By Jason Rantanen
The Supeme Court continues to take an active interest in patent cases, with three currently pending before the Court. Briefs are available through the American Bar Association's Supreme Court coverage site.
Patent Cases Pending Before the Supreme Court:
Mayo v. Prometheus: Subject Matter Patentability of Processes, redux. In Mayo, the Supreme Court will revisit the issue of patentable processes in a case that was the subject of a grant-vacate-remand order following Bilski. The Court has asked the parties to answer the following question:
Whether 35 U.S.C. § 101 is satisfied by a patent claim that covers observed correlations between blood test results and patient health, so that the claim effectively preempts all uses of the naturally occurring correlations, simply because well-known methods used to administer prescription drugs and test blood may involve “transformations” of body chemistry.
Argument is set for December 7, 2011. This case has prompted substantial debate and numerous amici submissions. Prior PatentlyO posts:
- Prometheus v. Mayo (January 25, 2009)
- Mayo v. Prometheus: Medical Methods and Patentable Subject Matter at the Supreme Court (October 28, 2009)
- Prometheus v. Mayo: En Banc Petition on Patentability of Medical Methods (June 26, 2010)
- Mayo v. Prometheus Labs: Bilski and Medical Methods (June 29, 2010)
- Prometheus v. Mayo: Patenting Medical Methods (September 15, 2010)
- Prometheus Laboratories v. Mayo: The Broad Scope of Statutory Subject Matter (December 22, 2010)
- Supreme Court to Revisit Patentable Subject Matter Eligibility (June 20, 2011)
Kappos v. Hyatt: Standard of Review of Patent Office Appeals to the District Court. In Kappos v. Hyatt, the Supreme Court will address the de novo nature of a civil action brought by a patent applicant under 35 U.S.C. § 145. The Federal Circuit, sitting en banc, previously held that in such a proceeding the applicant many present new evidence to the district court and that any factual conclusions impacted by that evidence must be determined de novo, without deference to the patent office. The Supreme Court has not yet set oral argument. Prior PatentlyO commentary:
- Appealing a BPAI Rejection: Can the Applicant Present New Arguments and New Evidence to the District Court? (February 17, 2010)
- The Timeliness of the En Banc Rehearing of Hyatt v. Kappos (February 18, 2010)
- Hyatt v. Kappos: Federal Circuit Opens Door to Post-BPAI Civil Actions (November 8, 2010)
- US Government Asks for Increased Deference When Patent Applicants Challenge BPAI Decisions in Court (April 11, 2011)
- Supreme Court takes Two More Patent Cases (June 27, 2011)
Caraco v. Novo: Counterclaims Relating to Brand Name Description of Claim Scope. This case relates to a generic company's ability to seek a counterclaim to correct a brand pharmaceutical company's alleged misdescription of patent claim scope submitted to the FDA. Oral argument is set for December 5, 2011.
Patent Cases Pending Before the Federal Circuit Sitting en banc:
Akamai v. Limelight and McKesson v. Epic: Multi-Party, Multi-Step Infringement issues. In this set of cases the Federal Circuit will address infringement liability when multiple parties collectively perform separate steps of a muti-step process claim but no single entity performs all the steps. Oral argument will take place on November 18, 2011. Prior PatentlyO commentary:
Ned, please understand that “technical effect” belongs in the EPO’s 103 pigeon hole, not 101. It is part of the whole “problem/solution” debate that goes on there.
For 101, the EPO looks at “technical character”. That’s its way of confining patent-eligibility to the GATT-TRIPS “fields of technology” and the US Constitution’s “useful arts”, without getting prematurely into novelty and obviousness issues (which are handled under later Articles of the EPC).
Technology has technical character (of course). The fine arts and methods of, say, haggling in the souk or securitizing on Wall Street are activities which, as such, lack technical character.
For the EPO, its 101 approach works. It works because its 103 filter complements its 101 filter. For us in Europe, the “technical character” and “technical effect” issues are not confusible. At the EPO 103 is never conflated into 101. Observers like AI look across at Munich and shout out that they want exactly the same as what she over there is getting”. They should be more careful what they wish for. I wait to see how Rader CJ will handle the 103 issues on, say, a method of haggling.
Ned gets it. Adding a subsequent administering step would render the claims patent-eligible, but worthless. Ned, ever notice that the claims do not specify what is indicated if the metabolite levels do not fall outside the range in the claims? This is emblematic of why these claims fail.
Let’s say SCOTUS issues the dumbest decision in its history and affirms. How should this claim be handled:
“A method for predicting lethal condition with no observable symptoms or treatment, comprising determining presence or absence of biomarker correlated with the condition, wherein presence of biomarker indicates condition and absence of biomarker indicates non-condition.”
Even the patent-birthers on this board would probably agree that this claim shouldn’t be allowed, but why treat it differently than the Prometheus claims?
Anon: “Go to the version of Bilski that generated the Diehrbot phrase “Bilski 14″ (which translates to 130 S. Ct. 3218, 3230) and read page 11 of that majority opinion. For your benefit, try 130 S. Ct. 3218, 3228-3229 (the C1 majority section).”
Thanks Anon, I went back and read Bilski as if it were the very first time I had seen it. I tried to read it completely objectively , with an open mind, and willingness to accept that whatever the decision said, it is the current law of the land. Here is what I found regarding business methods:
(c) Section 101 similarly precludes a reading of the term “process” that would categorically exclude business methods…….
The Court is unaware of any argument that the “ordinary, common meaning,” Diehr, supra, at 182, of “method” excludes business methods.
