Guest post by Dr. Jeffrey A. Lefstin, Professor of Law, University of California, Hastings College of Law
Jason’s excellent post on Roslin summarized the case and raised the question of whether the Federal Circuit paid insufficient attention to the inherent differences conveyed by the ‘clone’ limitation of the claims. In this post I address two other issues in Roslin: the Federal Circuit’s interpretation of Ckakrabarty and Funk Brothers, and Roslin’s consistency with Federal Circuit precedent holding that structural or functional differences between natural and synthetic products must be defined in the claims.
Unaltered by the hand of man: Judge Dyk’s opinion in Roslin unfortunately perpetuates the view, now found in the PTO’s Myriad guidelines, that Chakrabarty requires a claimed invention to be “markedly different” from a natural product for patent-eligibility under § 101. Myriad itself imposed no such requirement: the Court found BRCA cDNAs patent-eligible without determining that they were “markedly different” from natural sequences. And though Myriad reiterated the “markedly different” language from Chakrabarty, Chakrabarty’s discussion of ‘products of nature’ was entirely dictum. Only the question of whether living organisms were patent-eligible was before the Court in Chakrabarty; the ‘product of nature’ rejection in the case had not been sustained by the Patent Office Board of Appeals.
The Chakrabarty Court noted the claimed bacteria differed markedly from natural bacteria by way of distinguishing the case from Funk Brothers.[1] As Paul Cole’s recent post notes, the patentee had discovered that certain strains of bacteria could be mixed together without inhibiting their nitrogen-fixing capability. Justice Douglas regarded this compatibility as the unpatentable discovery of a natural phenomenon; the claims were unpatentable because the patentee’s application – a mixed inoculant – was “a simple step” once the underlying discovery was assumed away.
As I discuss in a recent article, Funk was nonetheless very much a patent eligibility case. It reflects Douglas’s view – shared by Justice Stevens in Flook, and Justice Breyer in Mayo – that obvious applications of scientific discoveries or abstract ideas are not patent-eligible “inventions” within the meaning of the statute.
Whether or not we share that view, understanding it shows us that Funk was an ‘inventive application’ case, not a ‘product of nature’ case. Douglas made no reference to the ‘product of nature’ doctrine, nor to the recent cases embodying it.[2] Instead, Douglas emphasized the lack of change in the bacteria to establish that the mixed inoculant was obvious (once the patentee’s discovery was assumed away). Under the old doctrine of ‘aggregation,’ it was not invention to combine old elements where the elements were unchanged, and no new function arose from their combination. It was therefore not inventive for the patentee in Funk to combine old bacteria without changing their structure or function.
But just as many combinations of old elements become patentable when a new function emerges, the mixed inoculants of Funk would have been patentable — even if the bacteria remained unchanged — had the mixed inoculant acquired new functions not performed by its constituent bacteria. If Funk Brothers instead stood for the proposition that a combination is unpatentable if its constituents are ‘unaltered by the hand of man,’ then a very large number of inventions become patent-ineligible. An artificial structure like an arch, formed by piling stones atop each other, would be ineligible unless the stones themselves were altered by the hand of man. Even as ardent a skeptic of the patent system as Justice Douglas would not have gone that far.
Source limitations and expressly claimed distinctions: The second difficulty with Roslin is its demand that the ‘marked differences’ between the natural organism and the invention must be expressly claimed. As Jason discussed, the applicant in Roslin argued that cloned animals differ from their natural counterparts at least in having mitochondrial DNA derived from the egg donor, rather than the animal which donated the somatic nucleus. The Federal Circuit rejected such arguments because neither the difference in mitochondrial DNA, nor any functional consequence of that difference, was recited in the claims.
However, the same argument, albeit in the context of § 102, was before the Federal Circuit in the extensive litigation over Amgen’s recombinant erythropoietin (EPO) patents. Much like Roslin, Amgen had claims to a ‘copy’ of natural product: in that case EPO produced by mammalian cells in culture. While Amgen’s synthetic EPO differed in glycosylation from the natural product, several of the claims in the case recited only the non-natural source of the EPO, not the structural differences. The Federal Circuit recognized that the novelty of the synthetic EPO claims depended on whether synthetic EPO differed from natural EPO. Yet the court found novelty based on the unclaimed structural and functional differences between natural and synthetic EPO, which were demonstrated in part by the specification and prosecution history, and in part by testimony at trial. Amgen Inc. v. F. Hoffman-LaRoche Ltd, 580 F.3d 1340, 1370 (Fed. Cir. 2009). In effect, the court held that the structural and functional differences characterizing the synthetic product were inherent in the source limitations. (The court did not inquire whether all synthetic EPO molecules falling within the scope of the claims would display similar differences in glycosylation.)
