by Dennis Crouch
Patentees in the biotech and software industries had placed substantial hope on the pending Supreme Court case of Sequenom v. Ariosa: The hope being that the case would serve as a vehicle for the Court to step-back from the strong language of Alice and Mayo that has led to rejection and invalidation for many. The Supreme Court has now denied certiorari in Sequenom – effectively ending that campaign.
Thank you, Mr. Distant for posting this excellent comment regarding the interpretation of 101:
link to patentlyo.com
MM, yes it is. It is an extremely valuable refutation of the position advanced by some here that Congress intended to change the law regarding 101 in some way when it reenacted the very same language that had previously existed. Further, it is a direct rebuff of any argument that 101 is in any way an overrule of Funk Bros.
LOL – Ned – your “version” is exactly what is trounced in those materials.
Time for you to desist from your unholy elevation of the Supreme Court above the Constitution.
Note as well – nothing in the materials is different than what I have already told you about what happened in 1952. The very act of seeking to codify and remove from the courts the previously granted power of common law development – in direct retaliation of the Supreme Court going too far – is verified in this treasure trove.
nothing in the materials is different than what I have already told you about what happened in 1952
LOLOLOLOLOLOLOLOLOLOLOLOL
Keep laughing – that just shows that you are not reading (nor learning).
“nothing in the materials is different than what I have already told you about what happened in 1952”
Except all of it.
Except none of it.
I agree with Malcolm to thank Mr. Distant, and to invite furthr careful study.
For example, the phrase often used by Ned (“just to codify the law”) is apparently NOT to codify what the anti-patent Supreme Court was doing to the law.
See bottom page 2 of link to ipmall.info
As true today, back then there were philosophical machinations afoot to diminish patents.
Study well history, lest you need to repeat those old lessons.
People should try to remember that a denial of cert is not a holding.
How do Greg and Martin etc. get their pics to show up? I don’t see the setting anymore.
Honestly, I do not know why my picture shows up. Perhaps because I list my gmail address in the “e-mail” slot, and that is the picture associated with my gmail?
Probably that. You probably had that pic up before he switched systems and now you’re still using the same gmail account. Either that, or else your pic is associated with your gmail on some other social media platform and it is lifting it from there.
Where did you post that scottish bagpiper pic to? If you can recall.
That is (or rather was) me, at the Springfield IL highland games back in 2004.
How long did it take you to learn to play the bagpipes? Seems like a tough instrument.
Took my friend a long time, but on the other hand, most people can barely discern the difference between good bagpipe players and bad ones.
I uploaded it to gmail in the “select profile picture” section right at the very top of the account settings.
k it must be bringing in your profile pic directly from gmail. I wonder what platform d is using now?
6, that pic is from gravatar, which apparently is connected via API to this site.
Confused: What is ultimately at stake is the kind of world in which we want to live.
Gee, what are the odds that “Confused” was out there expressing his deep concern when Prometheus was running around sueing people for thinking a new thought about previously gathered data?
Pretty slim.
Here’s the deal: nobody except a tiny tiny handful of patent attorneys and tiny group of ultra wealthy investors wants to live in a world where people “discover” stuff and then run to the PTO to get a patent on “look at my stuff.” Nobody ever wanted that. Congress surely didn’t want it or we’d have reams of such patents filed from the beginning.
That’s what this case was about. Don’t like it? Propose a statutory fix that keeps the “detect this stuff” claims that everyone wants and eliminates the “detect this stuff” claims that nobody wants. And good luck with that.
But whining about Mayo and Alice is p@thetic. Those cases aren’t going anywhere and if you don’t understand why then you’ve been living under a rock for the past twenty five years.
Translation: “But look at the Ends, aren’t these wonderful Ends? – Who cares about the means with Ends like these…?”
The tip off (the poker tell) is Malcolm once again depending on the ad hominem of “tiny tiny handful of patent attorneys and tiny group of ultra wealthy investors”
It is “cohorts” Oh Noes mindlessness.
Another friendly reminder to the kool-aid drinking Chicken Littles running around screeching that we’re entering some kind of “dark age”: patents aren’t the only way to promote innovation, and they never were.
And most discoveries aren’t patented. They’re shared.
You guys really need to get out of the office and hang out with some people who think about things other than their next million.
