or a new definition in your characteristic “psychopath speak” way.

                If you think need a restraing order for someone telling you that you have psychopathy you a a bonified t ard bro.

              3. Well there you go again projecting and all, while not making any sense at all in regards to Malcolm’s behavior (and your noticeable lack of any attention whatsoever to a way more psycho case); of course, your apparent alignment goes a bit, well, shall we say deeper..?

    2. anon, I agree.

      The only ineligible subject matter the court was concerned about in Diehr was the Arrhenius equation. But the court did not hold that its application was inventive.

      Let us consider what the Alice court said,

      “In Diehr, 450 U. S. 175, by contrast, we held that a computer-implemented process for curing rubber was patent eligible, but not because it involved a computer. The claim employed a “well-known” mathematical equation, but it used that equation in a process designed to solve a technological problem in “conventional industry practice.” Id., at 177, 178. The invention in Diehr used a “thermocouple” to record constant temperature measurements inside the rubber mold—something “the industry ha[d] not been able to obtain.” Id., at 178, and n. 3. The temperature measurements were then fed into a computer, which repeatedly recalculated the remaining cure time by using the mathematical equation. Id., at 178–179. These additional steps, we recently explained, “transformed the process into an inventive application of the formula.” Mayo, supra, at ___ (slip op., at 12). In other words, the claims in Diehr were patent eligible because they improved an existing technological process, not because they were implemented on a computer.”

      Also, the court cited Diehr for this:

      “At some level, “all inventions . . . embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas.” Id., at ___ (slip op., at 2). Thus, an invention is not rendered ineligible for patent simply because it involves an abstract concept. See Diamond v. Diehr, 450 U. S. 175, 187 (1981). “[A]pplication[s]” of such concepts “‘to a new and useful end,’” we have said, remain eligible for patent protection. Gottschalk v. Benson, 409 U. S. 63, 67 (1972).”

      Thus we see, the ineligible subject matter was not the PON at all, but was one element of several the court found together to be an inventive application.

      1. Thus we see, the ineligible subject matter was not the PON at all, but was one element of several the court found together to be an inventive application.

        Sorry I missed this earlier, but you are playing the Pick-N-Choose game again, Ned.

        You either have – and apply – your “PON” or you do not.
        You either take “claims as a whole” or you do not.

        Diehr is plainly a case – that under the current rubrics of the Court – reveals the PON of a computer program.

        That’s it.

        Compare Diehr and Alice and note the “Gist” effect used essentially trimmed integrated elements out of the Alice claim. Do the same with Diehr and Diehr fails. In essence, do the same with any claim, and that claim may fail – depending on the whims of the judges and what they decide at the moment what “abstract” means, and how much they want to remove from the claim in their “Gist” process.

        Gone. Any claim at the whim of the judiciary.

        While I know that you want more than “just a machine” (or more than just a manufacture) in order to reach the status of patent eligibility (as do I – but my difference being based in a different part of the 101 statutory law), the Court here has clearly added yet another layer of hot mess on the 101 jurisprudence. “Abstract?” Not only undefined, but the Court boasts that it won’t tell you. “Gist?” unknowable, and clearly violates the direct actions of Congress in 1952 (as I have shown you that the Court’s frolics that were sought to be corrected center d on the far too malleable use of “Gist”). It does not take a flash of genius to see that the Court has shown its disdain for both the bar and the Congress, and thinks itself above all else – while NOT thinking just why our Founding Fathers chose NOT to place the authority to write patent law with the judiciary, and selected the legislative, and strictly the legislative** branch to hold that power.

        As I posted: the bottom line of Alice is clear:
        “Abstract” and “Gist.”

        “Abstract” – whatever that is, as the Court refuses to say.

        “Gist” – whatever level of abstraction the Court wants to take the claim (and all elements of the claim) and disregard any actual inconvenient elements that would – in the Court’s eyes – make a dead letter of what the Court feels should be allowed (more of that d@m the scriviners attitude).

        ** as I have noted previously, the possibility and action of Congress – deciding for itself – to share that power with another branch of the government has been deemed constitutional (with proper safeguards, i.e. Congress cannot designate actual persons on an executive agency body). But this situation is decidedly different, precisely because a power once given – and rescinded – has been taken back by a branch of the government without authority to do so. This precise action, combined with an unhealthy sense of NIMBYism (because the action happens to align with a certain agenda) is the most pernicious form of corruption.

        1. anon, AFAIK, PON is relevant only for the “functional at the” doctrine.

          I keep saying this, and you keep ignoring it.

          A claim for novelty purposes can have a PON, but it also can have elements cooperating, and they can be old or new.

          Diehr was an example of a host of new, claimed, subject matter, including thermocouples inside the mold, constantly monitoring them, and updating mold end time. The computer program was perhaps new, we do not know, but the algorithm it executed was not. This implies that an old computer and an old program would have worked just fine.

          1. lol- pure horsehockey and abundant evidence that you are fabricating a schema.

            It is not that I ignore the fact that you keep saying it – it is that I keep telling you that you are making things up when you keep saying it. You lack consistency and make up these ad hoc views – the only purpose of which is to support a pre-conceived agenda of Ned-IMHO-law.

            Just like your lack of comments on the statutory status of business methods and the FACT that Congress created a partial defense to business methods. I keep drawing your attention to this and ask you to supply a reason why a defense would be needed if your view were in fact reality.

            You want to talk about ignoring something….
            Talk about that.

            So two more things here: return an dread my post and compare Diehr and Alice (particularly on the integration aspect) and you are quite wrong with your “an old computer and an old program would have worked just fine” because then you would have been rightfully rejected for patentability under 102/103, even passing patent eligibility under 101.

            “Gist” is deadly. “Abstract” with the Court refusing to define is also deadly. Put the two together and not one single claim can survive, if the court can make up whatever it wants for the scope of application of the concepts “gist” and “abstract.”

            It’s kind of an important point.

            1. anon, I agree that the current jurisprudence is wrong. Base it on the statute I say. If the claimed subject matter is one of the four classes, and it is new or an improvement in that subject matter, it is statutory.