Thus under Amgen, a source limitation alone (such as ‘non-naturally occurring’ or ‘purified from mammalian cells grown in culture’) may establish novelty of a product. Assuming the ‘clone’ limitation in Roslin to require derivation from nuclear transfer, then it serves as a source limitation as well. Since Roslin cannot overrule Amgen, we seem to be in a regime where differences between natural and synthetic products may be unclaimed yet confer novelty under § 102, but must be explicitly claimed to establish ‘marked difference’ under § 101. Of course, if Roslin is correct, that doctrinal inconsistency is less significant than the consequence that Amgen-type claims – and perhaps a wider category of product-by-process claims involving natural products – are now ineligible under § 101.
[1] In Chakrabarty, the Commissioner never suggested that the claimed bacteria were unpatentable under Funk, nor even raised the case. Rather, Chakrabarty argued that if living organisms were not patent-eligible, the Court would have said so in Funk.
[2] In particular, the General Electric and Marden cases denying patentability to purified tungsten, uranium, and vanadium. The defendant had urged General Electric upon the Funk court in its brief.
Paul Cole,
Justice Douglas’ comments in Cuno were reiterated in ~A & P where he said:
“Every patent is the grant of a privilege of exacting tolls from the public. The Framers plainly did not want those monopolies freely granted. The invention, to justify a patent, had to serve the ends of science — to push back the frontiers of chemistry, physics, and the like; to make a distinctive contribution to scientific knowledge. That is why, through the years, the opinions of the Court commonly have taken “inventive genius” as the test. It is not enough that an article is new and useful. The Constitution never sanctioned the patenting of gadgets. Patents serve a higher end — the advancement of science. An invention need not be as startling as an atomic bomb to be patentable. But is has to be of such quality and distinction that masters of the scientific field in which it falls will recognize it as an advance.”
Implicit in this statement is a construction of the constitutional clause that seems to read out ” useful arts” from promote progress in Science and useful Arts.”
It also seems to overturn Hotchkiss, which is the standard was not the master of science, but the one of ordinary skill.
However, regardless that patents are intended to promote the progress of the useful Arts, they do in fact grant a privilege of exacting tolls on the public that many if not most today recognize as a problem to the extent that there is a low standard patentability. Put another way, the low standard of patentability that exists today has materially contributed to the very problem, the troll problem, that Justice Douglas recognized in A&P.
Prior to 1952, the Supreme Court was developing an objective standard of invention, requiring demonstrable new functions, different in kind, not degree. One will recognize that this is the standard that is employed in Europe, for example, in that it requires some technical advance.
The patent bar urged Congress to pass §103, arguing that the standard patentability of the Supreme Court was too high. What they passed, §103, has in practice not been workable to reliably exclude patents on subject matter that truly is in the public domain.
KSR cited with approval these cases that Congress seemingly intended to overrule. Part of the reason has to be that to allow patents on so-called inventions that actually do not provide any technical advance cannot be what the framers had in mind when they authorized patents to promote the progress of science and the useful arts.
It seems time to revisit §103 particularly in view of the troll problem, and perhaps to enact the standard being developed by the Supreme Court prior to 1952 in that patentable inventions must demonstrate a technical advance, a new functionality different in kind, rather than degree.
And, might I add, the PTO, according to 6, is systematically allowing claims in the software arts that do not meet the KSR requirements of a technical advance — for policy reasons.
But who is to complain — surely not the applicant. No, it is the public whose ox is eventually gored that complains, and who begins to advocate severely damaging the patent system as a whole in odd ways, when the apparent source of the problem is the PTO.
“KSR requirements of a technical advance ”
I didn’t even realize that there was such a requirement in KSR. KSR dealt with 103, not 102.
6, from KSR:
“Yet the principles laid down in Graham reaffirmed the “functional approach” of Hotchkiss, 11 How. 248, 13 L.Ed. 683. See 383 U.S., at 12, 86 S.Ct. 684.
…
“Neither the enactment of § 103 nor the analysis in Graham disturbed this Court’s earlier instructions concerning the need for caution in granting a patent based on the combination of elements found in the prior art. For over a half century, the Court has held that a “patent for a combination which only unites old elements with no change in their respective functions . . . obviously withdraws what is already known into the field of its monopoly and diminishes the resources available to skillful men.” Great Atlantic & Pacific Tea Co. v. Supermarket Equipment Corp., 340 U.S. 147, 152, 71 S.Ct. 127, 95 L.Ed. 162 (1950). This is a principal reason for declining to allow patents for what is obvious. ”
What was THAT? The functional approach of Hotchkiss was reaffirmed”
A patent that “unites old elements with no change in their respective functions . . . obviously withdraws what is already known into the field of its monopoly and diminishes the resources available to skillful men.”
