By: Michael Risch, Professor of Law, Villanova University Charles Widger School of Law
After the certiorari grant in TC Heartland, Dennis solicited a blog post from anyone who thought the case was not a slam dunk. Always the contrarian, I took him up on the offer. In a prior blog post at my own blog, Written Description, I detail some of the history of the statute and highlight why I think that Fourco does not necessarily answer the question. Colleen Chien and I flesh out the history and interpretation a bit more in our article, which we’ve blogged about here in the past.
I should note that the outset that I favor TC Heartland’s position from a policy point of view. I’ve long said in a variety of venues (including comment threads on this very blog) that there are significant problems with any system in which so much rides on where the case is filed. And I think that’s true whether you think they are doing a great or terrible job in the Eastern District of Texas.
Now, on to the interpretive issues. In general, I favor the application of longstanding original norms of statutory interpretation unless there’s good reason to depart from them (see, e.g., my new paper on reasonable royalties). I think this is doubly true where no one ever challenged the original interpretation (see, e.g. the ridiculous claims that common law copyright grants a performance right to sound recordings, despite the fact that no one ever thought so in the history of common law copyright). But in this case, I don’t think one can simply rely on the fact that no one challenged VE Holdings for 25 years. After all, the Supreme Court just overturned our understanding of design patent damages despite a tacit understanding that was more than 100 years old. As I noted here, this bothered me a bit given my general views, but I also think it was the correct statutory interpretation.
But, as I noted in my prior blog post, I don’t think one can just say “Fourco controls.” As I noted there: “Stonite and Fourco were statutory interpretation problems…. [T]his is a statutory interpretation problem. But the statute in Fourco is different from the statute today and has been amended twice since. We cannot rely on a supposed ‘rule’ about a statute that no longer exists.”
Instead, we have to return to first principles. In Stonite, the court clearly held that the patent venue statute was a special statute, to be specially applied differently than the general venue statute. After Stonite, the general venue statute was amended. But let’s look at the statutes of the time. Right out of Fourco:
Section 1400 is titled “Patents and copyrights,” and subsection (b) reads:
“(b) Any civil action for patent infringement may be brought in the judicial district where the defendant resides, or where the defendant has committed acts of infringement and has a regular and established place of business.”
Section 1391 is titled “Venue generally,” and subsection (c) reads:
“(c) A corporation may be sued in any judicial district in which it is incorporated or licensed to do business or is doing business, and such judicial district shall be regarded as the residence of such corporation for venue purposes.”
The court ruled that not enough changed since Stonite: we still had two separate venue tracks, and the patent statute was separate. The question now: is there a way for Congress to have changed this? could it have done so unintentionally? Let’s look at the 1988 change to 1391(c):
“For purposes of venue under this chapter, a defendant that is a corporation shall be deemed to reside in any judicial district in which it is subject to personal jurisdiction at the time the action is commenced.”
There is a key change here: 1391(c) no longer talks about a “separate” track where corporations can be sued “for venue purposes.” Instead, it says that “for purposes of venue under this chapter…” the definition of resides has now been set (emphasis added). The question is whether the Fourco precedent means that Congress had to do more than this to change the meaning of 1400(b) (which is in the same chapter). In VE Holdings, the Federal Circuit said no, it didn’t – that the plain language modified 1400, and, essentially, that Congress had said there were no more tracks here.
And that, I think, is the core question here. This is not a Supreme Court policy. This is the Court interpreting the statute. What did Congress do? In Stonite and Fourco, the Court said that Congress intended two separate tracks. The Federal Circuit says that in 1988, Congress merged those tracks by changing the definition of “venue” “under this chapter.”