              This was the analysis historically provided by the courts until State Street Bank. We need to go back to it.

              1. Further, your own pronouncement here, coupled with your errant views on process as a statutory class (the handmaiden fallacy) and your errant views on printed matter (it was allowed until a judicial doctrine developed, and then THAT doctrine was limited with exceptions) belies your agenda.

                What you say here and now is not what you repeatedly say – and yet, you will most likely not recognize why.

              2. anon, I did no say the classes are the whole thing. New and improved — and utility as well.

                There should be NO EXCEPTIONS.

                Printed matter is non statutory. It is not a judicial exception. Where in the world did you get your ideas. Did you even bother to read the cases I cited?

              3. Printed matter IS a judicial exception.

                Those were cases introducing the concept – not written by Congressmen. Further, the original judicial notions were later corrected – you never seem to want to include THOSE cases in your citations… – how ethical is it for you to not show current law as current law, banking on the very point that is not current?

                Further, what part of the Set Theory explanation do you have trouble understanding? You have that Set Theory provided to you, and then hyperlinked and provided to you again, and you have NEVER bothered to show where that Set Theory is in error.

              4. Anon, your understanding of what a judicial exception is utterly bizarre. If something is nonstatutory there is no need for a judicial exception. The whole point of a judicial exception is to exclude from subject matter that is otherwise statutory.

                May I suggest that you have a fundamental misunderstanding of the law here.

                It is abundantly clear that the cases held that printer matter was nonstatutory. The MPEP treats printed matter that way.

                Furthermore, the same line of cases also treat business methods as nonstatutory.

                Why don’t you read them again?

              5. Ned,

                Set B is not Set A.
                You insist on calling Set B (the judicial doctrine affected set) a statutory-controlled or designated non-allowable item.

                It just is not so.

                It is your version of reading statutory law that is abysmal here. This is not the first time.

              6. As to business methods, I am still waiting for you to treat the direct Congressional aspect of a defense of limited scope to a certain subset of business methods.

                You remain quiet on such a glaring matter really does scream a story. Not the story you probably want to here, though.

            2. Statutory: one of the four classes. New. Improved. Useful.

              Printed matter cases: the New part is non statutory. The statutory part is not novel — old.

              Business matter cases: the New part is non statutory. The statutory part is not novel — old.

              Alice, the new part is one of the exceptions and the statutory part is not novel — old.

              The only difference between Alice and the traditional case law on business methods is whether a business method is statutory or not.

              1. printed matter MAY fit into the statutory category of manufacture (with Set B removed by judicial doctrine).

                I have explained this to you countless times.

  6. The Office has a concept of broadest reasonable interpretation.

    There are two reasons for narrowness in the present cases. Firstly these are exceptions, and exceptions are usually construed narrowly. Secondly these are extra-statutory glosses on the statutory wording of section 101, and in these circumstances an interpretation minimising judicial legislation is to be avoided.

    In these circumstances it is appropriate to propose a doctrine of narrowest reasonable interpretation. Even if the true interpretation is slightly broader, a wide and expansive interpretation covering factual situations not before the Court and possibly in distant technical fields is to be avoided.

    As an absolute preliminary, though, it is necessaary to figure out from the decision itself, the cases cited, the opinions below and the wording of the patent(s) in issue what was the rule laid down by the Court. That is not a matter of seizing on dicta but figuring out objectively what was the rule that the court applied when concluding that this subject matter was unpatentable.

    It is no secret that in all these cases that exercise is blisteringly difficult.

    However, one source of error is assuming that there is a universal rule for the three judicial exceptions, a law of nature, natural phenomenon, or abstract idea. Each category has its own issues and problems, and the idea that there is a one-test-fits-all approach is arguably misguided. Thus what the appropriate test should be for e.g. hedging as applied in a bank computer system has little relevance to what is appropriate for an isolated natural product such as a plant-derived medicament or an isolated nucleic acid sequence.

    Interestingly Justice Thomas made only passing reference to Myriad in his opinion, and repeatedly referred to the category of abstract ideas which was in issue here. It follows therefore that if you are looking at eligibility of products of nature, you should look at Chakrabarty and Myriad where the test is that mere isolation does not suffice, but isolation accompanied by new utility does.

    If you want a precedent for a discovery-type invention as met frequently in the pharmaceutical and biotech fields, you should look to Chakrabarty, not Alice.

    Before wide sweeping statements in Funk Brothers are taken out of context, it pays to read the claim in issue in that case carefully. If you do that, you stand a chance of figuring out what William O. Douglas was really saying.

    And in any event, the test for eligibility is pragmatic and fact-based – it does not lend itself to a neat universal rule and Justice Thomas himself acknowledges with his refernce to a balancing exercise.

    1. typo?

      Should “and in these circumstances an interpretation minimising judicial legislation is to be avoided.

      read

      “and in these circumstances an interpretation maximising judicial legislation is to be avoided.”

      ?

      (Of course, the elephant in the room is why judicial legislation on a critical element of law in an area EXPRESSLY designated under the authority of a different branch of government is even being countenanced at all…)

    2. In these circumstances it is appropriate to propose a doctrine of narrowest reasonable interpretation

      That was Chief Judge Rader’s view.

      You didn’t notice the whining about that on these threads?

    3. You ASSUME that Justice William O. Douglas was saying something on point.

      That’s not necessarily a valid assumption – after all, the “the only valid patent is one that has not yet appeared before us” comment was (in large part) directed at Justice Douglas.

      1. I am well aware of the Douglas attitude to patents.

        However, the Kalo patent was a dog.

        If you look at the specimen claim, all that it said was that you had different species of bacteria, they had been chosen in some way and they did not interfere with one another. Nothing was said about the manner of choice, and it could have been purposive or random – you select a coffee mug each time you brew your morning coffee, but there is nothing technical about that. Nothing else was said about the bacteria – the claim language would be satisfied by getting two or three batches of soil from different parts of a farm and mixing them together. When Justice Douglas said that the bacteria were unchanged, if you look at the claim he was dead right. It is important not to confuse (a) what was specified by the claim and (b) what was done in practice to produce a commercial inocculant.