“This is a PRINCIPLE reason for declining to allow patents for what are obvious.” (Emphasis supplied.)
What are we to think, 6, that a claimed invention can be patentable despite no technical advance, no new function, where all the elements are old and are doing the same thing? Why do we have to get into whether it would be obvious to one of ordinary skill in the art when the Supreme Courts says that the lack of new function alone is sufficient?
I have not seen KSR applied in any rejection that I have received that remotely resembles this reaffirmed functional approach. Not one.
Why is that, 6?
Other aspects of KSR have been applied, but not the most fundamental aspect — the point that the Supreme Court emphasized was a PRINCIPLE reason for declining patents for what is obvious.
6, please explain.
The easy explanation Ned is that you are (once again) over-reading.
anon, no, that is your easy explanation because it is what you typically say even when I spoon feed you the facts, the issue and the holding and the very words of a court.
You might try at least occasionally making a substantive response.
As might you, to the many points that I have laid out before you, Mr. Kettle.
Yeah bro, you’re probably overreading a bit. Though I see where you’re coming from. Don’t get too far into the dicta brosef.
Since there is no technical arts requirement in US patent law, I really doubt that your “technical advance” requirement can be found.
Are you importing (or trying to import) EP law again Ned?
anon, I was just reviewing the PTO’s edit of KSR. They refused to discuss the pre-’52 cases the Supreme Court cited. Then they removed all mention of “function” from the post-’52 cases when they laid out the tests for obviousness. Instead of functions, they substituted “known” and “predicable.” As a result, the A&P, Anderson’s Black Rock and Sakaida tests are gutted.
This edit was intentional.
It removed any technological consideration from 103 that the Supreme Court had once again in KSR held to be core to the patentability requirement.
…and how did this “technological” core tied to the words of the statute, Ned?
I keep on looking for this “technological in the statute, and cannot find it anywhere. Perhaps you can help me with a proper statutory cite, thanks.
6, the effective deletion of function from the obviousness analysis by the PTO in its guidance is remarkable given that the major point of the Government argument was that the Federal Circuit was ignoring Sakraida:
This from Hungar’s argument:
“And in addition I would point out that this court in Sakraida provided a framework for assessing patents like this one, for each of the elements as set forth in the prior art and each of the elements in the claimed invention is merely performing its already known, previously known function as set forth in the prior art.”
Later the solicitor argues that the court can decide the issue of obviousness “as a matter of law if the court concludes that the difference between the claimed invention and the prior art is so trivial that it cannot be given the protection of a patent.”
I see nothing in the case are guidelines talking about triviality and what the test of triviality is. But let me just point out the prior remarks about Sakraida.
But the KSR guidelines mentioned none of this, either triviality or the well-known aggregation test from A&P and Sakraida.
Yeah that’s interesting fodder for an argument, not so interesting as to what the law is.
“It seems time to revisit §103 particularly in view of the troll problem,”
Stop drinking the kool-aid of the mythological “Troll” problem Ned.
Who is to say that Justice Douglas was wrong here?
But perhaps the better view is that the patent system as a whole should give rise to progress in science and the useful arts, but that criterion need not apply to each individual application or patent.
The constitutional clause has figured very little in recent case law, and few people I speak to when I travel to the US can tell me much about it. For example, what does “discoveries” mean in the context of the clause as a whole?
Well, Paul, Max and I think you have long advocated that the US adopt the European system’s approach that “invention” requires a technical advance. Significant technical advances should be patentable regardless of people later saying they were obvious. That later consideration is subject to hindsight and abuse.
Small advances in a crowded field should be patentable if it can reliably shown that the small change was the reason for commercial success. The Barb Wire Patent was the most notorious example of this doctrine.
But to allow patents with no showing at all of a technical advance, just that one feature or another is not shown in the prior art, which it seems is where the state of US law currently is at, cannot be right. Just how does something that provides no advance in science or technology be entitled to a patent?
Ask the man on the street this question and I will bet he will give the “obvious” answer.
Ned,
You lack an appreciation of how innovation works in the real world. I suggest that you brush up on your Christensen.
GrzeszDeL :Decisions on section 101-grounds are almost always hard, and I think that it would be better policy to avoid them when possible.
I strongly disagree that “decisions on section 101 ground are almost always hard.” This is a myth that ignores the vast number of claims that are not even filed but otherwise would be because they would be so easily tanked under 101. In many (most?) instances where there a 101 issue rears it’s head, the decision is relatively easy — particularly when compared to a 103 analysis.
Consider: 1. A method comprising [old step] + [step of thinking about lengthy, complicated non-obvious thought].
That’s an easy 101 analysis. What’s the 103 analysis (and don’t forget the secondary factors)?
Likewise, 1. A computer system, wherein said computer system is configured to provide information to a user upon request, wherein said user is [insert non-obvious user] and said information is [insert lengthy complicated non-obvious information].