Nor is it clear what a business method exception would sweep in and whether it would exclude technologies for conducting a business more efficiently. The categorical exclusion argument is further undermined by the fact that federal law explic- itly contemplates the existence of at least some business method pat- ents: Under §273(b)(1), if a patent-holder claims infringement based on “a method in [a] patent,” the alleged infringer can assert a defense of prior use.
By allowing this defense, the statute itself acknowledges that there may be business method patents. Section 273 thus clari- fies the understanding that a business method is simply one kind of “method” that is, at least in some circumstances, eligible for patent- ing under §101.” ( Bilski)
Okay, that is clear to me. The Court is saying, Business methods, are simply methods and processes like any other methods and processes.
If I am correct here then Business Methods are to be judged according the same conditions and requirements of U.S.C. Title 35, as any other process.
And finally the Court did not limit or narrow the statute, ( which is already broad) in any way that would exclude a method of doing business.
Therefore inventions declaring themselves as business methods, or otherwise shown to be commercially applicable, or improving and advancing ways to conduct commerce or business, are statutory, providing they meet the same conditions and requirements of U.S.C. Title 35, as any other invention.
So Anon, did I get this right or wrong?
I would have asked Ned but don’t believe he would provide an honest answer.
Actually, Ned, it is precisely you that refuses to make intelligent arguments.
Do you really think it intelligent to argue that a specific case (Bilski) means that all business method patents are not patent eligible? Do you reeally think it intelligent to attempt (repeatedly) to foist with your (and only your) word play between “as a category and “categorically.” as a basis for logic? Do you really think it intelligent to pretend ignorance at every point that someone wants a clear answer from you?
Why is it that you never seem to understand enough to answer the point on “as a category” versus “categorically”?
Why is it that you never seem to be able to answer the majority rule in Bilski when they discuss business methods as a category (the Bilski 11 rallying cry)?
Why is it that you never seem to be able to discuss the legislative laws, as reinforced by Bilski on-point discussion of Section 273 – and the current role that the passage of the AIA – which leaves that very section intact as to business methods?
What exactly are the “intelligent” arguemtns that you make?
– your word-play on “categorically?”
– your il-logic of taking the particular to classify an entire category?
– your reliance on Benson to the exclusion of Diehr and the denial of the reality of the effect of Diehr on Benson (the now famous Bilski 14 rallying cry)?
– your stark absence from any discussion on the legislative effects of a Congress when having the opportunity to clearly outlaw the elligibility of business method patents not doing so?
No, good sir – it is plainly you that refuses to make intelligent arguments. It is you that feigns ignorance, that does not address the issues squarely and fairly. I have provided the pincites in Bilski according to its Supreme Court release. Please do not feign ignorance yet again. Your next reply should actually address the points raised, as I am still waiting for you to actually engage in any of these intelligent arguments.
And to top it off, you have the audacity to post in a smug, p_ompous and condenscending manner… Are you not aware of how that comes across? Are you really that blithe?
Well, AI, historically, they were thought to be an exception. That exception was overruled in State Street Bank.
The Supremes, not finding BMPs excluded in the language of 101 did not categorically exclude them. Still they did require such claims to pass traditional tests such as the MOT or some "other" test that it left for the lower courts to devise.
What remains telling, AI, is what they actually did in Bilski. They held the claims before it not patent eligible. Those claims were claims that everyone agreed were directed to a BMP.
So what conclusion are we to draw from Bilksi? BMPs are not in fact patent eligible. Claims
that otherwise pass the MOT or some other test to be devised might be patent eligible, but they will be eligible for reasons entirely unrelated to whether they have a business utility.
I will agree with you here, Anon, that the Prometheus claims would present a patentable method even if every element of the claim was old and the only new element was the changing of the dosage, actually administered to the patient, according to the results.
I suspect the real reason for such claims that truncate before the administering step is 287(c):
“(c)
(1) With respect to a medical practitioner’s performance of a medical activity that constitutes an infringement under section 271(a) or (b) of this title, the provisions of sections 281, 283, 284, and 285 of this title shall not apply against the medical practitioner or against a related health care entity with respect to such medical activity.
(2) For the purposes of this subsection:
(A) the term “medical activity” means the performance of a medical or surgical procedure on a body, but shall not include (i) the use of a patented machine, manufacture, or composition of matter in violation of such patent, (ii) the practice of a patented use of a composition of matter in violation of such patent, or (iii) the practice of a process in violation of a biotechnology patent.”
Ned while I highly doubt you will answer, as least honestly, the question must be asked anyway. Why would the Supreme Court need to affirm so called BMP’s categorically patent eligible when they have never been declared categorically patent ineligible by any court, congress or statute?
Night, on the the reason Prometheus is wrong, I would hope you would agree that it fails the MOT regardless that the Feds say that it does not fail.
See, e.g., In re Christensen, 478 F.2d 1392, 1396, 178 USPQ 35 (CCPA 1973) (Rich, J., concurring) (“The Supreme Court in Benson appears to have held that claims drafted in such terms are not patentable — for what reason remaining a mystery.”), overruled in part by In re Taner, 681 F.2d 787, 214 USPQ 678 (1982); In re Johnston, 502 F.2d 765, 773, 183 USPQ 172, 179 (CCPA 1974) (Rich, J., dissenting) (“I am probably as much — if not more — confused by the wording of the Benson opinion as many others.”); rev’d, Dann v. Johnston, 425 U.S. 219, 96 S.Ct. 1393, 47 L.Ed.2d 692 (1976); In re Chatfield, 545 F.2d 152, 157, 191 USPQ 730, 735 (CCPA 1976) (Nonstatutory claims are “drawn to mathematical problem-solving algorithms or to purely mental steps.”), cert. denied, Dann v. Noll, 434 U.S. 875, 98 S.Ct. 226, 54 L.Ed.2d 155 (1977)
MM cannot be Stern. MM was on PO waaaaaaay before any bigshots like Stern would have been around. Like, when it was a backwater po-dunk repository of little snippets masquerading as articles.