        Furthermore the ATCC was open for business at the time but Kalo elected not to deposit the useful strains they had discovered.

        The deal was: there are non-interfering bacterial strains that can be used to make a mixed inocculant. I am not going to report my test methods, I am not going to tell you what the non-interfering strains are or deposit them with a recognised depository, and if you want to make a mixed inocculant you can do your own research. In the event that your research succeeds, though, and you find non-interfering strains of your own, you nevertheless infringe my patent.

        A couple of cases like that have come before the UK courts recently. As the UK judges have also recognised, cases like that stink. No wonder Justice Douglas did not buy into the patent. His less than total friend Justice Frankfurter did not like it either, for slightly beter expressed reasons.

    4. Paul If you want a precedent for a discovery-type invention as met frequently in the pharmaceutical and biotech fields, you should look to Chakrabarty, not Alice.

      This is incorrect, Paul. First, it’s not clear what you mean by “a discovery-type invention” and I think you’ll have difficulty distinguishing inventions based on “a discovery” from those that are not (consider: “I discovered that a computer can be used to identify available real estate!”).

      Second, for purposes of identifying the relevant case, the “field” of the invention is less important than what is being claimed. For example, I could “discover” a new DNA sequence but a method claim that prevents people from determining whether that sequence is present in a duck and, if it is not present, correlates with an increased likelihood the Cubs will win the World Series, does not raise Myriad issues. It raises Prometheus issues.

      one source of error is assuming that there is a universal rule for the three judicial exceptions, a law of nature, natural phenomenon, or abstract idea. Each category has its own issues and problems, and the idea that there is a one-test-fits-all approach is arguably misguided.

      I generally agree with this. But I’ll say it again because it cannot be said often enough: the logical principle underlying the Prometheus decision has nothing to do at all with the content or scope of the mental activity that was protected by Prometheus’ claims. It didn’t matter if it was a “natural law” or a “correlation” or thinking about a “contract” or a “risk of hedging” or any other fact or non-fact. All mattered is that practitioners of the prior art (the data gatherers, using conventional methods) were turned into infringers merely for thinking about an ineligible and unprotectable abstraction (in this case, a correlation that was alleged by the applicant to be useful).

      This is incredibly basic stuff and very easy to apply to tank a lot of claims that people were busily filing (because no claim is easier to “innovate” than a claim that protects “new” information) prior to the Prometheus decision (and no doubt there are still some folks out there who haven’t gotten the memo because their attorneys are incompetent). It is not “blisteringly difficult” at all. Quite the opposite.

    5. Paul, the court may think it is applying an extra-statutory exception, but the business method exception and abstract idea exception was well established long ago to be well grounded in the statutory framework. What sent the cart off the track, so to speak, in a major way was Bilski that held that the claims before it statutory.

      That ruling was made without consulting or even addressing the well established case law to the contrary – that business methods were abstract because they were nonstatutory. Bilski was an example at the Supreme Court level of the worst of the Judge Rich style of jurisprudence that I despise — a case that overturned well established case law, or did not follow it, without even a bye your leave mention.

      What happens when a court veers of the tracks in a whole new direction is chaos. That is what Bilski caused. I can only hope someone tries to focus the PTO and the Federal Circuit’s attention back onto these older cases so that we can all better understand why business methods are or should be abstract.

      1. Your “well grounded in the statutory framework” is error – plain and simple Ned.

        Stevens lost his majority position in Bilski for a very good reason: he was wrong and would have explicitly re-written the words of Congress. You seem to still want to ignore the very real separation of powers issue here.

        Further (and yet again), you fail to even mention that the Alice case is but an amplification of what you did not like about the Bilski case that you ranted on and on about just last week.

        As I have said in the past, sometimes Ned, it is your silence that screams volumes.

        1. Separation of powers, of course, is the most powerful basis for the concept of narrowest reasonable interpretation which is arguably the correct interpretation for this line of cases.

          1. This line of cases violates the separation of powers.

            Not sure how one “interprets” that away, and remains with any viable rule of law.

    6. Paul Cole, while you correctly note that the original statute authorized patents on discoveries of new arts, machines and manufactures, the 1793 statute remove “discovery” and added both “new” and “compositions.” One can see why discovery was dropped by comparing what was added to what was dropped. Congress simply did not want to authorize patents on the discovery of pre-existing compositions.

  7. Integration.

    That is all Thomas is talking about – and has been the cornerstone of 101 jurisprudence for a very long time. Just look at the printed matter cases — when is the printed matter integrated and when it is not? The new functional relationship to the underlying, otherwise eligible subject matter is the key.

    Why do folks analyzing these cases always ignore the otherwise well established printed matter doctrine?

    In particular, it is quite apparent that the analysis should be done as part of 102/103 with the ineligible subject matter excluded, given no weight, unless it is integrated into the underlying subject matter to produce an improvement in it. All of the 101 cases involving abstract ideas or laws of nature are consistent with this.

    1. Why do folks analyzing these cases always ignore the otherwise well established printed matter doctrine?

      It is a mystery. The bedrock principles are never going to go away: you can’t protect information with patents and if you want to protect a “new machine” or “new system” that is useful for processing information, then that that “new machine” or “new system” needs to be described in bona fide physical structural terms that distinguish it from prior art structures, not in terms of its “new” information-processing “functionality.”

      The most important thing the Court cleared up for everybody in Alice was that in 2014, the use of generic computing machinery should be treated by patent law identically to all other old compositions and apparati known to be useful for processing information, e.g., pencils and paper.

      Would Don Chisum or any of these other commenters be losing his shirt over a case that held that a method of calculing risk or writing a contract with a pencil and paper is ineligible? Seems highly unlikely. What about using a typewriter? Again: seems highly unlikely. But toss in some references to a POWERFUL COMPUTER BRAIN and these same deep-thinkers just throw reason and common sense out the window.

      It’s 2014 for cripesake. Programmable digital computers are really, really, really old and we all know they are capable of processing any information they are programmed to process.

      1. LOL – classifying as “ignore” the advocating of a known wrong legal principle is unethical.

        Of course, you already know that, right?