That’s a real easy 101 analysis. What’s tthe 103 analysis (and don’t forget the secondary factors)?
I do agree that in the case where you’ve already performed the claim construction and the claim is anticipated or obvious per se (with no chance of resurrection by secondary factors) then, sure, go ahead and tank it under 102 and 103.
You might as well. Nobody will be offended, except for the usual characters who are offended whenever a patent is tanked.
[shrugs]
“ ignores the vast number of claims that are not even filed but otherwise would be”
lol, because Malcolm, the Red Queen / Humpty Dumpty can tell the future…
just [shrug] and stand by…
Fair enough. I agree that the universe of possible claims includes an awful lot of section 101 softballs. Allow me to rephrase my earlier post: “Decisions by an article III court about actually-filed claims on section 101-grounds are almost always hard.”
Allow me to rephrase my earlier post: “Decisions by an article III court about actually-filed claims on section 101-grounds are almost always hard.”
That’s also quite an exaggeration.
Seriously, don’t underestimate how low the bottom-feeders will go in their attempts to claim data and facts themselves. This has been going on for years.
All those D@M people who are out to make money with their patents and property and innovations…
…what would Jane say?
/eye roll
Benson cited this case, Rubber-Tip Pencil Co. v. Howard, 87 U.S. 498, 22 L. Ed. 410 (1874), link to scholar.google.com
for its “idea” exception.
The claim: Blair’s patent was for “a new manufacture,” being a new and useful rubber head for lead-pencils. It was not for the combination of the head with the pencil, but for a head to be attached to a pencil or something else of like character.
As construed, the claim reduced to a piece of rubber having a cavity small enough that it could be attached to a pencil. The patent was not for a combination, for any means for attaching a rubber eraser to the head of a pencil.
“What, therefore, is left for this patentee but the idea that if a pencil is inserted into a cavity in a piece of rubber smaller than itself the rubber will attach itself to the pencil, and when so attached become convenient for use as an eraser?”
But, the idea of attaching rubber to other things with small cavities was old.
The court held:
“An idea of itself is not patentable, but a new device by which it may be made practically useful is. The idea of this patentee was a good one, but his device to give it effect, though useful, was not new.”
There is that word again. New.
It also seems to appear, and appear prominently in Bilski, in Myriad and in Flook.
Rader, in CLS Bank, premised his opinion on New being nothing other than not novel under 102/103. But, certainly the premise of both Myriad and Flook was that “new” is absolute regardless of whether “known.”
But, certainly, the problem of the idea in Rubber-Tip was that it was notoriously old — just like the hedging algorithm in Bilski. Rubber-Tip sounds in 103, not 101. So does Bilski.
It would be nice for someone to write up the rather surprising wealth of recent case law on the requirement for “newness” in 101. Bilski’s reliance on the notoriously old nature of the hedging method there being claimed seems odd until one reads Rubber-Tip, the source of the holding of Benson.
Key part of the article which I like:
“Whether or not we share that view, understanding it shows us that Funk was an ‘INVENTIVE APPLICATION’ case, not a ‘PRODUCT OF NATURE’ case. DOUGLAS MAKES NO REFERENCE TO THE ‘PRODUCT OF NATURE DOCTRINE, NOR TO RECENT CASES EMBODYING IT. Instead, Douglas emphasized the lack of change in the bacteria to establish that the mixed inoculant was obvious (once the patentee’s discovery was assumed away). Under the old doctrine of ‘aggregation,’ it was not invention to combine old elements where the elements were unchanged, and no new function arose from their combination. It was therefore not inventive for the patentee in Funk to combine old bacteria without changing their structure or function.
But just as many combinations of old elements become patentable when a new function emerges, the mixed inoculants of Funk would have been patentable — even if the bacteria remained unchanged — had the mixed inoculant acquired new functions not performed by its constituent bacteria. If Funk Brothers instead stood for the proposition that a combination is unpatentable if its constituents are ‘unaltered by the hand of man,’ then a very large number of inventions become patent-ineligible. An artificial structure like an arch, formed by piling stones atop each other, would be ineligible unless the stones themselves were altered by the hand of man. Even as ardent a skeptic of the patent system as Justice Douglas would not have gone that far..”
Justice Douglas’ comments in Cuno were reiterated in ~A & P where he said:
“Every patent is the grant of a privilege of exacting tolls from the public. The Framers plainly did not want those monopolies freely granted. The invention, to justify a patent, had to serve the ends of science — to push back the frontiers of chemistry, physics, and the like; to make a distinctive contribution to scientific knowledge. That is why, through the years, the opinions of the Court commonly have taken “inventive genius” as the test. It is not enough that an article is new and useful. The Constitution never sanctioned the patenting of gadgets. Patents serve a higher end — the advancement of science. An invention need not be as startling as an atomic bomb to be patentable. But is has to be of such quality and distinction that masters of the scientific field in which it falls will recognize it as an advance.”