Also I doubt if Stern knows jack about bio whereas MM plainly does from his comments on the subject.
NWPA, Richard is a good friend of mine. I am becoming a good friend of Malcolm, but we have not met. Even so, I do not believe the two to be the same people as I know Richard’s views on the topic.
I will agree with you that a claim that does not present a solution to a technical problem is not patentable if you will agree that a patent that does not present a solution to a technical problem is a patent that does not have a technical effect.
“On what basis? Do you mean to say that all individual steps in all claims that are parts of solutions must all and each be novel? Really?”
Did I say that? Also note that we’re talking 101 here tardface. Not 102/103.
The FACTS of that case are pretty ez. Factually speaking, the “problem” is that people are getting an unoptimized dosage. That is the only “problem”. To be part of the “solution” whatever given step you’re talking about at the moment must be doing something to solve that “problem”. Giving people old, and in this case unoptimized, dosages does not solve the “problem” at all, indeed, it is the definition of the “problem”.
anon, despite your whaling, it remains remarkable to see you dangle so long from that yardarm without recognizing the obvious. The Supreme Court not only did not affirm that BMPs were categorically patent eligible, they unanimously held the BMP before it to be not patent eligible. You seem to have a hard time accepting reality.
anon, I pushed nothing about medical methods.
anon, it is not me that refuses to make intelligent arguments.
Max, thanks. I was, in making my reference to BMP, refering to the UK Halliburton case. It appears, thanks to your post, still to be tension between the UK and the EPO on this issue.
As to the EPO's apparently being able to at the same time say that claimed invention has technical effect at the "101" stage and does not have a technical advance at the "103" stage, I will leave that to the "philosophers" of Orwell's 1984 ilk who were able to convince both themselves and the deluded masses that war is peace, freedom is slavery, ignorance is strength and that four fingers are five.
I will leave it to AI, the Diehr Expert, Anon, Um no and assorted sockpuppets to their visions that Biksi is utopia even though the Supreme Court unanimously held
the only BMP to ever appear for judgment before it not to be eligible patent subject matter.
MaxDrei,
Need I remind you yet again of the US Law difference between “Useful Arts and “technical arts”?
I know that it is a constraint that tends to silence you, but here in the US we like our discussions on US Law to be meaningfully constrained – as such.
I suppose, 6, some will say that the “solution” is the claim as a whole, undissected. But the complement of a “solution” is a “problem”. Who agrees with me, that a patentable invention is indeed a “solution” (to an objective technical problem)?
“different from administering steps taken in the past in order for it to have been “part of the solution””
On what basis? Do you mean to say that all individual steps in all claims that are parts of solutions must all and each be novel? Really?
Hello? You have chugged the MM Koolaid on that one.
“It is telling that”
Ned, it is telling that you continue to play obtuse with the clear difference in the critical terminology as captured by Um, No.:
“As a category” simply does not mean the same thing as “categorically.”
Go to the version of Bilski that generated the Diehrbot phrase “Bilski 14” (which translates to 130 S. Ct. 3218, 3230) and read page 11 of that majority opinion. For your benefit, try 130 S. Ct. 3218, 3228-3229 (the C1 majority section).
Why do you persist in dragging your own name through the mud by pretending that anyone other than you is using the term “categorically” as reflected by Max Drei above?
Please reflect once more on the Bilski decision and stop embarrassing yourself (especially as you take a p_ompous attitude that you clearly do not deserve).
As a category, business methods are clearly patent eligible. It is the individual business methods – just like any other individual example of any other category of method claims – that must pass the test. Your attempt at stretching the logic of Bilski’s failed claims from a particualr example to cover the antier category is downright painful to witness you say (over and over again) – and I mean this from a humanitarian sense – it hurts me to see you be so f_oolish.
I’m sure it can. But it would need to, at the least, be an administering step that was different from administering steps taken in the past in order for it to have been “part of the solution”. That is, practicioners would have to give a different dosage than they did previously. But the applicant doesn’t just want to get those people, he wants to get people that think about a new thing but do the exact same administering step as they would have done 5 years before the invention. And that is because his “invention” is nothing more than new information.
6,
A fair argument can be made that the administering step is very much part of the solution. Just ask the sick people being transformed with that administering step.
Ned,
Why do I get the feeling that this “I have no idea what you’re talking about” is exactly the same type of “I have no idea what you’re talking about” you excalim when pushed with categories of medical methods?
In other words – I call BS on your protests of ignorance.
I guess I just have to join the ranks on that. A pity really, with your good name at stake and all.
Ned,
It is the p_ompous attitude like that, all the while you are clearly in the wrong, that earns you the enmity that you find on these threads.
Grow up indeed!
Ned, I regret to say that I think you do not understand it right. Further, I regret that the entire debate between the EPO position and the MM position has passed you by. That might be because of the noise coming from assorted contributers like AI and anon. These contributers do get the difference (I believe) but are more interested in pinging Malcolm than in spelling the difference out clearly. Perhaps the reason is that, for many, the EPO, as a validity forum, must be air-brushed out of the landscape.
So let me try now to explain.