        1. classifying as “ignore” the advocating

          *click*

          Here’s what this same referee of “ethics” think about about people who disagree with him about subject matter eligibility: This group is little better than the fundamentalist that are raping and killing in Iraq. Reason and the enlightenment mean nothing to this lot.

          Of course we should all take him very seriously when he talks about “ethics.”

              1. Nice spin – it isn’t me that needs help. It isn’t me resorting to the classic mindless *click*….

                Then again AOOTWMD is pretty much your default.

        2. anon, you do recognize that “integration” is common to both the rule in Prometheus and the printed matter exception, do you not?

          1. No, it is not – not as you are attempting to use the term. You are doing that OVER-reading thing again.

            Your views on the exceptions to the judicial doctrine of printed matter as still wack.

            Do you recognize the fallacy in Malcolm’s pet theory in that he ASSUMES his [x]+[y] is defacto not integrated?

    2. Just look at the printed matter cases — when is the printed matter integrated and when it is not?

      Unfortunately, Ned, the answer to that question is when the CAFC says “it’s functional.” Of course, all information is functional and every time information is combined with a tangible item that combination results in functionality that was not present before the combination. The better rule is a rule that simply precludes “new” information from imparting patentability to an otherwse old structure/apparatus/method. The impact of such a rule on what is patent-worthy is miniscule, at best. Some guy can’t protect his old measuring cup that indicates the proportion of nuts and chewing gum for making the perfect Nutty Gum Ball? Tough luck. [shrugs]

      The CAFC’s case law regarding the “exception” to the printed matter doctrine (which is just the mis-assignment of eligibility concerns to the 103 context) is right up there with their “insoluble ambiguity” standard for indefiniteness. It’s a “rule” of convenience that eats up the underlying principle, on demand.

      1. Realize that the default situation is patent eligible.

        It is the judicial doctrine (read that as non-statutory) that removes SOME of the printed matter from having patent eligible weight.

        It is the exceptions to the judicial doctrine that reminds all that some of that ORIGINAL patent eligible printed matter RETAINS its statutory patent eligible weight.

        Try to keep up. It’s not that difficult.

        1. Your use of bold and italics is really impressive and compelling!

          Can you tell us more about this, though, which you wrote in the previous thread: [attackers of the patent system] are little better than the fundamentalist that are raping and killing in Iraq. Reason and the enlightenment mean nothing to this lot.

          I’d like to see a bit of elaboration of the “raping and killing” part. Is the Prometheus case like rape, and the Alice case like killing or is it the other way around?

              1. LOL – you seriously make a comment on form, then attempt to turn around and spin it such that someone else is the one who only pays attention to form…?

                That’s pretty audacious. Pretty STUP1D – but pretty audacious.

                Give up the tired AOOTWMD.

          1. But we both know why you want to immediately kick up dust in regards to my post at 8.2.1, don’t we?

            Given that you have volunteered an admission as to knowing what is the controlling law on this subject – and that despite this knowledge, you routinely engage in conduct involving dishonesty, fraud, deceit or misrepresentation of this material element of law in your attempts at advocacy on this modern social media.

            How is that “crusade against attorneys” going, when you yourself so routinely violate your ethical duty? Hypocrite much?

      2. You might be right, MM, about printed matter, but applying programmed computers to new applications or to improve existing ones as in Diehr is certainly eligible provided the application is producing a new result.

        We think of data compression and encryption as being examples of the kind of application we would like to promote. But such have to operate on signals, real signals and real data stored on media or transmitted between machines to be useful. If claimed in that context, I can think of no reasonable objection to their eligibility.

        Viterbi was recognized by IEEE as being one of the greatest engineers of the 20th century. What did he invent? An algorithm, sometimes known as “partial response, most likely” (PRML) that when applied to signals results in an enormous signal-to-noise ratio increase. Applied to disk drives, the industry achieved enormous increases in areal density. Applied to space communications, communications became possible. And Viterbi was one of the founders of the QUALCOMM and created the first cell phone system, a system that at the time depended upon his mathematics.

        1. Ned,

          You continue to fail to answer a simple question, given that perfect cures happened prior to the claim in Diehr, what was the new result?

          Further, what you see “permissible” with encryption simply does not fit with any “theory” or takeaway that you have so far shared. While you state “I can think of no reasonable objection to their eligibility” what you need to do is a little different – such highly individualized “Well, that’s OK is not a workable Rule of Law. You need to be able to have your Rule of Law that encompasses encryption without a special “pass.”

          Lastly (although it pains me, as I consider it a bad and unsupportable decision for anyone who knows anything about physics), Nuijten is controlling law on signals, and your views here seem to run smack into the “Nuijten” problem.

          1. anon, Further, what you see “permissible” with encryption simply does not fit with any “theory” or takeaway that you have so far shared.

            What I said,

            ” But such have to operate on signals, real signals and real data stored on media or transmitted between machines to be useful. If claimed in that context, I can think of no reasonable objection to their eligibility.”

            1. The point that you are missing in the immediate discussion is not Diehr, but Nuitjen. You want to see “no reasonable objection” but you are forgetting that your foundation does not fit current controlling law.

            2. Something slightly different, but assuredly related for you to consider:

              Website comment verification systems (CAPTCHAs).

              This is a form of “encryption” purposefully devised to exclude machine capability – it is MEANT to verify human reasoning.

              Encryption (in true theory) needs no machine, not even a writing, as a purely verbal message can be encrypted.

              Your “theories” will fail here Ned. There is no doubt at all.

          2. anon, I can’t even pretend understand your point about Diehr. Clearly the process was improved. No one, absolutely no one, disputes that.

    3. Just look at the printed matter cases

      LOL – look at them Ned – properly.

      I may yet get you back on track….

    4. Ned; One HUGE hole in your statements here: software works.

      Software really DOES change the machine.

      Once you realize that, then you might, just might realize that you missed a step somewhere in your logic path.

      1. software works.

        So does information embedded or punched into a piece of paper. It works to transmit information to a person or machine capable of reading the information. The paper without the information on embedded or punched into it does not transmit that information.

        Software really DOES change the machine.

        So does information embedded or punched into a piece of paper. See above.

        1. to a person or machine

          LOL – one of these is actually a statutory category.