LOL – talk about your “false equivalencies”…
(Plus the usual rampant anti-patent animus, no wonder why you exhibit such cognitive dissonance. Let me repeat my advice to you: get into a career in which you can believe in the work product you produce).
anti-patent animus
Stating an incontestable and fundamental fact of life is hardly expression of “anti-patent animus”.
Patents are awesome and useful when the system if working properly.
But they aren’t the only game in town. They never were. Now, it’s certainly the case that some people out there would love for patents to be the only game in town. Can you guess who those people are?
Go ahead. Take a guess.
Nice strawman.
Does not hide your anti-patent animus though.
Get into a different profession.
Downthread we have a patent maximalist stating that nobody in the 18th century could have conceived of healthcare.
Try to believe it, folks.
Like I’ve said for many years: these people will do and say literally anything.
Every commenter here misses the important business reality. Inventors decide to file based on the state of the law at the time of filing. They disclose in return for limited terms of protection. Their investors invest based on that. Any decision that moves the goalposts after filing is inherently unfair. Want to state a new rule? Establish a new test? Require new kinds of claiming? Great – apply those prospectively, but don’t rob people who played by the rules and can’t now take back their disclosures or amend their filings to comply with your new rules.
Kids in the sandlot know that you’re not allowed to move the fence once the ball is in the air. Why can’t judges get that fact?
Basically Lawrence, that would require the acknowledgement that what the Court is doing is actually re-writing statutory law (something that violates the separation of powers doctrine).
Can’t have the emperor knowing they don’t have a stitch on, now can we?
Keep whining, grandpa. 1952! 1952! Yes, we heard it already.
Meanwhile the steamroller will continue to crush your ridiculous patent fantasies into dust.
There’s no going back to State Street, ever. Give it up already because incessantly whining about the long gone good ol’ days of pure patent ins@nity just makes you sound even more like a bott0m-feeding tr0ll than you usually do.
State street….?
That’s not 1952 “grandpa.”
As for whining, you are the tops for that (yet more of the typical short script AccuseOthersOfThatWhichMalcolmDoes… Go figure Folks)
No Malcolm, what I am doing is calling for the proper application of law – yes, I do “get” that such gets in the way of what you want the law “to be,” but that’s just too bad for your “feelings.”
State street….? That’s not 1952 “grandpa.”
I never said it was. But it was surely the maximalist dream opinion interpreting the 1952 statute.
And it’s officially a c0rpse. And we’re never, ever going back.
Seriously, “anon”, discussing patent law with you and your c0horts is like discussing the Civil Rights Act with the Grand Wizard. You live in a warped bubble where your self-importance and your paranoia drip from every comment.
We all know that you guys don’t like the direction that things are going. We get it. But it is the direction that things are going. We’re not going backwards, ever. Maybe try dealing with that and contributing something constructive for a change instead of ranting endlessly about the Supreme Court and “leftists” and “academics” and c0mmies and all your other silly bugbears.
It’s possible to write better patent statutes, you know? The question is why on earth any reasonable person would want people like you anywhere near the room where those statutes are written.
I am talking about 1952 and you tried to insert words into my mouth.
Not the first time that you have tried this type of dissembling.
Maybe instead you want to focus on the law…?
As it is.
Written by the branch of the government authorized by the Constitution to write that law.
And one that simply does not accord with your “feelings.”
And sure, that branch may write a better law – but that is rather moving the goalposts from what I am pointing out, now isn’t it?
(That’s a rhetorical question, by the way)
Progress is rarely linear. We are stepping backward here and there. CAFC is undermining Alice, which is eminently in need of modification, but of course in about the least productive way. I cannot see how Bascom and Enfish can be squared.
I do find it interesting that Newman has realized that some kind of construction or preliminary finding of patentability is essential to reasonable litigation and judicial economy.
some kind of construction or preliminary finding of patentability is essential to reasonable litigation and judicial economy.
There is “some kind of construction” and there is a “preliminary finding of patentability” in many (most? nearly all?) cases with gaping eligibility issues.
In those cases, there is typically no dispute about what’s in the prior art and there is typically no genuine dispute about the claim scope (“apply this ineligible rule to this data, on a computer”).
MM there is nothing like a formalized Markman step to construe the bounds of a patentability challenge.
Maybe there should have been one added immediately post-KSR, but Newman is clearly calling for something just like that.