The EPC eligibility exclusions apply to the thing “as such”. Statutory exceptions are traditionally construed narrowly. A claimed computer-implemented business method necessarily requires the presence of a computer, so is more than a business method “as such”. So, it has “technical character” and so passes EPC’s 101. Manna from heaven for AI, and for MM and the English courts an abomination.
It remains for such methods to get past the EPC’S 103. There, they fail. THe EPO practice of letting such stuff through 101 then extinguishing it with 103 is reason enough for the likes of the English courts (who cry “intellectual dishonesty”), UK litigators, MM, AI and anon to assert that the EPO’s TSM method is rubbish.
Ned, try that explanation on for size
Well I’ll be daggon. Me an NWPA agreeing that a claim will likely be found to fail 101. However, I’m not entirely sure if an administering step would rescue the claim. Post-solution activity and all that.
See, the patent system supports terrorism in the form of Armageddonism.
link to thepriorart.typepad.com
Hey AI, look, it is one of your fellow AIs.
I wonder, should this guy become the poster-boy for patent trolls?
Anon, the Supreme Court and the Federal Circuit seem to agree that a patent cannot be granted on "mental steps." However, a patent is not ineligible if it includes "mental steps." The real difficulty is distinguishing between the two, and I think the UK case is helpful on that issue.
Regarding "business method patents" I think the Supreme Court punted on that issue. Bilski presented the case of whether business methods were patentable. It is telling that they held the claims to be not that patent eligible.
Sent from iPhone
Anon, when you grow up you will get it as well.
Sent from iPhone
Listen, anon, when you cite cases like you do, I have no idea what you're talking about.
Sent from iPhone
My proediction is that the Prometheus claim without a administering step is going to be found ineligible for patentability.
And that someday MM will be unmasked to be Richard Stern.
“Max, you get it at least”
Notwithstanding the animosity from Um, No., what MaxDrei actually gets is a proper kick in the teeth.
Um, No.’s statement of “ ‘As a category’ simply does not mean the same thing as ‘categorically.’” captures the purposeful obfuscation that Ned has been peddling throughout the many discussions on this topic. An obfuscation that Ned has never addressed, and one that impugns his character (and use of his actual name) every time it appears. To somehow think that just because an actual name is used on these blog posts, that there is some accountability and to then see this line of logic continuously used without care as to any sense of rationality is a bit mind-boggling.
As noted, though, I doubt that neither MaxDrei nor Ned will actually change any time soon.
Ned,
I have already indicated my agreement with that decision (See Reply Oct 13, 2011 at 11:08 AM, above)and pointed out that that decision has been laid out with substantial legal rigor.
Importantly – and distinctively in regards to US Law, I also pointed out that US Law has a broader patent eligibility class, based on the difference between “Useful Arts” and “technical arts.” In fact, key to truly understanding the import of the UK decision is to understand the difference in US patent eligibility standards from that UK decision.
As you read the UK decision, apply the broader US patent eligibility boundaries to the logical steps provided, and you will see what the proper understanding of US Law means to our many discussions.
As I said above:
“Now if you take that same rigor and apply it to the US system, GIVEN that the US system has an even more broad patent subject matter regime (particularly noting that the US standard is Useful Arts and not merely technical arts) which explicitly includes software and business method patents, what, pray tell, can you come away with?
Do tell, please!
While my note was directed to MaxDrei (who propmptly refused to engage in a proper discussion of US Law – because I so constrained my questions to proper US Law), please feel free to provide your thoughts (which by the way would more correctly be put as you moving to my views than the other way around).
I also note that you have not yet responded to my helpful comment on the thread about the courts simply making a rule that no matter the wording, if any claim can be entirely performed in one’s mind, then that action (the entire performance in one’s mind) cannot be infringement (and thus preserving the actual claim and the actual state of law that does allow some mental aspects to be captured in claims).
As they say, the ball is in your court.
Max, you get it at least. While the Supremes did not categorically ostrisize BMPs, as a practical matter they did. The Bilski claims were the classic BMP. BMPs were at all patentable, those claims should have been patentable. But they were held to be not patent eligible nevertheless.
I daresay, the Supreme Court is treading carefully here. That is why they did not adopt the Stevens view.
Just a note, in Euroland, I suspect the Bilski claims would have held not patent eligible regardless that they were executed on a computer — that because BMPs are statutorily proscribed. Do I have this right?
Ned,
I am mystified that you think I depend on some overturning of the Supreme Court, especially given your lack of response as noted to:
Bilski 11
Bilski 15
35 USC 273
AIA
Quite to the contrary, your continued reliance on some position that does not square with either legislative nor case law shows where you are in this debate (and that position is not on the winning side).
anon, have you read the recent English Halliburton case? If you haven’t you should.
If you agree with it, then, in fact, you and I agree on this issue. If you disagree with that case, tell me how.
Anon, I was struck though, that the result at the Supreme Court was the same with the MPF claims.
And, no, Valmont, a Rader panel decision, did not overturn the the Supreme Court. Your continued reliance on the likes of Rader vs. the Supreme Court shows where you are in this debate.
anon, the subquent history was about different claims, the MPF claims.
