I don't believe 101 is a defense to infringement (as y'all know), but let's assume that it is.
Let’s start with the types of subject matter, which seems to be misunderstood by alot of people. There are three categories of "ineligible subject matter," two of which are intangible, one tangible: intangible abstract ideas and laws of nature (probably overlapping to some extent?) and tangible “natural phenomenon.” To make this clearer, I’ll call that third category “natural products.” (There are enormous definitional problems here: why is the rate at which the body metabolizes a synthetic drug a “law of nature” being a glaring one, but let’s keep going.)
You know the basic types of claims or you wouldn’t be reading this.
With that framework, here is what the Supreme Court cases teach: if a method claim is deemed to embrace intangible subject matter, or if a product claim embraces a natural product, the claim is at least suspect. There’s a lot in that which we’ll get to in a moment, but that formula predicts the outcome of every Supreme Court case since 1952, plus Funk Brothers (which I have doubts survived the 1952 amendments to the Patent Act but that's for another day):
Case
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Product claim?
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Process claim?
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Any ineligible subject matter, and if so what type?
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Result
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Comments
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Funk
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X
|
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Natural product
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No invention
|
|
|
|
|
|
|
|
|
|
|
|
|
|
Gottschalk
|
|
X
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Intangible
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No invention
|
|
Parker
|
|
X
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Intangible
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No invention
|
|
Diehr
|
|
X
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Intangible
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Invention
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Because the process was tied to a particular application (not machine, but process), the subject matter was eligible. Court almost looked at is like a product-by-process claim
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Chakrabarty
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X
|
|
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Invention
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Not natural product; but notice that if it had been…
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Bilski
|
|
X
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Intangible
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No invention
|
|
Prometheus
|
|
X
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Intangible
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No invention
|
|
Myriad
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X
|
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To an extent, natural product
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To extent natural product, no invention.
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In dicta emphasized that a method claim would have been fine.
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Thus, there is a correlation between the use of a method claim and an intangible. The reason for this correlation between claim type and the tangibility of the ineligible subject matter is, I suspect, that, absent unusual circumstances, a process claim using a natural product isn’t precluding all uses of the natural product, but a product claim on the natural product itself does so. Vice versa with process claims claiming intangibles.
I hear the objections. Some say that focusing on claim type will lead to clever drafting. But, a method claim covering a use a tangible natural product won’t get the same coverage as a product claim, and vice versa. Clever drafting will only get you so far and what’s wrong with clever drafting, anyway? But, I hear the objection. I’ll overrule it.
Now, so far, I think, this is relatively simple. But it led me to what, I think, is an important insight: a method claim to an intangible is the mirror image of a product claim to a natural product. That, I think, helps us to deal with some questions about how much is “enough” in the context of a method claim to an intangible—a serious and messy question. (And, in my view as noted above, an unnecessary and unauthorized one, and a stupid one – how much is “enough” is 103!)
Let’s see what we can see. A product claim on a new mineral found in nature is ineligible. The product claim is coextensive with the natural product, which is old, even if newly discovered. There’s plenty of dicta on that point, and Myriad so holds. The legislative history of the 1952 act also shows that Congress wanted to bar these claims (though it expressly made clear that it wanted to permit claims to methods using “old” natural products).
The converse of the foregoing is that a method claim coextensive with even a newly discovered intangible law or idea should not be eligible. Let’s ignore the fact that that conclusion flies in the face of the statutory language that was added to overcome limitations on what was a “process” (“including a process, art or method which includes a new use of a known process, composition, manufacture, machine, or material….”). Since the Supreme Court hasn’t seemed to notice that problem, we’ll skip past it, too.
So we have some easy observations: a product claim coextensive with a natural product is ineligible, as is a method claim coextensive with the abstract law or idea.
Now, let’s deal with the other end of each spectrum. The dicta in Myriad was that someone who discovers a natural product should go get method claims on it. That would be fine. So, a process claim is fine even though it mentions a natural product. No news there.
What if someone discovers (which means “invent” under the 1952 act) an old intangible, including a natural product? There’s no ready analog I can think of to a method claim mentioning a natural product: it would be a product claim mentioning an abstract idea. Although I’m sure they exist, they would seem to be a product-by-process claim (much like Diehr was analyzed, in my view). So, a product by process claim should be fine even though it mentions an old intangible.
Now, let’s dig a little deeper into the muddy middle of these spectrums. Suppose my new mineral has a name (“Hricikite”), and a chemical structure. If I merely claimed Hricikite in terms of its chemical structure, that fails. The analog, I suggest, would be to try to claim an abstract idea by simply laying out its steps. This was, perhaps, CLS Bank: the claim basically broke down the abstract idea of an escrow into its constituent parts, much like the claim to the chemical structure did so with Hricikite.
But in each case, this is “bad’ clever claim drafting. Putting it aside, and I think we would agree, that beyond those efforts to use more words to claim the ineligible subject matter, it doesn’t take much to make a method claim mentioning a natural product eligible. A new use for an old product is enough. The statute says the same thing about processes. My key point: If these symmetries hold true, that means that it also should not take much to make a method claim to an intangible eligible.
I am probably missing a lot. What do you think?