I’m waiting for the official thread to talk more about the Bascom case. But the idea of first looking at the patentability of combined technological elements recited in a claim and then reaching a conclusion regarding eligibility is not a new one. It’s totally appropriate in many circumstances. Of course, in many circumstances the analysis of those combined tech elements takes about three seconds.
don’t rob people who played by the rules
The fact is that for a long time pretty much nobody was playing by any rules.
The system turned into a free-for-all and what we’re seeing now are the necessary corrections that many of us saw coming years ago. And we told you about it in real time.
Where you were? Let me guess: trying to “monetize” some pile of junk that you didn’t deserve.
And by the way: there’s more to come. A lot more.
Wow MM. So much venom, and ad hominem attack. I feel for you.
LH: So much venom, and ad hominem attack.
It was you who started up with people being “robbed”, Lawrence.
Nobody was “robbed” by this decision. Rather, what belonged to the public was returned to the public.
That’s cause for celebration.
The idea that we are all supposed to shed a tear for “investors” who gambled on an out-of-control patent system and a ridiculously broad patent claim is an idea that only a patent attorney could cook up. And yes I’ve seen it before. I can hardly wait for Kevin N00nan’s “what about the children?!” rant which is surely coming if it hasn’t been published already.
“what belonged to the public was returned to the public.”
How dare anyone try to obtain a patent on anything that has protons, neutrons and electrons.
Protons, neutrons and electrons belong to the public, to the commons.
Let’s all get on our knees with Jane and hope and prey that this righteousness of the commons comes to be understood by those “cohorts” seeking to take protons, neutrons and electrons out of the commons through the devious attempt at scrivening mere configurations of these protons, neutrons and electrons.
(simply applying the basic “logic” of Malcolm’s position to its own logical ends)
Because if investors made choices based on unconstitutional or immoral law, they don’t get a free pass to act in unconstitutional or immoral ways once the law is corrected.
Did Congress do that (and do you recognize the limits of the judiciary when it comes to statutory law – especially statutory law that is explicitly allocated only to the legislative branch in our Constitution? Or is that terrain simply too inconvenient for you?
anon your belief that the Supreme Court may not modify a statue is simply bizarre.
Ironic (or maybe just hypocritical) that you are so concerned with the legal terrain, yet somehow elide the bedrock fact that Congress can write what it will, while the Judiciary determines what the law means.
They may not rewrite the statutory law.
There is absolutely nothing bizarre about that.
(Interpretation is very much distinguished from re-writing)
Unclench your eyes and note the difference between statutory law and common law.
Yea, tell us all how “interpreting” is not the same as “rewriting” anon.
I’m aware of the canons of statutory interpretation ((or at least the existence of such) and I understand the prime directive to do the least violence to the statue- but when it ain’t gonna fly, it’s gonna get rewritten to some degree- or interpreted if you wish, but the result is exactly the same.
Like I sez; bizarre.
“ get rewritten to some degree- or interpreted if you wish”
Actually exactly opposite the point I was providing.
Unclench those eyes son.
Following on from this with some comments about 1951 and 1952 legislative history and what “Congress” intended. So whose intent is relevant to “legislative intent”? Surely not Rich and Federico, as they were not elected legislators? Actual elected legislators who were sufficiently involved to have informed opinions of what they were about were South Carolina Representative Joseph R. Bryson, who chaired the subcommittee of the House Committee of the Judiciary, and other members of that subcommittee, including Mr WIllis, Mr Rogers and Mr Crumpacker.
Photocopies of pages of the Congressional Record are to be found linked to this webpage:
link to ipmall.info
So what did “Congress” intend?
To begin with here are some remarks of Mr. Rogers, commenting on Giles Rich’s discussion of contributory infringement on June 15, afternoon session:
MR ROGERS: “Before going to that, may I make inquiry concerning section (c) of 231?.
“Do I understand that that is just an attempt to clarify what the judicial decisions have said constituted contributory infringement?”
[…]
“This committee was given some information to the effect that this bill was merely a restatement of statutory law plus common accepted interpretations of Supreme Court or higher court decisions, that in its nature, the entire bill should not be a controversial one…”
But probably more interesting, particularly in view of “natural phenomena” is the discussion between Mr Willis (Representative) and I.J. Fellner (witness) on the morning of June 15, 1951. Fellner had noted that a second sentence in what became 101 was dropped from a draft of the previous year. The sentence that was dropped read as follows:
“An invention in the nature of a discovery as embodied in a new and useful art, machine, manufacture or composition of matter, or new and useful improvements thereof may be patented.”