The only other information we have is that in 2011, more than 20 years after VE Holdings, Congress expanded 1391 again. Section 1391(a) says the section applies to all civil actions “except as otherwise provided by law” (and as we detail in our article, the legislative history is clear that this referred to a list of statutes compiled by the ALI, and 1400 is not among them.) Further, 1391(c) expanded from “under this chapter” to “all venue purposes.” In other words, knowing that the Federal Circuit had interpreted 1391(c) and 1400 to be in a single track, Congress further expanded 1391 even more broadly and did nothing to clarify that no, really, “resides” in 1400(b) was really intended to continue to have the narrow definition. We know from many other contexts, in patent law and otherwise, that Congress is fully capable of correcting erroneous court interpretations, and the agglomeration of cases in Texas was known in 2011. Indeed, the AIA was passed in close proximity, and it included special provisions to deal with filings in Texas, but never once attempted to clarify that VE Holdings interpretation was wrong. For Congress to have expanded the venue statute and pass the AIA without addressing this point is particularly salient.
I, frankly, have no idea how this statutory interpretation issue will or even should come out. I don’t think this is a statutory slam dunk either way. TC Heartland is represented by outstanding lawyers who make outstanding arguments to the contrary. And the Court even granting cert. says something. You could dismiss all I’ve written with a wave of the hand: Fourco stands for the proposition that 1400(b) is separate and the current 1391(c) is no different in structure than the 1391(c) that faced the court then. I am troubled by this argument, but I can see how others might reasonably embrace it.
Ned: “And, if invention and discovers mean the same thing in the ’52 Act, what did Congress have in mind? The courts do not treat discovery and invention equivalently. One cannot get a patent on a discovery, but only on an invention, something created by man — even if that creation was accidental, as in the “discovery” that rubber placed on a hot stove vulcanized.”
Inventions and discoveries don’t mean the same thing. Why would you think they do?
The courts are ignoring the Constitution and the statute when they assert a judicial exception for laws and products of nature. Discoveries are explicitly protect-able under the Constitution and the Statute and as you appeared to agree below, there is nothing to discover, but products and laws of nature.
The judicial exception is a farce. The King has no clothes.
The courts are ignoring the Constitution
The Constitution doesn’t require any patent system at all, much less one that allows entities to monopolize natural laws and products of nature.
The courts are ignoring the statute
The statute doesn’t state that natural laws and products of nature are eligible for patenting.
The judicial exception is a farce.
Not at all. More like a necessary and essential part of any sane patent system.
The King has no clothes.
Don’t talk about the Big Q that way. He tries his best. He’s just not very smart. He needs to hire a competent patent lawyer to explain the basics to him. You should consider that, too, but I doubt it will do any good.
Article 2, Section 8:
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;
Two points:
1) You are quoting Art. I, §8, cl. 8, not Art. 2, §8. There is no Art. II, §8.
2) If you are going to quote the IP clause, you really need to quote the whole thing to be read in context, to wit: “The Congress shall have power 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,” (emphasis added). “Power to,” not “obligation to.” Congress can enact a patent law, but it is under no Constitutional duty to do so.
Indeed, it would be positively dangerous to read the list of things in Art. I, §8 that Congress can do as if they were things that Congress must do. Clause 11 authorizes the Congress to issue Letters of Marque, but the Congress has not done so since 1815, and the United States is forbidden to do so under binding treaty obligations.
Greg, Anderson’s-Black Rock, Inc. v. Pavement Salvage Co., 396 U.S. 57 (1969).
Sakraida v. Ag Pro, Inc., 425 U.S. 273, 96 S. Ct. 1532, 47 L. Ed. 2d 784 (1976).
Fed Cir. refusal to follow: Medtronic, Inc. v. Cardiac Pacemakers, Inc., 721 F. 2d 1563, 1566 (Fed. Cir. 1983)
“There is neither a statutory distinction between “combination patents” and some other, never defined type of patent, nor a reason to treat the conditions for patentability differently with respect to “combination patents”. It but obfuscates the law to posit a non-statutory, judge-created classification labeled “combination patents”. Richdel, Inc. v. Sunspool Corp., 714 F.2d 1573, 219 USPQ 8, 12 (Fed.Cir.1983). That the misstatement did not in this case lead to an erroneous application of the law, however, is indicated in part by the Memorandum statement that the “elements presumptively were combined in an inventive manner so as to render the combination patentable”. Though the record would have been more clear without the reference to “combination patents”, and “inventive manner”, it cannot be said that the appealed judgment was in this case so influenced thereby as to require reversal.”