…but of course, this leads to one of Ned’s favorite diversions, which may now lead to a thread hijack (and I prefer my hijack attempt above)
If Ned has Shepardized his citation, he would have included the following:
Different results reached on rehearing at:
Halliburton Oil Well Cementing Co. v. Walker, 329 U.S. 1, 67 S. Ct. 6, 91 L. Ed. 3, 1946 U.S. LEXIS 1724, 1946 Dec. Comm’r Pat. 628, 71 U.S.P.Q. (BNA) 175 (1946)
Superseded by statute as stated in:
– Technitrol, Inc. v. Control Data Corp., 550 F.2d 992, 1977 U.S. App. LEXIS 14394, 193 U.S.P.Q. (BNA) 257 (4th Cir. Md. 1977)
– Valmont Industries, Inc. v. Reinke Mfg. Co., 983 F.2d 1039, 1993 U.S. App. LEXIS 232, 25 U.S.P.Q.2d (BNA) 1451 (Fed. Cir. 1993)
– Greenberg v. Ethicon Endo-Surgery, 91 F.3d 1580, 1996 U.S. App. LEXIS 20109, 39 U.S.P.Q.2d (BNA) 1783 (Fed. Cir. 1996)
– Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 117 S. Ct. 1040, 137 L. Ed. 2d 146, 1997 U.S. LEXIS 1476, 65 U.S.L.W. 4162, 10 Fla. L. Weekly Fed. S 321, 97 Cal. Daily Op. Service 1540, 97 D.A.R. 2249, 41 U.S.P.Q.2d (BNA) 1865 (1997)
– Clearstream Wastewater Sys. v. Hydro-Action, Inc., 1999 U.S. Dist. LEXIS 21546 (S.D. Tex. Feb. 4, 1999)
– Frank’s Casing Crew & Rental Tools, Inc. v. Weatherford Int’l, Inc., 2002 U.S. Dist. LEXIS 27669 (W.D. Okla. July 22, 2002)
– New Tek Mfg. v. Beehner, 270 Neb. 264, 702 N.W.2d 336, 2005 Neb. LEXIS 149 (2005)
But such minor quibbles only show a weakness in Ned’s postion, so why include them?
Just as you will not see a substantive answer from Ned on the actual law (too bad on that really), you will not see MaxDrei stop his style of posting (even as he implores others not to be, or to be less of, a nuisance). It is after all his style, and no matter how fatuous that style is, MaxDrei cannot help himself.
“let’s see some serious and grounded, proper Statutory Contruction based replies exhibiting some critical legal thinking”
No takers on this subject?
I would really like to see someone explain the statutory construction given the (gasp) constraints of normal statutory construction canons. Please include comments on:
– Two halfs to the statement (no surplusage).
– “Directed to” has a large scope of meaning, but is not ambiguous.
– This law’s supporting Congressional Record lacks the explicit and express limitations on the ban langugae that acompained previous attemtps to include similarly worded amendments.
Am I asking too much? (I am not being fatuous, but rather, I am being earnest) Perhaps I am merely asking the wrong crowd…
I was going to add a comment to this thread, but why continue to hammer home the same points if the other side of the debate insists on putting their fingers in their ears and chanting “Stevens help me, Stevens help me, Stevens help me“?
“Some here seem to think that…
ALL business methods, without exception, ARE patent-eligible”
NO.
This is an illicit attempt to (yet again) reframe the discussion.
This type of rhetorical c_rap has been routinely rejected and is (once again) rejected.
The language to be used in this discussion clearly and unequivocally is NOT ANY (_____) type of method patent without exception is patent eligible.
“As a category” simply does not mean the same thing as “categorically.”
If you fill in the blank (_____) above with any category, you run into exactly the same logic. For example, the threads are replete with filling in the blank (_____) with “medical.” The resulting L_i_e from Ned was that “he did not understand” what a medical method was as a category.
All MaxDrei is trying to do here is drum up some pathetic support for the anti-patent crowd who are being decimated in the debate on this topic.
MaxDrei – STOP the clear nuisance postings of this nature.
This type of obvious gamemanship is deplorable, is easily spotted, and only speaks to the desparation of those who wish the law were different than what it is.
Actually I would have appreciated seeing Nedo address the AIA. Especially since he introduced the law to the discussion. Odd that he would run with his tail between his skirt before the debate could even begin.
lol You won’t find MM anywhere near this thread again. He will hide out until the next Court smack down and then limp into the discussion weeks later only to get his yearly but whuppin.
MM: AI, when the analysis includes the dissection of claims for the sole purpose of determining whether there is a transformative step or not.
You can find the “exact quotes” yourself. In both cases, the claims were disssected and the constituent steps were analyzed to determine whether they were bona fide “transformative steps,” “mere data gathering” steps, or “mental steps” (if the latter, then 101 is not passed). ”
Wow, MM you have taken a real beating the last few days it seems. As bloodied up as you are I almost hesitate to finish you off. But what the heck.
MOT is a clue and therefore courts can check to see if there is a machine or transformation in the claim that will allow the claim to be patent eligible subject mater.
However this is still required to be done with the claims as whole approach.
Therefore if the claims as a whole are all not all mental steps they can be patent eligible subject matter.
Therefore if the claims as a whole are transforming a particular article to a different state or thing they can be patent eligible subject matter.
Therefore if the claims as a whole are tied to a particular machine they can be patent eligible subject matter.
And if when using a math equation, the Machine or Transformation is extra solution activity, ( data gathering) it may not be enough to transform the equation into patentable subject matter.
Courts are not allowed to use MOT to deny claims.
This was established in Bilksi when the SCOTUS overturned the CAFC MOT as the sole test and relegated it back to being a mere clue to patent eligible subject matter.
I have read the Prometheus case and no where in that case did the panel advocate using dissection, especially to deny claims, that was over ruled in Diehr.
If you say the opposite you must present the exact quotes as requested or remain a discredited foool.
What you and Nedo have failed to do is recognize, as the Supreme Court has, the Application of Concepts to Specific Industrial Processes that was used in Diehr to find his claims patent eligible subject matter and that this principle is still controlling and good law.