          One guess.

          Separately, your vap1d ignoring of the law will not change the law, and since it is you that wants to change the law, you might want to consider putting together a cogent argument on the noticed differences on the meaning of “functionally related>” Simply put, you simply do not get to pretend that there is NO difference between Set B printed matter and Set C printed matter in and attempt to coalesce ALL printed matter into one giant set A – you quite miss the point of the controlling law with that attempt.

          1. you quite miss the point of the controlling law

            I understand the “point” perfectly. The “point” was to make sure that a certain class of applicants was coddled.

            you simply do not get to pretend that there is NO difference between Set B printed matter and Set C printed matter

            I don’t recall talking about Set B and Set C. However, if Set B and Set C are logically indistinguishable then no “pretending” is necessary.

            By the way, how does it feel to be a piece of human skum? Because that’s what you are. Let me know if you need everyone to be reminded of why that’s the case. Again.

            1. LOL – NO, you do not understand the point of law at all.

              You confuse your subjective view of the law for the point of law.

              You do that quite often. Mistaking “spin” for reality. That comes about because you spin so much you have lost track of reality.

              You may not recall “talking about” (in your usual slippery pedantic attempt) – but I talked about it and I shared with you the direct link to the easy set theory lesson when you whined recently on another thread. If you are going to ask for something, and then ignore what I give you in direct response to what you ask, well, that is a YOU problem then, and you only harm your own understanding – or lack thereof.

              piece of human skum?

              Wow, so classy, so grown up. So, well, Malcolm. (I’m pretty sure that does not qualify as an example of using English as a First Language in any meaningful way).

              1. I shared with you the direct link to the easy set theory lesson when you whined recently on another thread

                Nobody pays attention to your bllcrxp, anon.

                You’re a fn dooshbag.

  8. JL Thomas does describe the functions performed by the computer as “routine, conventional, and well-known in the field,” but his characterization serves to support the conclusion that the claimed steps do nothing more than define generic computer implementation. And taken as a whole, the claims at issue fail not because they lack inventiveness, nor because they reach too broadly, but because they amount to “’nothing significantly more’ than an instruction to apply the abstract idea of intermediated settlement using some unspecified, generic computer.

    I think this is reasonably accurate.

    The rest of the article strikes me as somewhat muddled and surely that’s partly due to trying to interpret Thomas’ dancing around the core issues (a habit of many who dive into this area, it seems).

    One cannot ignore the fact that, with one exception, all of these recent 101 cases involve claims which expressly recite information processing steps — information processing steps which were key to the patentability of the claims (note: patentability as opposed to eligibility). As a result of that recitation, the 101 issue is put right under everyone’s nose because (1) information is ineligible for patenting and (2) claims to the generic application or processing information (“a method comprising the step of determining if useful information X is true”) are also necessarily ineligible as a matter of basic logic and common sense in light of (1).

    When presented with such claims, Breyer came closest to the correct question in his Mayo decision: do the additional limitations in the claim (outside of the information processing steps and/or other ineligible subject matter) rescue the claim? And here is where so many commenters on this issue seem to choke and throw up their hands in dismay as if the question is unanswerable (why?). There are always going to be close cases on the margins but there is no question that if the additional limitations recited in the claim are themselves eligible and patentable (i.e., not old and conventional, and therefore patentable over the prior art by virtue of new, non-obvious physical structure or a new, non-obvious physical transformation) then you are home free. Enjoy your patents — that represents a massive amount of valuable (and necessary!) space for would-be patent applicants to explore! Why do some commenters (Leftsin not included here) fail to acknowledge this fundamental truth and instead choose to make wild proclamations about the supposed “potential” ineligibility of claims that nobody has ever suggested would or could be deemed ineligible under any reasonable intepretation of the statute or case law? As the Supreme Court warned: you need to be careful, not hysterical.

    I spoke above about one “one exception” to the trend of recent 101 cases always involving claims reciting information-processing steps. That exception, of course, is the Myriad decision which (as someone is fond of recalling) I wrote extensively about here before and afterwards because it has the greatest potential for damage if it creeps out of the cabin Thomas tried to build around the decision. That danger exists because the claims at issue in the Myriad Supreme Court decision did not recite an information-processing step but they were (at least as far as the Court was concerned) new, man-made compositions. In my opinion (and in the opinion of nearly all scientists and patent-lawyers I’ve spoken to), Myriad’s claims were structural defined because anyone could determine whether their own compositions infringed simply by comparing the structure of their composition to the structures covered by Myriad’s claims (thank you, genetic code).

    In at least one important sense, however, Myriad is the exception that proves the rule: knowledge of specific DNA primary structure (i.e., a polynucleotide sequence) can be extremely valuable because of (1) its “information content” (i.e., its ability to encode a protein that would otherwise be difficult to synthesize and study) and (2) the potential ability to correlate differences in structure with disease. Indeed, it was surely these widely appreciated informative properties of DNA which compelled the ACLU to bring its case and which led to the outcome in Myriad. Other than methods for obtaining information, there were no other utilities for Myriad’s claimed molecules because, at least as of the time of filing, no other utilities had been demonstrated by Myriad.

      1. Please please please update the moderation filter word list…

        Your NIMBYism is showing.

        You are kind of forgetting the lesson I taught you that many of the anti-software patent tricks and mantra are EQUALLY applicable as being applied [TYPICALLY] as just anti-patent.

        You might pull your head out of the sand and try to realize that.

        1. Wow: bold, italics and capitalization! Very, very impressive.

          the attackers of the patent system

          Oh, you mean the guys that you asserted in the previous thread were little better than the fundamentalist that are raping and killing in Iraq?

          This is what we’re supposed to see when we “pull our heads out of the sand”? People like me who disagree with you about the eligibility of software patents are like rapists and killers?

          Fascinating stuff.

          Maybe you should think about taking a long vacation.

          1. Nice spin – check again as to who made the assertion.

            Hint: it wasn’t me.

            Try reading. That might help you out just a little bit.

            1. check again as to who made the assertion. Hint: it wasn’t me.

              You’re going to l i e about this now? Seriously?