Greg, Product of nature revolt by Rich: Application of Bergstrom, 427 F.2d 1394 (C.C.P.A. 1970), link to scholar.google.com
Products of Nature: The New Criteria, link to scholarship.law.edu
Essentially, Rich said the “new” in 101 meant not new as in 102, which is plainly ridiculous when considering products of nature. They are unpatentable because they are not truly new, albeit, unknown. Myriad plainly held that products of nature were not new within the meaning of 101.
But the PTO went off the rails in a wild goose chance for decades because of Rich.
Ned, I am with you in disagreeing with the CCPA on this particular point. I think that the better reading of the statute is that “new” in §101 is different from “novel” in §102. That said, I guess that (1) I am not sure that it really makes a practical difference in this case; and (2) in any event your ascription to Giles Rich of the CAFC’s error on isolated DNA vastly overstates Judge Rich’s role in isolated DNA patents.
Regarding (1), under Egbert v. Lippmann, 104 U.S. 333 (1881), novelty is destroyed by “public use” before the critical date. Public use includes use in which the public is not even aware of the invention’s presence (as when a woman wore a newly invented corset to a ball, even though the corset was under her dress and the ball-goers could not know that she was wearing it). Therefore, even if one reads “new” in §101 to be the same as “novel” in §102, it comes to the same end. A frog in the Louisiana bayou is still “in public” before the critical date, even if no one knew of the frog’s presence there until the “inventor” showed up and discovered the frog. Therefore, the frog would still not be “new” for §101 purposes even if “new” means the same thing as §102 “novel.”
As for (2), I see no evidence that Judge Rich was some sort of wild-eyed radical in terms of the natural products exception to §101. I do not know of any cases where he held that a naturally occurring substance was §101 eligible. Bergstrom, incidentally, was Almond’s case, not Rich’s. Nor am I acquainted with any case in which Rich held for the patentability of isolated DNA. I think that you are sniffing up the wrong tree in ascribing to Rich the source of where the CCPA/CAFC supposedly went wrong with isolated DNA claims. Like I said before, if you really want to blame someone for asserting that isolated biomolecules are patentable, blame Learned Hand.
Guys – we’ve been down this road already with the Congressional record in which the “new” of 101 is simply NOT some law all unto itself.
Greg, Egbert is about use by an inventor himself and whether it falls under the public use/on sale exception originally recognized by Pennock v. Dialogue. There is little doubt that the inventor created the invention in that case.
The real question for 101 purposes is whether the composition is new regardless of whether it was previously known or used by others. You have to consider the statute the way it existed at the time it “new” was first introduced.
Egbert is about use by an inventor himself… (emphasis added)
Where are you seeing this limitation in the case? Public use can stand as a bar even when the invention is used by another, even without the inventor’s consent. Shaw v. Cooper, 32 U.S. 292, 322 (1833). In other words, the fact that something is out there in public defeats novelty, even if the public does not know of it, and even if the “inventor” does not consent to it being out there. If that is the case, then I do not see how “novel” differs from “new” as you and I are reading the word. I think that there is a good reason to suppose that “novel” should not be read so broadly as Egbert reads it, but once we grant that Egbert is the authoritative reading of “novel,” I do not see where you and I are left to quibble about a discrepancy between “new” and “novel.”
I would prefer that there be a distinction (as befits the fact that Congress saw fit to use two different words). I would also prefer that public use that does not put the public in possession of the relevant know-how should not defeat patentability (unless possibly as against the one who consented to its public use without filing). My preferences, however, have very little bearing on the question of “what is the law?”. Where Egbert and Shaw control, why is the difference between “new” and “novel” of any practical concern?
Myriad plainly held that products of nature were not new within the meaning of 101.