If either of you had read and acknowledged Bilksi 14 you would know this by now.
Further more the Federal Circuit is following the Bilski 14 ruling and applying the DCAT, as I like to call it, in cases like Research Corp, and Ultramercial.
You can call me as many names as you want and use all the fallacious arguments in your dirty tricks book but you won’t change the facts or the law that:
The claims MUST be analyzed as a whole.
MOT is used only as a clue to allow and not deny
Dissection is not allowed period.
Deal with it!
:: Walks over MM::
Cherio Maxie:
What is TSM? Here in the USA there is no Constitutional or Statutory reason or requirement to discriminate against business method patents, ( whatever that is) .
What someone posted above about Bilksi 11, 14, 273, and the new AIA is very relevant as to why it will now be extremely difficult for the courts to attempt to strike this category from processes.
Ned has ducked those issues with good reason. In fact no one that opposes business methods can debate the issue within the current framework of existing case law and statute and win.
And that’s just a fact.
Good day mate!
To a man who only knows how to use a hammer, everything looks like a job for a hammer.
So it is with MaxDrei.
Some here seem to think that (because SCOTUS declines to say that ALL business methods, without exception are NOT patent-eligible) ALL business methods, without exception, ARE patent-eligible. I await with interest to see how the SCOTUS scalpel is used, to separate patent-eligible, non-abstract, computer-implemented business method subject matter from abstract and therefore non-eligible business method subject matter.
I suspect there is a debate going on, at SCOTUS and CAFC level, that mirrors the debate between the highest instances at the EPO and the UK, about whether the scalpel to use is 101 or 103+112.
No wonder then, that we see the same debate here.
In the end, it all comes down to the attitude you take to the EPO-TSM line. Therefore, those who urge TSM would be well-advised to try (with an open mind, willing to understand) how the EPO implements TSM.
I disagree with both of you. MM can think he is just prevented from doing so because of somebody’s patent.
“Or is that too much for one sockpuppet to expect from another?”
I wouldn’t know. But [MM] does.”
Another day, another ruthless beating at the 101 mill.
“1) A claim directed to a Business Method is not elibible. This by statute.
exactly what we need in the US”
Why?
What we actually have in the US – by statute – is that Busines Methods are eligible.
See Bilksi 11
See Bilski 15
See 35 USC 273
See AIA
See all the things that Ned has never provided answers for.
See Ned run like a sissy girl do the cha-cha.
Ned, do the cha-cha.
Ummm I thought the topic you were discussing was 101 subject matter eligibility. Am I wrong?
As always, you compare apples and oranges.
Sent from iPhone
Conclusion:
“Thus, for both inventions ‘the whole in some way exceed[ed] the sum of its parts”
Thus in Claims as a whole analysis the purpose is to see if the claims as a whole exceeds its parts in order to allow the claim.
Part II
12 It is argued that the procedure of dissecting a claim into old and new elements is mandated by our decision in Flook which noted that a mathematical algorithm must be assumed to be within the “prior art.” It is from this language that the Government premises its argument that if everything other than the algorithm is determined to be old in the art, then the claim cannot recite statutory subject matter. The fallacy in this argument is that we did not hold in Flook that the mathematical algorithm could not be considered at all when making the §101 determination. To accept the analysis proffered by the Government would, if carried to its extreme, make all inventions unpatentable because all inventions can be reduced to underlying principles of nature which, once known, make their implementation obvious. The analysis suggested by the Government would also undermine our earlier decisions regarding the criteria to consider in determining the eligibility of a process for patent protection. See, e.g., Gottschalk v. Benson, 409 U.S. 63, 175 USPQ 673 (1973); and Cochrane v. Deener, 94 U.S. 780 (1876).
15 The dissent’s analysis rises and falls on its characterization of respondents’ claims as presenting nothing more than “an improved method of calculating the time that the mold should remain closed during the curing process.” Post,at 13-14, 209 USPQ at 16 .The dissent states that respondents claim only to have developed “a new method of programming a digital computer in order to calculate — promptly and repeatedly — the correct curing time in a familiar process.” Post,at 20, 209 USPQ at 21 .Respondents’ claims, however, are not limited to the isolated step of “programming a digital computer.” Rather, respondents’ claims describe a process of curing rubber beginning with the loading of the mold and ending with the opening of the press and the production of a synthetic rubber product that has been perfectly cured — a result heretofore unknown in the art. See n.5, supra .The fact that one or more of the steps in respondents’ process may not, in isolation, be novel or independently eligible for patent protection is irrelevant to the question of whether the claims as a whole recite subject matter eligiblefor patent protection under §101. As we explained when discussing machine patents in Deepsouth Packing Co., Inc. v. Laitram Corp., 406 U.S. 518, 173 USPQ 769 (1971): The patents were warranted not by the novelty of their elements but by the novelty of the combination they represented. Invention was recognized because Laitram’s assignors combined ordinary elements in an extraordinary way — a novel union of old means was designed to achieve new ends. Thus, for both inventions ‘the whole in some way exceed[ed] the sum of its parts.’ Great A & P Tea Co. v. Supermarket Equipment Corp., 340 U.S. 147, 152, 87 USPQ 303, 305-306 (1950). Id.,at 521-522, 173 USPQ at 770 .
In order for the dissent to reach its conclusion it is necessary for it to read out of respondents’ patent application all the steps in the claimed process which it determined were not novel or “inventive.” That is not the purpose of the §101 inquiry and conflicts with the proposition recited above that a claimed invention may be entitled to patent protection even though some or all of its elements are not “novel.”