Fellner wanted this statement reinstated, because he was very concerned about the Funk Brothers decision. He therefore wanted this sentence reinstated in 101 to “clarify” that section in a manner that would overrule the definition of Funk Brothers. Mr Willis (a member of the subcommittee) drew his attention to the draft of section 100(b), stating that the term “invention” includes discoveries, and asked whether this was not enough. Mr Bryson (the Chairman of the Subcommittee) stated that “There is no intention to change the law as it is currently written”. Fellner countered by saying that reinstating the wording from the earlier draft would “be making unequivocal that which might now be merely inferrible”.
Mr Willis: “You would prefer, or rather advocate an amendment to carry out what you have in mind?”
Mr Fellner: “That is actually what I am trying to do.”
Mr Willis: “But I do not think that is what this particular bill is intended to accomplish.”
The discussion then covers the fact that “invents or discovers” was in the pre-1952 statute, and that this was interpreted as in the Funk Brothers opinion. And Mr. Crumpacker makes the following remark:
“If the Supreme Court has interpreted the words as you indicate, I do not see how including that language in the paragraph would cause them to make a different interpretation.”
An internet search on “Fellner Bryson Willis patent” brings up stuff, including the following article by Eric Weibel, also discussing this exchange between Fellner and the members of the subcommittee progressing the bill:
link to examiner.com
Note also that there was a statement to the Senate made by Senator McCarran when the House Bill passed the Senate.
“
Broken link to “examiner.com” at the end of the above article is repaired below:
link to examiner.com
Right, only the Supreme Court gets to ignore the Constitution
…To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.
Come Les, you know your statement is just not true…
…it is not ONLY the Supreme Court – as we see plenty here, those supposed attorneys whose philosophies and desired ends are met also “get” to ignore the Constitution and such things as separation of powers to celebrate broken scoreboards (but shhhh – we shouldn’t draw attention to broken scoreboards)
😉
yea well the Constitution also considered black people 3/5ths of a person, and that wasn’t going to fly either.
No. Actually it didn’t.
yea, it did.
All other people than free (white) persons and non-taxed Indians.
Article 1, Section 2, Clause 3
Have another glance. You are once again reading words into laws that just are not there.
Funny thing is, he is importing the words that the Court imported (making the very mistake that I am pointing out and proving my case for me)
Les the argument that the 3/5 clause did not refer specifically to black slavery is junk sophism. Grow up.
Legislative history (deprecated on this thread) inescapably proves that it was.
This point would be well explored in relation to Prof. Radin’s paper about traditionalist and holistic theories of plain meaning.
Point is, you are reading words into the law that are not there.
It does not say slaves were 3/5 of a person. It said for figuring out how much of the pie a state gets here are the weights to be applied. Furthermore 3/5 was not applied based on skin color, it was applied based on status. A freed slave would have been weighted by 1 according to the formula.
And by the way, are you arguing that the entire Constitution should be ignored because of the “3/5 clause”?
Little known but white people were also slaves.
Further, the context here was a State’s rights thing; and in those states known as Free States, there was no “3/5’s” in play.
It is this type of “sound byte, I slept at a Holiday Inn last night” treatment of law that p00r Mr. Snyder so aptly proves my points with.
Time and again.
This seems like some rather pointless quibbling. Imagine that instead of
Mr. Snyder had written
The rhetorical force of the point he was making would be only trivially diminished, while your objections would be eviscerated of all force.
In other words, your niggling objections are technically correct, but they really miss the forest for the trees. The 30 June, 9:42 a.m. response seems like an intelligent response, but everything else said in contradiction of Martin Snyder’s point is just inane evasion.
Greg –
I respectfully submit that all of the problems with Patent Law come from one person or another “interpreting” the law further and further from what the law says.
The constitution says nothing about race or skin color. 35 USC 101 says nothing about abstract ideas, math, in the human mind, pencil, paper, building blocks, laws of nature, products of nature or preemption. Nevertheless, one court found one of these in 101 and another stretched that to find another and a subsequent court twisted those to find a third and so on.