Here I really disagree. Myriad was painfully careful to emphasize the narrowness of its own holding: “We merely hold that genes and the information they encode are not patent eligible under § 101 simply because they have been isolated from the surrounding genetic material.” Ass’n for Mol. Path. v. Myriad Genetics, 133 S. Ct. 2107, 2120 (2013). Nothing there about isolated proteins, or isolated hormones, or any other “natural products,” come to that.
Nor was any of the holding founded on the alleged lack of “new”ness of the isolated biomolecules. Myriad quite definitely did not ground its holding in the statutory text: “Section 101… contains an important implicit exception… [for] natural phenomena… .” Id. at 2116.
I wish that the Court had grounded Myriad‘s holding in the statutory requirement for “new” as you suggest. I think that this is much the better understanding of the “natural products” exception, but unfortunately it is quite explicitly not the Court’s understanding. “We have interpreted § 101 and its predecessors in light of this exception for more than 150 years. We have described the concern that drives this exclusionary principle as one of pre-emption.” Alice Corp. v. CLS Bank, 134 S. Ct. 2347, 2354 (2014) (internal citations omitted). In other words, the “exceptions” are not—in the Court’s way of thinking—the result of careful statutory constructions, but are rather judge made carve-outs.
…and the Court directly ig nores what actually happened in 1952…
The Court does not ignore it anon. The Court claims (see Bilski) that the 1952 merely codified their common law.
The operative words there Night Writer are:
“what actually happened”
Yes, the Court merely was writing something else, but that something else was worse than dicta and has no force of law.
Judge Rich (since he helped Congress write the law, was very much aware of this smoke and mirrors game of the Court.
Let me repeat so that all attorneys (and non-attorneys reading the blog), there are ZERO state oaths that an attorney can take that places the judicial branch (including the Supreme Court) above the Constitution.
Gosh, where are you seeing in Bilski that the Court regards the 1952 amendments as having codified the previous judge-made carve outs? I see exactly the opposite in Bilski?
Bilski v. Kappos, 561 U.S. 593, 601–02 (2010).
Notice that “not required by the statutory text.” That says to me that they are quite explicitly refusing to ground the exceptions in the statutory text. They want to keep the exceptions as a matter of their own law, firmly within their own hold and control. I suppose that the “statutory stare decisis” bit stands as the barest concession that Congress could alter the exceptions if it chose to be very explicit about the change, but this is a darn site shy of saying that Congress “codified” the exceptions, such that the exceptions are now a matter of statutory law. Quite the opposite. The Court refuses to concede that the statutory text is really controlling on this point.
“Quite the opposite. The Court refuses to concede that the statutory text is really controlling on this point.”
That’s an odd way then of staying within its authority to interpret statutory law, eh?
Because they are really based in equity, ISTM.
But they can’t (and won’t) say that.
Do you understand why?
Actually I don’t understand why. How about ditching the riddles and explaining why the Supreme Court may not use maxims of equity to avoid injustice?
Watch the movie The Paper Chase and pay attention at the hour and six minute mark.
What you may deign as “injustice” is merely your underappreciation of law and the separation of powers. Not “getting your way” simply is not the “injustice” that you would claim to be happening.
No anon, injustice is being targeted from afar by rent-seeking racketeers and destroyed, win or lose, because a putative monopoly was granted by a government without reason.
So I’ll “chase” it down if I can but I doubt it will mean anything since your connotations are so attenuated from reality.
As expected; no meaning. What became of the breakfast table and the dead lady who slipped on the ice cube?
Wrong part – the professor lecturing the student about the limits of the judicial branch when it comes to statutory laws.
“injustice is being targeted from afar by rent-seeking racketeers and destroyed, win or lose, because a putative monopoly was granted by a government without reason.”
Your feelings are noted.
The scene immediately following the professor lecturing the student about the limits of the judicial branch when it comes to statutory laws has Hart telling the Professor about the Professor’s 1936 paper showing 17 different ways to defeat the statue.