PART I
In determining the eligibility of respondents’ claimed process for patent protection under §101, their claims must be considered as a whole. It is inappropriate to dissect the claims into old and new elements and then to ignore the presence of the old elements in the analysis. This is particularly true in a process claim because a new combination of steps in a process may be patentable even though all the constituents of the combination were well known and in common use before the combination was made. The “novelty” of any element or steps in a process, or even of the <450 U.S. 189> process itself, is of no relevance in determining whether the subject matter of a claim falls within the §101 categories of possibly patentable subject matter.12
It has been urged that novelty is an appropriate consideration under §101. Presumably, this argument results from the language in §101 referring to any “new and useful” process, machine, etc. Section 101, however, is a general statement of the type of subject matter that is eligible for patent protection “subject to the conditions and requirements of this title.” Specific conditions for patentability follow and §102 covers in detail the conditions relating to novelty.13 <450 U.S. 190> The question therefore of whether a particular invention is novel is “fully apart from whether the invention falls into a category of statutory subject matter.” In re Bergey, 596 F.2d 952, 961, 201 USPQ 352, 361 (CCPA 1979). See also Nickolas v. Peterson, 580 F.2d 898, 198 USPQ 385 (CA6 1978). The legislative history of the 1952 Patent Act is in accord with this reasoning. The Senate Report provided: <209 USPQ 10>
Section 101 sets forth the subject matter that can be patented, ‘subject to the conditions and requirement of this title.’ The conditions under which a patent may be obtained follow, and Section 102 covers the conditions relating to novelty. S. Rep. No. 1979, 82d Cong., 2d Sess., 5 (1952) (emphasis supplied).
It is later stated in the same report:
Section 102, in general, may be said to describe the statutory novelty required for patentability, and includes, <450 U.S. 191> in effect, the amplification and definition of ‘new’ in Section 101. Id.,at 6.
Finally, it is stated in the “Revision Notes”:
The corresponding section of [the] existing statute is split into two sections, Section 101 relating to the subject matter for which patents may be obtained, and Section 102 defining statutory novelty and stating other conditions for patentability. Id.,at 17.
See also H.R. Rep. No. 1923, 82d Cong., 2d Sess. (1952), at 6, 7, and 17.
In this case, it may later be determined that the respondents’ process is not deserving of patent protection because it fails to satisfy the statutory conditions of novelty under §102 or nonobviousness under §103. A rejection on either of these grounds does not affect the determination that respondents’ claims recited subject matter which was eligible for patent protection under §101.
We have before us today only the question of whether respondents’ claims fall within the §101 categories of possibly patentable subject matter. We view respondents’ claims as nothing more than a process for molding rubber products and not as an attempt to patent a mathematical formula. We recognize, of course, that when a claim recites a mathematical formula (or scientific principle or phenomenon of nature), an inquiry must be made into whether the claim is seeking patent protection for that formula in the abstract. A mathematical formula as such is not accorded the protection of our patent laws, Gottschalk v. Benson, supra, and this principle cannot be circumvented by attempting to limit the use of the formula to a particular technological environment. Parker v. Flook, supra. Similarly, insignificant post-solution activity will not transform <450 U.S. 192> an unpatentable principle into a patentable process. Ibid.14 To hold otherwise would allow a competent draftsman to evade the recognized limitations on the type of subject matter eligible for patent protection. On the other hand, when a claim containing a mathematical formula implements or applies that formula in a structure or process which, when considered as a whole, is performing a function which the patent laws were designed to protect (e.g., transforming or reducing an article to a different state or thing), then the claim satisfies the requirements of §101. Because we do not view respondents’ claims as an attempt to patent a mathematical formula, but rather to be drawn to an industrial process <450 U.S. 193> for the molding of rubber products, we affirm the judgment of the Court of Customs and Patent Appeals.15 <209 USPQ 11>
MM is like a giddy lil hamster on his treadmill. Happy but going nowhere fast.
Hello Ned:
Why do you think Halliburton would make a better controlling case than Diehr for 101 subject matter?
And from the looks of recent cases, with the exception maybe of Cybersource, it seems the Federal Circuit is trending towards Diehr’s application of concepts to specific industrial processes, for 101 analysis.
MM: What is the point of continuing to copy and paste the exact paragraphs and quotes from Diehr that answer your question if you are simply going to ignore them?
One would have to be insane to participate in your treadmill games. However if you think you have some clever retort up your sleeve( delusional people often do) that discredits the Diehr majority just come out and say it.
And while you are at it how about addressing the following substantive points made by the commenters on this blog regarding your proposition, which all clearly see as nothing more than dissecting claims.
Cite one case in which a person was successfully sued for merely thinking about a patent.
Prove that any patent claim has, or ever will actually prevent anyone from thinking a new thought.
Explain how you propose taking the claims as a whole while at the same time using individual elements in the claims as the basis for denying an applicant his patent.
I will now disagree with you anon. MM does try very hard to think. He is just not very good at it.
Actually, Malcolm, the Halliburton decision, link to bailii.org, is so good as to make one want to cry. Why can’t we have jurists in the US who parse prior decisions in this way? Learned Hand one did, and Rich to an extent.
The decision is exactly what we need in the US. from the case, we learn:
1) A claim directed to a Business Method is not elibible. This by statute.
2) A claim that ends in a mental step is not patent eligible. (The discarded In re Christensen case, now resurected in Classen.)
3) A claim that includes a mental step, but that ends in step that has a technical effect (read MOT) is patent eligible.
4) A claim to math or programming expressly limited to execution on a computer is not unpatentable as a mental step.