Climbing into the mind of Justice Douglas in Cuno is a daunting task given the inconsistencies that appear on the face of his opinion. But his underlying reasoniing appears to have been that this was a mere advance in the packaging of inocculants, which fell into his “gadgets” category, especially if the discovery of non-inhibition was treated as a natural law and disregarded.
In my last para I should have said Fubk, not Cuno, though that case is also difficult.
Paul,
“Inventive Genius” was clearly tossed out by Congress.
Where then does that leave us, in your opinion?
In your mind, can you see the Court clinging to something that Congress stripped from it?
@Anon: I completely agree with you that this is a good reason for disregarding Funk. But it is necessary to remind the USPTO about the differences in the law because such things in the now quite distant past are easily forgotten.
By the way, the USPTO indicated on the Friday forum that comments on the proposed guidance remain open until the end of June. EVERYONE WHO HAS CLIENTS WHO COULD BE ADVERSELY AFFECTED BY THIS GUIDANCE SHOULD SUBMIT COMMENTS. If we don’t do this and say what the guidance should be, we have only ourselves to balme if things come out wrong.
Paul,
Above, you state “Climbing into the mind of Justice Douglas in [Funk] is a daunting task given the inconsistencies that appear on the face of his opinion.”
While you expend some not inconsiderable energy exploring other avenues, one that you (still) leave out was the fact that Douglas represents an era of Supreme Court jurisprudence that was decidedly anti-patent of its own accord (witness the “only valid patent is one that has not yet appeared before us” quote).
You cannot ignore this historical reference on your trip into the mind of the Justice that most exemplifies the instigator of the umbrage of Congress – especially if you want to fully understand the drivers of the 1952 Act, and the critical reformation of patent law 101 jurisprudence, the creation of 103 (and the deliberate choice NOT to use the word “invention” there), and the removal of authority of the courts to use the tool of common law evolution to define – in the 101 sense – what “invention” means as to patent eligibility
The 1952 Act of Congress separating the concepts of patent eligibility and patentability is a critical distinction that those who would choose the tools of obfuscation and abject judicial activism would love to muck up. Abject judicial activism that flies in the face of the separation of powers doctrine is evident in Justice Douglas, just as it is evident in Justice Breyer and Justice Ginsburg (who apparently needs to be reminded again – and again – that 4 is not 5).
…and just let me throw in one more Alice tie-in: we are on the cusp of a Supreme moment of judicial reckoning.
The real question in the air is whether the Supreme Court will take responsibility for its decades long hijacking of authority from Congress (a Churchill moment) or will that Body of Nine abdicate the opportunity for some more Bilski-like patent “peace” for our time (a Chamberlain moment).
Here is the paper…
(follow the audio link containing a filtered out word at link to en.wikipedia.org )
Paul, the “discarded” doctrine:
Aggregation: All elements old. Each element familiar and doing its same function.
If you want to attack the doctrine, put it down properly.
The doctrine is still followed by the Supreme Court: see Sakraida v. Ag Pro, Andersons Black Rock, and KSR. It is not followed by the Federal Circuit who know better and who have overruled the Supreme Court according to Wikipedia and, now, of course, you.
Advising the PTO to not follow the Supreme Court is interesting in itself, but if you are going to do it, at least describe the doctrine accurately.
“at least describe the doctrine accurately”
Coming from one of the persons who refuses to accord accuracy to the exceptions to the judicial doctrine of printed matter, the hypocrisy rings so loudly as to be deafening.
How about it, Ned, are you ready to correctly, accurately, and with intellectual honesty give full credit to the legal reasoning that makes a critical difference in understanding that software is a manufacture in its own right, a machine component, and is equivalent to firmware and equivalent to hardware?
“If you want to attack the doctrine, put it down properly.” – same goes with exceptions to doctrines, my friend.
“Aggregation: All elements old. Each element familiar and doing its same function.”
Hmm, electrons, protons and neutrons, all elements old and each element familiar and doing its same function…
Get the picture?
electrons, protons and neutrons, all elements old and each element familiar and doing its same function…
This is the dumbest thing to ever come out of your mouth. And that’s saying quite a bit.
So decrees the RQ/HD.
I was quoting another on the doctrine. But I have known of it for over 30 years and probably know more about it than you do.
However, that is NOT the reason why Justice Douglas threw Funk out. The real reason was that in his opinion there was insufficient scientific advance and it was a mere improvement in packaging.
Paul, let me beg to differ.
Douglas rested his opinion on the doctrine of aggregation exactly as I stated it, not on some other test of invention.
