Justice Breyer: Giving Patent Law the Finger

In Mayo v. Prometheus, the Supreme Court is again addressing patentable subject matter. During oral arguments, Justice Breyer came-up with a hypothetical invention to help him draw the line on patentable subject matter.

JUSTICE BREYER: Suppose I discover that if … someone takes aspirin … for a headache and, you know, I see an amazing thing: if you look at a person’s little finger, and you notice the color [indicates that] you need a little more, unless it’s a different color, you need a little less. Now, I’ve discovered a law of nature and I may have spent millions on that. And I can’t patent that law of nature, but I say: I didn’t; I said apply it. I said: Look at his little finger.

MR. SHAPIRO: Sure.

JUSTICE BREYER: Okay? Is that a good patent or isn’t it?

MR. SHAPIRO: No … Well, because you — you’ve added to a law of nature [to] just a simple observation of the man’s little finger.

How would you respond to Justice Breyer’s idea with respect to 35 U.S.C. §101?

 

236 thoughts on “Justice Breyer: Giving Patent Law the Finger

  1. Do you really believe there is a difference ? If so, explain the difference and show an example of each. Or just be quiet.

  2. spent a lot of time discussing evolutionary biology with fundamentalists?

    So says the anti-patent fundamentalist of them all.

    (Just think of Diehr as evolution, and you catch the drift – and don’t even go near computers)

    I wonder, is not answwering “softball” questions a form of refusing to acknowledge certain facts?

  3. “But your complete refusal to acknowledge that the societal cost of offering patent protection is not zero makes your argument seem disingenuous.”

    At what point did I completely refuse to acknowledge a cost?

  4. So up until my Notarizing my Power of Atty. Making Him a real lawyer instead of an Agent… Is what the finger is all about. I am going to be suing Agents.. Just plain old People. People that disrespected the Law over and over. Causing me more pain than anyone would ever imagine.

  5. I seem to remember a certain rather vocal poster agreeing with the concept of not answering questions as cowardice.

    This same poster has not answered this question, even though he called it a softball question.

    What’s up with that?

  6. What’s missing from the conversation is the fact that blocking serves as an impetus to innovation.

    This anti-commons crrp is just that: crrp. Blocking is being looked at as a wall. When the less innovative walk up to the wall they stop and look confused. They say the wall is a “societal cost.” That is a feature, not a bug.

    You can pay the patentee to walk through his door or you can innovate around the wall. Patents are published for a reason. Even though they are still a wall, the countrous of the wall are given. Stop crying and get busy figuring out something else.

  7. I don’t doubt that patents encourage a certain amount of innovation, but your complete refusal to acknowledge that the societal cost of offering patent protection is not zero makes your argument seem disingenuous.

    austin, have you spent a lot of time discussing evolutionary biology with fundamentalists? If you have, you might notice something familiar about Les’s “complete refusal to acknowledge” certain facts. It’s a real problem around here.

  8. Just because patents on equations don’t exist currently doesn’t mean you couldn’t find some evidence, if it existed, to support the hypothesis that they would do what you say. You could look to other areas that have had coverage granted or revoked to look for similar effects. That being said, a few citations suggesting that “patenting everything” isn’t always good: 

    1. Andrews LB. Genes and patent policy: rethinking intellectual property rights. Nature Reviews: Genetics. 2002;3(October):3-8.
    2. Kesselheim AS, Mello MM. Medical-Process Patents — Monopolizing the Delivery of Health Care. New England Journal of Medicine. 2011;355(19):2036-2041.
    3. Carbone J, Gold ER, Sampat B, Chandrasekharan S, Knowles L, Angrist M, et al. DNA patents and diagnostics: not a pretty picture. Nature biotechnology; 28(8):784-91.
    4. Heller M a. Can Patents Deter Innovation? The Anticommons in Biomedical Research. Science. 1998 May 1 [cited 2011 Jul 20];280(5364):698-701.
    5. Cyranoski D. Arsenic patent keeps drug for rare cancer out of reach of many. Nature medicine. 2007 Sep;13(9):1005.