5) A claim that can only be executed on a computer regardless that it is not so expressly limited is not unpatentable as a mental step.
We see the Federal Circuit law trending in this direction. Prometheus is the sole, but jarring exception.
“Do you think that you are fooling anyone?”
That would require “thinking,” something MM tries not to do.
Actual Inventor,
Shhh – he knows we know that he knows we know he knows.
But if he lets on that he knows we know that he knows we know he knows, then he would have to stop trolling the subject, and he is not yet ready to have to think about what else he can troll.
You know?
AI: already explained that at Oct 13, 2011 at 03:56 PM in this thread.
MM: No, you didn’t.
AI: Well, if what you insist on doing is playing a game of saying my explanation is not an explanation then there can be no dialog and the debate can’t continue. Of course if you had any courage at all you would at least explain why my explanation was not an explanation, or preferably why you disagree with my explanation and offer your own rebuttal. But that would require some rational and logical thinking on your part. So we all know that won’t happen.
This little game of yours is just a ruse to distract from the fact your dissection proposition has been exposed by more than one commenter as illogical, illegal, and just plain d-u-m-b.
To date you can’t cite one case in which a person was successfully sued for merely thinking about a patent.
To date you have failed to prove that any patent claim has, or ever will actually prevent anyone from thinking a new thought.
.
To date you have failed to explain how you propose taking the claims as a whole while at the same time using individual elements in the claims as the basis for denying an applicant his patent
I find your style of posting rather disengenuous MM.
You use lulz but say you wouldn’t know wha tit means. You have been hammered day after day on the substantive points, but cling to some obviously pedantic view of non-dissection. You have clearly admitted that you woudl have sided withthe dissent in Diehr, which all but signifies that the actual law goes against your beliefs, and yet want everyone to believe that your beliefs are in accordance with law.
Do you enjoy spinning around and around so? Do you think that you are fooling anyone?
What exactly does Lulz mean when you are getting hammered on all the substantive points?
I wouldn’t know. But AI does.
Can you help him out? Do you understand what is the “exact kind” of dissection that is “expressly prohibited” in Diehr? If so, can you let us in on the big secret? Then we can see if the majority in Prometheus ignored the “express prohibition.”
FYI – I hope you don’t mind, but I just deleted a whole thread from another post.
A – We’re working on this. There are several problems that are leading me to think that we need to move away from typepad servers and to a new blog hosting service.
What exactly does Lulz mean when you are getting hammered on all the substantive points?
Hey sockie – do you know the “exact kind” of dissection that was “expressly prohibited” in Diehr?
Your BFF Actual Inventard seems incapable of providing an answer. Can you help it out? Or is that too much for one sockpuppet to expect from another?
Lulz.
I already explained that at Oct 13, 2011 at 03:56 PM in this thread.
No, you didn’t.
What is the “exact kind” of dissection expressly prohibited in Diehr? I’ve read Diehr. My understanding of what Diehr prohibits is very different from yours, AI (the fact that you need to be reminded of this illustrates once again the shallowness of your intellect and/or your habitual dishonesty).
What matters, AI, is your understanding of the “exact kind” of dissection “expressly prohibited” in Diehr. When you can articulate what this “exact kind” of dissection is, I’ll be happy to provide you with the quote from Prometheus (or not — it may not be there, depending on your answer to the question).
I’m laughing my axx off, by the way, at your inability to explain a single comment relating to your favorite case of all time.
Please inform us all: what is the “exact kind” of dissection “expressly prohbited” by Diehr?
Jason,
This comment is not in reply – but is placed here to give notice that this thread is starting to malfunction (related to the “show more comments” script).
This is not an issue with your post per se, but has happened on several Patently-O threads, notably when the thread comment count goes over two hundred.
It might be nice to correct/prevent this from happening and losing comments (although some may see that as a blessing).
I already explained that at Oct 13, 2011 at 03:56 PM in this thread. If you still do not understand read foot note 12 in Diehr.
Tag fix.
(sigh) fix tags again please.
Actual Inventor,
Whether or not Ned “goes for this” may depend on a couple of factors:
1) whether Ned thinks or simply responds to the messenger.
2) what level of Supreme Court sanction Ned attributes to several “philosophies” of patent eligibility that were explicated in the dissent in Diehr – note, Ned has requested a showing in the majority opinion of Diehr, but neglects to realize that no such showing is required, as the actual “philosophies” were never Law to begin with, and thus there exists no need for such showing in a majority opinion to dispense with a non-law.
3) whether Ned sees this as a viable way of both integrating actual law with the FACT that claims can (and always have been able to) incorporate elements or steps involving human thought.
We can only see if Ned thinks and ponders on this, or reacts abruptly (keep in mind that several of Ned’s posts on this thread do break from the radical MM’s influence).
“The language of specifically reciting machines in patent claims is surely pretty well developed by now.”
Oh really? Care to provide an example?
“Besides, the fact that a claim literally covers subject matter which the patentee has no right to enjoin has always been a perfectly good reason to invalidate the claim.”
Except Diehr claims as a whole gives the patentee the right.
Hey AI’s Dear Diehrist! Glad to see you staying vigilant. Don’t think the likes of MM can even save the words Bilski 14, let alone deal with it’s law.
! ! ! Bilski 14 ! ! ! Baby!!!
Thank you for your (non)contribution to a resolution IANAE.
In your haste, you quite miss the point that the item being claimed is still what should be claimed. There is no real change to any such invalidating for claiming over what one has a right to do.
I offer a solution that merely removes the ridiculous “intepretations” that the hobgoblins of little minds seem to get stuck on.
If you too are stuck, well…