              It was you and NWPA who together explained the assertion to “Anon2.” I’ve got the entire exchange archived because it’s just one more piece of evidence in a long line of evidence that shows exactly where the most vociferous supporters of computer-implemented jnk are coming from.

              If you want to run away and pretend it never happened, go right ahead. But the fact remains: you own it, just like you own your Ges tapo comments. Big talk makes you feel like a big man. Enjoy those feelings, big man. Wallow in them.

            1. it is HOW you disagree

              Right. Because the proper way to disagree, as anon demonstrated on the previous thread, is to call people who disagree with you “killers and rapists”.

              The world may have known a bigger hypocrite but this blog certainly hasn’t. And, yes, this is the same “anon” who was jxrking himself off comparing the PTO to the Ges tapo and who regularly accuses me of being prejudiced against black people based on some imaginary conversation he had five years ago.

              But he’s all about “content” and not “form.” Try to believe it, folks.

      2. STILL choking on that one, eh?

        Huh? Not at all. Just reminding people that the claims at issue in Myriad are distinguishable from these other recent cases (and many of the old cases) because they didn’t recite any information-processing steps.

        1. Huh?

          LOL – the Vinnie Barbarino response. Classic.

          Not at all” – your posts scream something else pumpkin. Are you aware that you are going apoplectic?

          1. Are you aware that you are going apoplectic?

            LOL.

            Try to believe it, folks. This p a t h e t i c little t urd calls critics of software patents “killers and rapists” and then accuses other people of “going apoplectic” when they point out that he’s a p a t h e t i c little t urd.

              1. Keep running with that mischaracterization pumpkin.

                It’s not a mischaracterization and, yes, of course you’ll be hearing about it for a long time.

                You own it. And so do your “supporters”, real and imaginary.

              2. Lol – it is a clear mischaracterization as the black and white clearly show just how ridiculous you are being.

                Run with it pumpkin – you be the @$$ here (no real surprise) and this is just more Malcolm FAIL.

                If you clench tight your eyes, that won’t change the result – no matter how much you whine (well past any 30,000 mewling QQ word limit)

    1. Malcolm, if the court in Myriad had given weight to “isolated,” perhaps it would have held that the claim composition was man-made. But I believe the vice in the claim was is functional definition of the structure such that both naturally occurring DNA and isolated DNA produced the same proteins-again, giving no weight to “isolated.”

      1. The crux of the matter was that isolated – even changing the structure as it did – did not do “enough” to effect a change in kind.

        This is probably the EASIEST of the recent Supreme Court decisions to understand and it is supremely amusing to see the [TYPICAL] anti-patentists struggle so.

  9. I notice in the last few articles posted on here that you lawlyers like to hang on buzz words and individual snippets taken out of context. If you would take a second to back up and observe the whole of all these 101 cases together you’ll see that they’re all talking about the same thing, with various little phrases tossed in for flair.

    How are you guys missing that? Just article after article jumping on this word or that and missing the whole.

      1. You can’t claim things that are within three categories of things and those things are abstract ideas, laws of nature, and natural phenomena and Alice attempted to. You can’t claim them in any form or fashion, even if you try to tack things on to them while still effectively covering/preempting the underlying abstract idea, law of nature, or natural phenomena. We use a fairly simple test to sniff out people trying to do so, first we look for anything that would be within the three categories that the claims involve and see if the claims are directed directly thereto or appear to be otherwise preempting such, then we check if there is anything in the claim which would tend to indicate that our first inclination was mistaken, Alice appeared to be and there is nothing to indicate otherwise.

        That’s it. That’s all.

        1. Define the metes and bounds of the category “abstract.”

          Notwithstanding the Court’s refusal, it is kind of important for a legal sufficiency reason.

          1. Define the metes and bounds of the category “abstract.”

            Again, the essence is an idea that is not embodied in physical form or that does not result in a physical transformation of matter.

            Mental proceses are abstract. All of them.

            Information is an abstraction. Facts are abstractions. Mathematical relationships and correlations are abstractions. Prices are abstractions. Legal relationships are abstractions. Laws — both natural and man-made — are abstractions.

            The minimum requirement for a patent is that your idea be embodied in a physical form — recited in the claim — or in steps that achieve some transformation of matter, wherein that claim does not protect these abstractions, either universally or in some recited field. But, as the Court in Bilski told us, that isn’t all there is to it (the so-called “basic MoT test” just provides an important clue). Some embodiments aren’t going to qualify because the chosen “form” or transformation is insufficient to rescue the claim. See Prometheus for a very clear example of that.

            1. What a convoluted reading of Bilski. The court clearly said the MoT test was a clue but that claims NOT passing this test could still nevertheless be patentable. The focus is on abstractness instead. The proposition that MoT is the threshold and that some claims passing the MoT could still be found ineligible is approaching neutron-star type density. PTAB opinions are now routinely slapping down examiners who only use MoT.

            2. Facts are abstractions.

              Clearly not. Perhaps that’s why you have such an ethical problem with your lack of control when it comes to spinning facts.

              You seem to be really stuck on a metaphysics breakdown, and you just don’t grasp what you are trying to sound so “impressive” with in your answer – it is a non-answer because it is strictly nonsense.

              Your view on the failure of MoT to be a requirement in Bilski (just a clue) is grasping at the wrong result. By being just a clue, the Court indicated that that clue NEED NOT BE MET. This rather wrecks everything that you are trying to peddle here. Your attempt here to peddle Prometheus as some direct link to Bilski only proves that you do not understand what the Court held (yes, it was a 9-0 HOLDING) in Bilski.

              Given that Alice is but an amplification of Bilski, I suggest that you try to come to grips with your lack of fundamental understanding.

          2. “Define the metes and bounds of the category “abstract.””

            No thanks. The USSC and I prefer to keep it flexible so that you may not attempt end runs around it.

            Talk about legal sufficiency all you like. Go ahead. I’ll be here to lol at you.

            1. LOL – that would be a FAIL then – void for vagueness.

              But please feel free to laugh in your simpleminded lack of legal appreciation. It’s, um, well, let’s go with “charming.”

              1. “LOL – that would be a FAIL then – void for vagueness.”