So thanks for making my point. Maybe you need to rewatch it?
You quite missed the point about the professors point.
Focus first on that.
Let me know when you get that point.
What point? Equity is not dead and remains superior to law.
Please show me otherwise.
It is not a matter of “equity being dead.”
You have failed to grasp the rather direct point that he directs at the student.
Can you identify what was the point that the professor is making?
The point the professor was making was to bully the student, because newbs think the courts can only apply the statute as written, while the interplay with Hart and the existence of the paper detailing 17 ways to nullify the statute is to show that sophisticated jurists and lawyers will work to find justice, so the lady promised the house would get the house she was promised.
I’m kind of amused that the ideology you think was being supported was actually being rejected.
“The point the professor was making was to bully the student, because newbs think the courts can only apply the statute as written”
You clearly have not grasped the point.
Bully? Maybe you should understand how law school works.
As to what you think was being “bullied,” you are exactly 180 degrees off.
Returning to the original question put to you Mr. Snyder:
But they can’t (and won’t) say that.
Do you understand why?
Your wayward interpretation is clearly off, else the Court would have directly and explicitly called on “equity” in their decision.
They did not.
How do you explain that?
Sure- why would they want to explicitly open the equity can of worms unless they absolutely had to?
No, it’s implicit, because their general approach is to add just enough to put across an opinion, and no more.
What is this “equity can of worms” that you so obliquely refer to?
“judge made carve-outs.” Right, which is outrageous. Because the only power they have for that is stating that something is unconstitutional if not for the carve outs. The SCOTUS does not have the authority under the Constitution to create common law that overrides Congress. That is the whole issue is completely out of control.
A nice mixture of violating the separation of powers, void for vagueness and stepping beyond even their granted powers in being an “advisory opinion” – the conjectural “someday MAY impede some future event”…
And the Court has the audacity to label attorneys as “scriveners”…
I share your righteous indignation here, Night Writer, but I suppose I am not sure about the assertion “the only power they have for that is stating that something is unconstitutional if not for the carve outs.” The whole point of a common law system is that legislation can be less fully specified, because the legislature knows that the courts can fill gaps based on precedent. When one is talking about a system in which the courts can either apply-as-written or shoot-down-as-unconstitutional, it seems to me that you are talking about a continental civil law system, not a common law system. A common law system is supposed to allow for a certain “play” in the “joints” of the legislation, even fairly well-specified legislation.
I want to agree with you here that the Court is going off the reservation, but I find that I cannot quite bring myself fully around to that conclusion without essentially arguing for a continental civil law system. I welcome your thoughts about why what the Court is doing here is not consistent with a common law system.
“without essentially arguing for a continental civil law system.”
You don’t have to throw out the baby with the bath water.
All you need to do is recognize the difference between common law and statutory law and recognize which branch of the government was given sole authority to write patent law.
Myriad, at Section A:
“This would be at odds with the very point of patents, which exist to promote creation. Diamond v. Chakrabarty, 447 U.S. 303, 309, 100 S.Ct. 2204, 65 L.Ed.2d 144 (1980) (Products of nature are not created, and “`manifestations… of nature [are] free to all men and reserved exclusively to none'”).
…
We must apply this well-established standard to determine whether Myriad’s patents claim any “new and useful … composition of matter,” § 101, or instead claim naturally occurring phenomena.
…
B
It is undisputed that Myriad did not create or alter any of the genetic information encoded in the BRCA1 and BRCA2 genes.
Greg, it seems clear that the dividing line between a composition that is eligible and a composition that is not within 101 purposes is whether it was “created.” When something is created, it is new. When something is not created, it is not new.
Hm, that is a good point, Ned. I like your citation of the sentence where the Court distinguishes between “new and useful composition[s] of matter… or… naturally occurring phenomena.” That reads almost as if the Court were using our preferred reading of the statute as the basis for the holding. One wishes the Court could be more thoroughly clear about their legal basis, but I certainly agree with you that there is evidence there for an interpretation of Myriad that favors our reading of “new.”