May I quote?
“But we think that that aggregation of species fell short of invention within the meaning of the patent statutes.
Discovery of the fact that certain strains of each species of these bacteria can be mixed without harmful effect to the properties of either is a discovery of their qualities of non-inhibition. It is no more than the discovery of some of the handiwork of nature and hence is not patentable. The aggregation of select strains of the several species into one product is an application of that newly-discovered natural principle. But however ingenious the discovery of that natural principle may have been, the application of it is hardly more than an advance in the packaging of the inoculants. Each of the species of root-nodule bacteria contained in the package infects the same group of leguminous plants which it always infected. No species acquires a different use. The combination of species produces no new bacteria, no change in the six species of bacteria, and no enlargement of the range of their utility. Each species has the same effect it always had. The bacteria perform in their natural way. Their use in combination does not improve in any way their natural functioning. They serve the ends nature originally provided and act quite independently of any effort of the patentee.” Funk Bros., 333 US at 131.
If he rested his decision on aggregation why did he cite Cuno. As I have said, the decision is NOT straightforward to understand and opinions as to what was the true rule of law differ.
Cuno 1941, Kalo 1948, A & P 1950.
As well, Cuno has the same language as A & P and Kalo about combinations.
From Cuno: “The principle of the Hotchkiss case applies to the adaptation or combination of old or well known devices for new uses. … citing cases.”
“A new application of an old device may not be patented if the “result claimed as new is the same in character as the original result”
Hotchkiss itself deemed the use of clay in the doorknob the work of ordinary skill because there was no new mechanical function performed by the combination.
Cuno was a straightforward application of Hotchkiss. The hysteria was entirely political regarding Douglas. Flash of genius was not new, but in the cases. It implicated not the claimed invention but how an invention was made, and seemed to exclude long work on an invention. Thus the second sentence was added to 103 to clarify this.
Paul, I believe Kalo stands for the proposition that in considering invention pursuant to 103 under today’s standard, that one must ignore laws of nature, etc.
But, UNFORTUNATELY, 103 does not have such an exclusion in its bare language. The Supreme Court seems unwilling to impute one. Therefore, the analysis has to be strictly under 101.
This, of course, is unfortunate, in my view. Had the crafters of 103 (Rich) been a tad bit more careful, they would have recognized that not all differences are material for consideration. But they were arrogant, yes they were. They were on a warpath, literally, against Douglas and crew — the enemy of the patent system from their view. That acrimony still echoes, because Rich kept it up after becoming a circuit court judge.
Ned,
It is infinitely more likely that the law as written simply does not match up with your agenda.
The sooner you realize this, the sooner you can understand exactly who has been messing up the law.
All of this discussion is very well, but WHY did Douglas throw the case out???
If we know what his motives were, we can figure out the rule(s) of law that truly flow from his opinion.
To figure that out you need to read the Kalo patent, the opinion below and the Supreme Court opinions. There is not much else to find as the first instance, as far as I can tell, was not reported.
I have read the Douglas opinion many times trying to put my finger on it, but confess it is very difficult. Certainly it was not just collocation/combination. To the best of my understanding what was important to Douglas was that this was a packaging invention, not really of scientific importance. If you want to know what was the tipping point, it was not much more than that.
If anyone else has a better tipping point, I would be glad to learn it.
Paul, I think he might also have been influenced by the fact that the claim was functional, that any bacteria discovered and having the natural properties would be covered by the claim. The claim was too abstract.
Ladders of abstraction, Ned…
This concept applies to both functional language and non-functional language.
Functional descriptions are allowed – what you (almost) seem to grasp here is why Congress (yes Ned, Congress) acted as they did with the 1952 Act to change the law and slap the Court down on the anti-patent views. Even Frederico noted that Congress acted against what the Court was doing with the Court’s writing of patent law in the area of claiming using functional language.
All that you are doing is inserting your agenda against a form of claiming that has been determined by the branch of the government – the branch designated in the Constitution – to be legitimate.
You seek to declare “Too abstract” and the irony is that you appear to be exactly like those that you would denigrate.
Did you not blame Rader and the CAFC for the pre-cursor opinion of the Court’s Bilski opinion that mouthed “Too abstract” exactly as you have done here?
What – to you personally – is the difference between “too abstract” and an acceptable level of abstraction? The entire concept behind the ladders of abstraction – which permeates ALL worthwhile patent claiming – is to be able to claim an invention broadly and not be overly limited by the only tool we can use to write claims. The art of every scrivener is measured by how well we can climb the ladders of abstraction to maximize the protection for our clients. That is our job. That is our ethical responsibility to our clients.