                Well why don’t you ask the USSC to void their own “law” writing for vagueness?

                Oh, what’s that? You don’t think they will? And they’re the only ones with the power to declare laws “void for vagueness”? Well then you’re SOL ain’t ya?

              2. I suggest that you do just a little research on the Supreme Court decisions being overturned (hint: no, they certainly are not the only ones to change what the Supremes say is law).

                You know, a little knowledge that you might find helpful.

    1. LOL -lovely AOOTWMD 6, with the chorus of the perpetrators themselves immediately chiming in (that would be Malcolm and Ned).

      1. the perpetrators,

        We’re like killers and rapists, to be more specific, right?

        That’s what you asserted in the previous thread. What’s the matter? Having second thoughts about that?

        You seeemed pretty proud of yourself on the previous thread. Did something change?

  10. “For Justice Thomas, the ‘step two’ inquiry involves neither inventiveness nor pre-emption, ”

    If you think that then you don’t understand that the “two step inquiry” is just preemption by another name. That is, you can call the two step inquiry the preemption inquiry and the two step inquiry very much “involves” preemption.

    1. In general, I agree with your point, 6. The eligibility question necessarily hinges on whether ineligible subject matter is being protected or “pre-empted” by the claim.

      I do believe it is a mistake to refer to any eligibility analysis (with no reason to assume that there is just one) as a “pre-emption test” or an “inventiveness” test because those terms don’t accurately describe the logic employed but they do confuse people who tend to self-combust shortly thereafter.

      Better to simply refer to the tests as the “Prometheus test” or the “Alice test”.

      With respect to the former test, it seems far past the due date for commenters (not necessarily Leftsin) to continue to pretend that it is limited to “natural laws” when the Court in Prometheus itself used that term only sparingly to describe Prometheus’ claims.

      Prometheus claimed a method of gathering data (using an unpatentable old method) and thinking about a correlation. The recited correlation was one of ten trillion gadzillion different things that one could think about after collecting the data (as I recall, Mayo wasn’t enough using that same correlation when they designed their own treatment protocols — but they were allegedly “thinking about it”). The specific information itself (i.e., the extent to which it was a “natural law”) was not the problem. The problem is that the claim protected ineligible subject matter, i.e., information, at least with respect to practitioners of the prior art (i.e., people who used a method in the public domain to gather data).

      1. Serious SPIN warning:

        it seems far past the due date for commenters (not necessarily Leftsin) to continue to pretend that it is limited to “natural laws” when the Court in Prometheus itself used that term only sparingly to describe Prometheus’ claims.

        Um,… sparingly? That’s an odd synonym for “critically.”

        1. That’s an odd synonym for “critically.”

          Plainly there was nothing “critical” about “natural laws” when we see nearly identical reasoning (with approving citation of the case) applied in Alice where “natural laws” are completely absent.

          I’m sorry to commit the violent act on you. There’s probably someone on the rape hotline that can help you.

            1. Clearly the context of your use was geared internally to the Prometheus case,

              Clearly when I referred to “past the due date” I was referring to the fact that the Court in Alice — the same Court which wrote the Prometheus decision — understands that the principle in Prometheus is broader than just “natural laws.”

              But pretty much everybody understood that even before the Prometheus decision itself.

              1. Can you move the goalposts back now?

                They were never moved.

                Do you just spin a wheel and then re-post the same gxrxge randomly? That would explain everything.

      2. “I do believe it is a mistake to refer to any eligibility analysis (with no reason to assume that there is just one) as a “pre-emption test” or an “inventiveness” test because those terms don’t accurately describe the logic employed but they do confuse people who tend to self-combust shortly thereafter.”

        That may be.

        One of the funniest things about these new threads is that the “two steps” given by the justice are nearly verbatim the “two steps” I gave to Ned years back right here on PO to explain the process of applying preemption. It doesn’t take a rocket genius to distill the two steps from Benson and Flook.

        But regardless, I don’t really care what it is called. I like preemption. If other people like something else then fine. I couldn’t care less.

        “Better to simply refer to the tests as the “Prometheus test” or the “Alice test”.”

        Mmmm, it comes from Benson, or even earlier, so I don’t see why we’d call it one of those. Maybe since those cases are more modern they’ll be better received.

  11. Align what the guest author is saying in this thread with my post at link to patentlyo.com

    Let’s recap what this decision is about:

    Abstract (whatever that means)

    Gist of the invention.

    That’s it.

    Gist is the Court merely disregarding the explicit words and stated intention of Congress in 1952 “in retaliation” of those scriviners being too clever and doing something the Court feels just should not be allowed to get away with.

    Statutory categories? – just doesn’t matter. Period.

    Utility? – just doesn’t matter. Period.

    What matters? What the Royal Nine feel is important (and that is not scriviners, nor – apparently, the rule of law)

    What also matters? “Abstract”

    What does that mean? LOL – they REFUSE to tell you, me, or anyone.

    Great job Court.

    1. As I have also posted, it is NO ACCIDENT that the Court’s words purposefully obfuscates the concepts of 103 back into 101 – this is a clear attempt to undo what Congress did by creating 103 in the first place.

      History repeats.

  12. I thought that the Supremes believe these “three tests” are three aspects of the abstract idea exception and not three different tests that yield different results. Surely we must interpret all three in a way that makes them synonymous. If we do not then our interpretation is surely different from what the Supremes have in mind.

    1. Oops. I posted too fast. I should have written “complementary”, not “synonymous”. In other words, “inventiveness” and “do more than apply it” are what you need to avoid preemption. If in our analysis the three test diverge it is a sign that we are missing something.

    2. paul,

      You make a preposterous assumption that the Court had a unified view in mind.

      The Court has explicitly told us what they have in mind when they announced that they refuse to define a critical term in the law that they have written.

      As I posted elsewhere, even if we hold off on the constitutional crises of the separation of powers violation – for argument’s sake allowing the Court to re-write the law, that very law is void for vagueness precisely because we cannot know what the Supremes have in mind. They refuse to tell us ahead of time what “abstract” means precisely because to do so would remove the power that they are so clearly addicted to.