Created does NOT mean “new” as you intend to use that word, Ned.
Just the other week I provided yet another example of something created and then only after was it actually found in nature.
The universe is not static, Ned.
“We merely hold that genes and the information they encode are not patent eligible under § 101 simply because they have been isolated from the surrounding genetic material.” Ass’n for Mol. Path. v. Myriad Genetics, 133 S. Ct. 2107, 2120 (2013). Nothing there about isolated proteins, or isolated hormones, or any other “natural products,”
Well, there is that pesky underlying logic thing. The Supremes reached their decision based on logic, presumably. Is there a reason that the “simple isolation” of naturally-occurring compositions of matter should become less “simple” when a protein is involved? Or when a leaf from a tree is involved?
Ned – your curse -ade against Judge Rich continues – Almond wrote Bergstrom (not Rich)
ps: “Having firmly established inherency to its satisfaction“
Also, from Bergstrom:
“The word “new” in § 101 is defined and is to be construed in accordance with the provisions of § 102.[8] Thus, that which possesses statutory novelty under the provisions of § 102 is also new within the intendment of § 101. We have found no evidence of Congressional intent to define the word “new” as used in § 101 in any different manner.”
Footnote [8] states:
[8] That such is the case is clear, we think, from House Report No. 1923 and Senate Report No. 1979, 82nd Congress, 2nd Session, accompanying H.R. 7794 which became the 1952 Patent Act. Both reports state in identical language:
“Section 101 sets forth the subject matter that can be patented, “subject to the conditions and requirements of this title.” The conditions under which a patent may be obtained follow, and section 102 covers the conditions relating to novelty.”
Thus, see post 7.1.1.1.
anon, Rich was on the panel and we all know who was behind the court?s interpretation of 101, given that this was the interpretation that Rich advocated.
But the CCPA’s interpretation in this case is as reliable as anything out of the mouth or pen of Judge Rich. They went off on a lark never seriously considering the issue upon which they were judging. Had they looked at the origin of the word “new” in the statute, the patent act of 1793, they could not have come out with the opinion and judgment that did. It was well understood for a very, very long time by everybody that one could not patent a product of nature. It was probably this understanding that led Congress in 1793 to add the requirement that a composition be new in addition to being not known or used before when they added composition to the statute. The patent statute of 1790 did not have composition, just manufacture. A manufacture by necessity is created by man. Not so a composition.
Ned,
Again you seek to discredit the single most knowledgeable jurist as to what Congress passed as law – because that single most knowledgeable jurist HELP WRITE THAT LAW.
anon, I acknowledge that Rich was a very able patent attorney. But he was not the stuff of a jurist. He was imprudent, rash, arrogant and far to full of himself.
Rich… was not the stuff of a jurist. He was imprudent, rash, arrogant and far to full of himself.
I am somewhat amused that you think that being arrogant and full of oneself disqualifies a would-be jurist. By that standard, not a person would be left of the current Supreme Court (especially the late Justice Scalia). Come to that, I doubt that more than 30% of the past Justices would be qualified to serve under your criteria.
As for imprudent and rash, I would really like to see you cite an example of something that Judge Rich did that qualifies as “imprudent” or “rash.” These are not words that I would use to describe the late Judge Rich. I would be interested to see specifically what you mean by them.
Application of Musgrave, 431 F. 2d 882 – Court of Customs and Patent Appeals 1970 (Rich, J.) link to scholar.google.com
“BALDWIN, Judge (concurring).
I feel compelled to speak out against the majority opinion. It is my position that the doctrine promulgated by that opinion, which constitutes a major and radical shift in this area of the law, is a serious breach with the time-honored judicial practice of resolving important questions of law on a case-by-case basis, a policy matter which I thought had been settled by agreement of the full court with the second Prater decision and which up to now the court has followed. In addition, I feel that the course which the majority opinion takes is not only unnecessary in order to decide this particular case (or any others in this area, for that matter), but also will probably create more problems than it is intended to solve. Finally, I must point out that the majority embarked on this course without having been asked to do so by appellant.”