Combine that with the legal edict that claims are to be read according to a person having ordinary skill in the art to which the invention pertains, and being informed by the specification, and keeping in mind the concepts of anthropomorphication and the exceptions to the judicial doctrine of printed matter, and you would (at elast should) realize that in particular art units, functional language blurs with structural language (screwdriver, anyone), and that such claims – being read per the law – are legitimate.
“But, UNFORTUNATELY, 103 does not have such an exclusion in its bare language. The Supreme Court seems unwilling to impute one. Therefore, the analysis has to be strictly under 101.”
This says far far far more than Ned realizes.
Ned, do you realize the nose of wax addiction that permeates your statement?
If we turn a blind eye to the highest Court in the land violating the constitution and the separation of powers doctrine by writing law (either explicitly or implicitly) when such means serves a desired philosophical end, where do we draw the line?
How deep the rabbit hole of implicit?
Bilski should have been a wake-up call. Stevens, in Bilski would have crossed that line from implicit to explicit.
4 is not 5.
The scary thing (and what should be scary to everyone that understands US law and our separation of powers doctrine) is that there are active members of the Royal Nine that would still violate the constitution and re-write the explicit words of Congress.
The sad thing is that there are those charged with teaching law that see no problem with violating the doctrine of separation of powers, that actively implore a level of judicial activism in place of the accepted method of passing a law through the branch of the government charged with having the authority to write patent law – a charge strong enough that our Constitution, the US Supreme Law (as distinguished and as should be distinguished from the monitor of that Law), explicitly designated that power to write the law.
WAKE UP PEOPLE.
Reading a map is just not the same as writing the map.
anon, do you or do you not believe that congress can constitutionally authorize one to claim a newly discovered product of nature or law of nature?
Your answer to this question is critical.
Critical for what, Ned?
Certainly not critical to our discussion of the doctrine of separation of powers, right?
Tell me Ned, do you believe that it is the Constitution that is the highest law in the land, or do you believe that it is whatever the Court feels like is the highest law in the land?
(and yes, there is a very real difference between the two, notwithstanding Marbury – do you understand the critical nature of this difference?)
(and I would add that this critical difference is evident in the fact that Congress can override a decision of the Supreme Court without enacting an amendment to the Constitution)
I do not think that Roslin and Amgen are really as inconsistent as Dr. Lefstin argues. Roslin argued that their sheep could be different from natural sheep in that their sheep had different mitochondrial DNA then their forebears, but in the case of a female clone, there is nothing to stop one from using an egg and a nucleus from the same donor mammal, such that the resulting clone would have the same mitochondrial DNA as the parent sheep. In other words, although Roslin was arguing mitochondrial DNA as the difference, their claims read on clones who had the same mDNA as their mothers. The “difference” on which they were hanging their hat was only a sometimes difference.
By contrast, even though Amgen’s claims did not mention the glycosylation, the glycosylation was inherently different from natural EPO by virtue of the cell line origin. I take MM’s point that maybe this fact should not impart any significance, because the claim still reads on the EPO even if you treat the EPO with a glycosylase. Still and all, I think that Roslin was not in an exactly analogous Amgen position.
I really wish the Fed Cir would have decided this on 102 grounds instead of 101, so that we would have the absurd result that a clone of a pre-existing mammal is held to be a “product of nature.”
GrzeszDeL,
You too appear to be tripped up with the ‘living thing’ aspect.
Take a baby step first: on the sister thread check out: link to patentlyo.com
That post was of poor quality.
G, if the case were decided on prior art grounds, the cloned animal would be at least novel. But how would one deal with 103? If cloning were known, implying a well know process, I assume a cloned animal is obvious because the only difference between the claimed animal and the prior art animal is the application of a well known process.
Ned,
If the language of cloning that comes with the language used in the claim doesn’t NOT include the subtle differences, then novelty MUST be gone.
Your reasoning on this issue is just not well thought through.
I think that Roslin’s claim is cleanly anticipated. MPEP 2131 notes that that the process limitations in a product-by-process claim do not impart novelty. When you are claiming a composition of matter (sheep) based on the method of manufacture (cloned), the resulting article–not just the method of making–needs to be novel.
Here the resulting article is just a sheep. Sheep have been on sale in this country for more than one year, so Roslin’s claims are unpatentable under 102(b).
Grz I really wish the Fed Cir would have decided this on 102 grounds instead of 101, so that we would [not] have the absurd result that a clone of a pre-existing mammal is held to be a “product of nature.”
I put the word [not] in your quote because I’m pretty sure that’s what you meant to say ..
But I think you understand that the court is not saying that Dolly the Sheep is a “product of nature”. Rather, the court is saying that the claim which the applicant drafted to protect Dolly reads on “products of nature”. Therefore, it’s ineligible. It’s seems a lot less absurd when you look at it that way…
Dear MM
I did omit a rather critical “not.” Thank you for correcting that.