      1. Please tell everyone how you would re-write the law on subject matter eligibility and/or obviousness to deal with the issues that are presented by cases such as Prometheus v. Mayo.

        Otherwise your faux-“principled” stance and howling about a “constitutional crisis” just seems like a lame ploy to revert to the status quo which was unworkable and unacceptable to just about everybody except a tiny, tiny, tiny class of self-interested grifters.

        Step up the plate, Billy, and take a swing at this softball. After all, you’re an “expert”, aren’t you?

        Let’s hear it.

        1. Again you ASSUME that the law needs to be rewritten.

          Do you realize exactly what you are saying? Apparently not.

          Think man – THINK.

          1. you ASSUME that the law needs to be rewritten.

            No, I’m not assuming that at all. I’m asking you to tell everyone whether, in your opinion, the law needs to be rewritten.

            Because if you believe that after your wish is granted and these recent cases are expunged (your fantasy) that the law doesn’t need to be rewritten, then it would be nice if you explained to everyone whether (for example) claims to methods of thinking new useful thoughts or claims in the form [oldstep]+[newthought] should be eligible and patentable. Those claims are processes, after all, and if you leave the statutes as written it’s not clear how you prevent them from being patentable. It is clear that pretty much nobody wants claims like that to be eligible for patenting, however.

            All that’s happening here is I’m asking you to look forward into the future. That doesn’t seem unreasonable when we are discussing a law that will affect future citizens of the country.

            1. I’m asking you to tell everyone whether, in your opinion, the law needs to be rewritten.

              That’s decidedly a different statement.

              Your first one centered on what would be the changes in the law and this one centers on whether the law needs to be changed.

              Your grasp of English as a first language is slipping mightily. You may want to check your blood pressure.

      2. They refuse to tell us ahead of time what “abstract” means precisely because to do so would remove the power that they are so clearly addicted to.

        Pretty sure that “abstract” in this context means “not embodied in a specified physical form or otherwise transforming a physical medium” or something close to that.

        Mental processes are certainly abstractions, as are idea and mathematical relationships. Applications of logic to information without physical transformation are likely also abstract.

        That still leaves open massive amounts of space for innovation. What’s your problem exactly?

        1. That still leaves open massive amounts of space for innovation.

          To be clear, it leaves open an infinite amount of space for innovation (patents aren’t necessary for innovation, as everyone knows) and nearly all of that space is eligible for patent protection even if we exclude “abstractions” as I’ve defined them.

          There is nothing radical about this whatsoever. What’s radical is your position. That it is why the Supreme Court is smacking you across the puss on a regular basis.

          1. Quite in fact, your “definition,” sounding as it does in basic MoT was REJECTED by the Court in Bilski.

            And since Alice is just Bilski amplified, it is more than safe to say that you are objectively wrong.

            1. sounding as it does in basic MoT

              “Basic MoT” is a test that looks at whether any machine or transformation is present and ends the analysis of eligibility. That test was rejected (properly) but only insofar as it was deemed by the lower courts to be conclusory about eligibility. Somehow “Mr. Ethics” you seem to always forget to mention that the Supreme Court approvingly cited the test as providing an “important clue” to eligibility.

              Note that I wasn’t describing a test for eligibility in my comment. I was attempting to define “abstract subject matter.” The presence of “abstract subject matter” in a claim does not by itself render the claim ineligible per se.

              Indeed, if a new, useful, non-obvious machine, structurally described and distinguished from old prior art machines in physical terms, is present in the claim then it would seem that all eligibility issues are addressed. Can you think of an example where this would not be the case? If so, please share.

              1. LOL – My statement stands complete on its own.

                YOU forget that I DO also occasionally add to the statement – depending on what is being discussed.

                For example, You may recognize this:

                Bilski: MoT – not required.
                Promethus: MoT – not sufficient.

                Of course, here in your response above, you attempt to mischaracterize my post in an attempted slam on ethics.

                You fail badly. You really don’t have a grasp on what ethics are at all do you?

                I was attempting to define “abstract subject matter.”

                You failed at that as well. Badly there too.

                , structurally described and distinguished from old prior art machines in physical terms” – (I already gave you Orthokinetics case as an example).

                LOL – and yet another FAIL, here you attempting your pathet1c non-law version of structure only.

                Criminy Malcolm – three strikes in one post. Go back to the bench.

        2. Pretty sure that “abstract” in this context means “not embodied in a specified physical form or otherwise transforming a physical medium” or something close to that.

          Pretty sure if that was what was meant, the Court would have actually stated that.

          As it is, they did not.

          1. Pretty sure if that was what was meant, the Court would have actually stated that.

            Pretty sure it doesn’t matter what they stated or did not state if the Court can be persuaded that the definition is an accurate formulation of what they were trying to get at in the first place.

            This is why the Court requests briefs from adverse parties and amici. They want input from reasonable people.

            But, hey, maybe they need to know that anybody who disagrees with you about subject matter eligibility is just like “a killer or a rapist.” They might find that really persuasive. So keep repeating that, by all means.

            1. if the Court can be persuaded

              What part of “We are not defining ‘abstract'” eludes your understanding?

              You must be trying so very hard to be so very dense.

              (nice running pumpkin)

  13. Prior to the 1952 Patent Act, claims were rejected/invalidated as “lacking invention.”

    The 1952 Patent Act defined “invention” and also defined “claimed invention.”
    An applicant can obtain a patent if the “invention” falls into the categories of §101. An applicant can obtain a patent if the “claimed invention” satisfies the requirements of §§102, 103 and 112.

    I fail to find in Title 35 any reference to “inventive concept.” Giles Rich and PJ Federico would not be happy.

    1. John, you do know that §101 also requires that the four categories be “new” or “improved?”

      I was never amused by Judge Rich ignoring the statute.

      1. I was never amused by Judge Rich ignoring the statute.

        Today’s nomination for the most inane and @$$-backwards statement.

  14. Mayo’s ambiguity led to the Federal Circuit’s fracture when it heard CLS Bank en banc.

    A point that only certain posters (ahem) pointed out – and a point NOT addressed by the Supreme Court in their Chamberlain position.

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