Call it quibbling if you like….I think its important.
I suppose that if I were inclined to inane quibbling, I would note the XV amendment. Once again, however, this would rather miss the real thrust of the argument on the table, so I will not belabor that point.
I largely agree. If you mean to say, however, that this observation is somehow analogous to an alleged “misreading” of Art. 1, §2, cl. 3, well, that seems a stretch to me.
The whole constitutional, pseudo-historical argument here seems like quite an unprofitable detour from the actual point about §101.
“The rhetorical force of the point he was making would be only trivially diminished, while your objections would be eviscerated of all force.”
Greg – I see it as quite the opposite. The “rhetorical force” is near zero because Mr. Snyder is playing the “I slept at a Holiday Inn last night” game of sound byte quoting. He has failed to account for the context of that provision and (as I noted previously) the provision does NOT stand for what he attempts to make it stand for.
He broadly paints a phrase INCORRECTLY, and neither recognizes nor cares of the context of that phrase.
No one is doubting the pain and suffering that came along with slavery – or that the 15th amendment was aimed directly at a race-based issue.
That though is just not the point – in context here and now. The dynamics of Free State/Slave State and Federal/State rights simply have nothing to do with patent law or a patent law related to the Constitution discussion.
Lawrence, I think there is fundamental agreement that a change in a statute cannot invalidate vested property rights that were valid when granted. However, that does not apply to Supreme Court decisions that only interpret the statutes or the Constitution.
The Supreme Court in these 101 cases did not purport to overturn or overrule any prior cases. Rather the Supreme Court has been consistent. The problem of issuing patents that are inconsistent with the Supreme Court is the problem that you now seem to complain about. If you have to blame somebody, blame the Federal Circuit for not following the Supreme Court case law, and blame the patent office for issuing patents that it should have known were invalid under existing Supreme Court case law.
They say that they have been “consistent,” except EVERYONE knows that such is not – and cannot be – true.
The overwhelming feality to the Supreme Court is NOT in accord with your oath as an attorney Ned.
Time to stop genuflecting at that alter.
I am confused. I had always thought that an invention could be described as the practical application of a discovery. Was I mistaken in that belief?
Many patent laws around the world prohibit the patenting of discoveries. However, that does not mean that inventions cannot be based upon discoveries.
Finding that cffDNA is present in circulating maternal plasma is an unpatentable discovery. However, a method of diagnosing foetal abnormalities by isolating and analysing that cffDNA is new and useful (practical) application of that discovery – and hence an invention. Outside of the completely incomprehensible world of the Supreme Court of the US, it really is as simple as that.
It is even more confusing that that if you read the U.S. Constitution and/or 35 USC 101, both of which indicate that Discoveries are patentable.
…let’s not forget 35 USC 100(a)…
Confused: I had always thought that an invention could be described as the practical application of a discovery. Was I mistaken in that belief?
The answer is that it depends on the discovery and it depends on what exactly you are claiming. There’s more to it than the “simple” belief you set forth, and there’s good reasons why there’s more to it. That said, the reality isn’t very complicated.
Finding that cffDNA is present in circulating maternal plasma is an unpatentable [ineligible] discovery.
Right. Now pay close attention to this next part: if your claim is so broad that it prevents people from observing that ineligible natural phenomenon using prior art tools designed for the purpose of observing such phenomenon, then your claim is ineligible. With respect to this case, PCR is a prior art tool for observing tiny amounts of DNA (and has been for a long time).
a method of diagnosing foetal abnormalities by isolating and analysing that cffDNA is new and useful (practical) application of that discovery – and hence an invention
The method you described may be an “invention” in the general sense but the important legal question remains: what exactly is being claimed? If “isolating cffDNA” encompasses “performing PCR on cffDNA”, then you’re still in the weeds. Adding a broad generic (and mental) step of “analyzing” the result of the PCR reaction isn’t going to get you anywhere (according to the USPTO’s recent guidelines, at least, it actually makes matters worse).
the completely incomprehensible world of the Supreme Court of the US
There’s plenty of us out here who comprehend this stuff quite well and we’ve been ahead of the curve for many years. What’s difficult to comprehend is how the American judiciary could have been so short-sighted to believe that opening the gates to the patenting of everything and anything you could describe as a “method” was somehow going to promote anything other than infinite liability and a race to the bottom.