Justice Holmes rightly observed that “hard cases make bad law.” Decisions on section 101-grounds are almost always hard, and I think that it would be better policy to avoid them when possible. Indeed, this used to be the Fed Circuit’s preferred approach. MySpace v. GraphOn Corp., 672 F.3d 1250, 1261 (Fed. Cir. 2012). Unfortunately, Mayo declared that “[t]his approach… would make the ‘law of nature’ exception to § 101 patentability a dead letter” (132 S. Ct. at 1303).
“Decisions on section 101-grounds are almost always hard, and I think that it would be better policy to avoid them when possible.”
You sound exactly like Chief Judge Rader.
(and nice to see someone else get the “dead letter” reference in Prometheus correct)
The proper protection for a new method of copying something is a method claim.
There is a deep problem with the “product of nature” exception to subject matter eligibility generally which is that human beings and everything they create are no more or less “natural” than anything else in the universe. The same physical laws apply to all non-abstract, non-virtual and non-imaginary objects.
Put another way, it’s not clear to me why there should be a different analysis for examining a claim in view of an old “man-made” composition and an old “natural” composition. Both the old compositions are in the public domain. Why should it make any difference if one of the old prior art compositions was, at some point, altered in some minute way by the “hand of man”?
“human beings and everything they create are no more or less “natural” than anything else in the universe.”
You so do not understand the place of man as assumed in the basics of law.
The hand of man is deemed special. Everything else – everything in the warehouse of nature is deemed differently. Whether or not “the same physical laws apply” is a non sequitur.
“Why should it make any difference if one of the old prior art compositions was, at some point, altered in some minute way by the “hand of man”?”
Not the right question. Hint: you seem to have misplaced your understanding of that critical word “effectively,” or your understanding of the phrase “different in kind” – just as you did in the Myriad discussions.
Hint
Learn to articulate your points in English. Nobody has time to play your silly games.
The hand of man is deemed special. Everything else – everything in the warehouse of nature is deemed differently.
Golly, that makes so much sense. Really informative.
“Golly, that makes so much sense.”
It’s an arbitrary distinction we’re making here MM, it isn’t supposed to make sense.
^ stumbles (yet again) with:
“It’s an arbitrary distinction… , it isn’t supposed to make sense.”
Just like Malcolm has his albatross of “intellectual honesty is not required,” 6 has his albatross of “law is subjective, entirely in the mind, and making up whatever is perfectly fine.”
It is not.
6 just does not understand how badly he does not understand the basic concepts of law.
“the basic concepts of law.”
Are often arbitrary distinctions we make to get through our day to day anon.
The fact that you repeat your nonsense 6 does not make it any less nonsense. Such only highlights your lack of understanding.
Anon, serious question, have you ever been a legislator, or otherwise in a position of writing laws? Even a mock position like in an model general assembly club in school or something like that? Ever been to a small time town council meeting? Or done a mock one where you’re in charge of making local ordinances?
I’m going to go out on a limb here and say that you never have. Because half of what goes into making half the laws that are on the books are arbitrary distinctions between things that legislators have seen fit to make a law to force people into making. That’s one big reason why laws vary so much from country to country. Different legislative bodies draw those more or less arbitrary lines differently.
Just a few examples, there are regulations governing wheel chair ramps for many types of businesses. They set forth many specific dimensions that must be met etc. etc. Many of those regulations are arbitrarily over the top to provide better safety (helping us get through our day to day). Many of those regulations are different one tiny county away. The people of both counties are more or less still very protected from bad wheelchair ramps even though the regs set by local statute are different.
This is the same thing on a larger scale. The legislative branch (and to an extent the judiciary) is simply drawing an arbitrary line that they could draw elsewhere. They could put the hand of man or ape in the law if they felt like it. Or the hand of man or the flipper of dolphin. Or the hand of man or the product of trees. Again, it is an arbitrary distinction that suits our purposes to help us through our day.
You seem to think you’re at the top of your game legally, (perhaps because of your OCPD) but you’re at the bottom of your game politically brosef.
Your going out on a limb is wrong. But thanks for guessing ( I won several awards for legislative simulations back in my school days, leading my school to a perfect first place record).
Your desire for injecting arbitrariness is (still) simply in the weeds.
You are showing a fundamental lack of understanding of what law is by attempting to denigrate the hand of man/nature dichotomy. There is nothing at all arbitrary about this distinction – and you would not try to say otherwise if you were not so badly misunderstanding law.
This is not a “policital game brosef” as you would have it. Your belief system is getting in your way again.
“Your going out on a limb is wrong. But thanks for guessing ( I won several awards for legislative simulations back in my school days, leading my school to a perfect first place record).”
You won awards? Who gives awards for that?
“This is not a “policital game brosef” as you would have it. ”
Keep on beliebin’ re re.