Radical shift after radical shift, time and again with Rich. Time and again. This is not the work of a judge.
A concurrence (in disguise, as the part you want to use disagrees with the majority) from Baldwin does not carry your point Ned.
Dear Ned,
If you think that Musgrave is an example of “rash” or “imprudent” jurisprudence, fair enough. Those words are so subjective that they do not admit of contradiction. Evidently, we have very different ideas of what is “prudent.”
I would describe Musgrave as “well-considered” and “practical,” but I cannot disprove your characterization of the work. Chacun à son goût, as they say.
Greg,
One does not “disprove” feelings and that is all that Ned’s “version” comes down to.
I would really like to see you cite an example of something that Judge Rich did that qualifies as “imprudent” or “rash.”
State Street Bank leaps immediately to mind.
Translation:
Wah
It is NOT ridiculous. Your interpretation is uhworkable and therefore ridiculous. New cannot mean not naturally occurring. If it did, then no composition of matter would ever be patentable. The Universe (and we will overlook that it is looking more and more that our Universe is but a small fraction of a much larger multi-verse) is very large and very old. So much so that it is highly unlikely that any achievable molecule has not occurred naturally somewhere at sometime.
Since, nevertheless, that statute says new compositions of matter are patentable subject matter, “new” MUST mean newly discovered, invented or known by mankind.
I see the sense of the argument you are making, but I will try to press back a bit still. Section 102 says that “[a] person shall be entitled to a patent unless…” (emphasis added).
In other words, the default state is that you get a patent after you file. In order for you to be denied a patent, someone must bring forth affirmative evidence of your lack of entitlement to the patent. Mere probability calculations do not count as sufficient evidence on this point. Hansgirg v. Kemmer, 102 F.2d 212, 214 (C.C.P.A. 1939). Therefore, it is not really true—as you contend—that “new” must mean “newly discovered.” The patent system can function just fine with “new” meaning “newly created” so long as the evidentiary burden rests on the challenger to prove that the claimed invention was certainly (not merely “most probably”) pre-existing in the natural universe.
I respectfully submit that that goes to support my position.
If it is not known by man, then the Office can’t meet the requirements under “unless,” even if the stuff is naturally occurring in a volcano on Enceladus, and you get the patent.
New must mean not known by man.
Sure, the default state implied by “unless” means that the system works regardless of whether “new” means “newly discovered” or “newly created.” My only point is that the system does not become “u[n]workable and therefore ridiculous,” as you say if we read “new” as “newly created.” The word “unless” saves us from the reductio ad absurdum that you propose, quite regardless of what meaning we give to “new.”
Yes it does. Ned interprets new to mean patents are invalid if the compound is naturally occurring. The law of large numbers requires that any compound that can be made has occurred naturally somewhere in the universe and so none are patent eligible (according to Ned’s position). I left some wiggle room earlier by referring to probabilities, but still. All the Office would have to do to reject compositions of matter is to copy and paste my assertion above…ta da.. prima facie showing…Now Ned has to show that the compound does not occur in nature anywhere in the Universe and never did.
Your law-of-large-numbers argument is an argument from probability. Under Hansgirg probability arguments are not legally sufficient to establish prima facie unpatentability. Therefore, your reductio ad absurdum will not work.
I am merely advancing this argument, for the moment, as a matter of law. I would note, however, that as a matter of chemistry the law-of-large-numbers argument is equally unavailing.
Look. The purpose of the Patent system in to promote progress in the useful arts, etc. Does encouraging investment in discovering the cure for cancer qualify as promoting progress in the useful arts? I say yes. If the cure is chemical XYZ should we encourage its invention in a laboratory using the tools of microbiology? Should we not also encourage its discovery in the rain forest using the tools of epidemiology to find locations of low cancer rates and statistical analysis of the diets of the of the cancer free cohorts.
Of course we should.
Does the Constitution (and the statute) authorized exclusivity to inventors of their DISCOVERIES? YES Is there anything to discover other than natural laws and products of nature? No.
Can we know what has been invented or discovered or naturally occurred on other planets? Does it matter? Isn’t in progress on this planet that we want to promote?
Of course.
So, the measure of newness is whether something is newly KNOWN BY US.
Les, ” Ned interprets new to mean patents are invalid if the compound is naturally occurring. ”
No I do not.
Oh? On what point am I confused?
If the cure is chemical XYZ should we encourage its… discovery in the rain forest using the tools of epidemiology to find locations of low cancer rates and statistical analysis of the diets of the of the cancer free cohorts.
Of course we should.
O.k., fine. No argument there. That does not ipso facto imply that we should allow a claim to “The compound XYZ.”
Imagine that instead of XYZ forms naturally, not only in an Amazon jungle plant, but also in white oaks. If you allow the compound per se claim, then everyone in the United States with white oaks on their property is infringing the claim. Is that a public policy outcome we want? No. Citizens who are free to grow white oaks today should not have that right taken away tomorrow because of a discovery about cancer.
The way you deal with this is that you say “the claim to ‘compound XYZ’ is ineligible as a natural product, but the claim to ‘a composition comprising at least 50 wt% compound XYZ’ is patentable.” As the late Judge Rich said, the name of the game is the claim.
The scenario you outline regarding rainforest biomolecules does not necessarily present a public policy conundrum if one read “new” as Ned & I propose. Rather, that scenario is merely a motivation for careful claim drafting.
But a method of manufacturing and using the compound to cure cancer should be patentable, as we want to promote that sort of thing. This is so, even if people have been collecting and concentrating white oak sap and enjoying cancer free pancake breakfasts for hundreds of years, since no one knew that there was XYZ in the syrup nor that the XYZ in the syrup was killing cancer cells. That discovery and dissemination of same to the world should be encouraged.
But a method of manufacturing and using the compound to cure cancer should be patentable, as we want to promote that sort of thing.
Definitely. I agree 100%.
Les, consider the patent acts of 1790 and 1793 side by side for a moment:
1790: …invented or discovered any useful art, manufacture, engine, machine, or device, or any improvement therein not before known or used…
1793: …invented any new and useful art, machine, manufacture, or composition of matter, or any new and useful improvement on any art, machine, manufacture, or composition of matter, not known or used before the application…
Now, excluding the improvement part, lets compare the two again:
1790->1793: …invented [[or discovered]] any new and useful art, manufacture, [[engine,]] machine, or [[device,]] composition of matter … not before known or used the application…
Now consider that one cannot discover a machine, engine or manufacture in the sense that we understand discover, is it at all puzzling that discover was dropped when composition of matter was added, because one can discover a composition of matter. Instead, the requirement for “new” was added as a prefix for composition of matter, but not known or used was retained.
It is also clear also that new and not known or used cannot be the same thing because that requirement was present in both acts, while new was added to the second.
You really need to give full faith and credit to the Act of 1952, Ned.
No Ned, I don’t find that puzzling.
Moreover, what I do find puzzling is why you have, for a very long time, been referencing a law from 224 years ago that does not include the word “discovers” when that word has long since been inserted back into the statute.
Clearly, someone determined it was a mistake to delete it. Perhaps for the point I have been trying to make. We want to promote looking in the rain forest for cures.
Doesn’t that argument lose some of its force when you consider that the act also explicitly defines “invention” to mean exactly the same thing as “discovery”?
I’m not sure which act you are referring to. Perhaps a citation and quote would be helpful.
In any event, these folks seem to disagree with such a definition:
“Discovery adds to human knowledge only by lifting the veil and disclosing something, whereas an invention suggests an act resulting in a new product, result or process.”
link to internationallawoffice.com
35 U.S.C. §100(a): “When used in this title unless the context otherwise indicates… [t]he term ‘invention’ means invention or discovery.”