    If you’re going to take a look at any of them, [1] has a discussion with a nice list of cases where gene patents actually inhibited innovation and information sharing. Your “common sense” example also doesn’t really make sense. There a many reasons to expect that the reward of patent protection would be necessary to encourage the development of pharmaceuticals while it wouldn’t play as large a role in developing things like E=mc2. High on that list would be R&D costs, but there are certainly many ways to differentiate between the two. I don’t doubt that patents encourage a certain amount of innovation, but your complete refusal to acknowledge that the societal cost of offering patent protection is not zero makes your argument seem disingenuous.

  9. When an old process produces new information, is it repatentable? Now the answer clear is no, but why?

    Because processes are defined by their steps, not by the result of the process.

  10. Well.. I referred to a race not to be blocked because I you seemed particularly concerned with being blocked. I really think the promotion of progress comes from the encouragement to disclose rather than hold as trade secret. But to that you would say, but scientists publish now without patents. To that I would say, but that system relies on subsidies from a grant providing system that is inefficient because the unsuccessful get far more grants than do those that actually find the answer.

    I can’t give you evidence of patents encouraging the discovery of formula because as it stands, you cant get a patent for a formula.

    All I can offer you is common sense. If patents bring you Lipitor and Crestor, why wouldn’t the same forces bring you the next E=mCC.

  11. “All the more reason that the guys with the shoulders a bit lower on the pyramid should be able to charge a royalty.”

    I wasn’t disagreeing with that statement, but your previous logic is inconsistent with that line of reasoning. If, as in your previous statement, the motivating force of a patent system is so that you work faster so that you don’t get blocked, then you’re saying that a major function of the patent system is to block other people from working on various problems. This seems contrary to the entire purpose of the system: encouraging disclosure and innovation globally. Encouraging everybody gobble up every bit of IP to prevent themselves from getting blocked and in the process blocking everyone else is not an efficient way to promote innovation in today’s scientific climate.

    “That’s just throwing out the baby with the bath water….usually not a good idea.”

    I’m not throwing out the baby with the bath water. I agree that a patent system is good. I’m saying that it should also be robust in practice.

    Regardless, you keep ignoring my requests to provide any actual evidence that supports your views on such widely applied patent protection.

  12. “Every new discovery that comes out stands on the shoulders of dozens of previous innovations.”

    All the more reason that the guys with the shoulders a bit lower on the pyramid should be able to charge a royalty. Otherwise the the system occasionally spits out a hero or three, with the rest of the guys not getting so much as a thank you during the speech from Oslo.

    “Lots of non-novel, obvious stuff gets through the USPTO, and some of those claims cause a lot of problems. As a practical matter, it makes sense to make some categories of innovation ineligible.”

    That’s just throwing out the baby with the bath water….usually not a good idea.

  13. Talk, good take there. Presumptively patent eligible is more apt.

    I put processes in the same category as a machine.

    But, what is a process? That is the question. Clearly a process is more than an idea, or a series of mental steps, or a sequence of physical acts that does nothing useful.

    When an old process produces new information, is it repatentable? Now the answer clear is no, but why?

  14. A machine that is useful (as opposed to a process which actually has to state its utility) is patentable per se. Why? It is among the listed categroies.

    Nothing could be further from the truth.

    One – there is no such thing as anything being patentable per se. Not even machines (think time travel machine, think perpetual motion machine).

    Two – The listed categories includes Process. Your particular selective treatment is disingenuous.

    Get out of the weeds Ned.

  15. I understand the theory behind why you’d want to offer protection. My request is for evidence that it’s actually true, especially in these extreme cases you’re pushing protection to. Again, what evidence exists that offering protection to things such as equations acts to promote innovation globally? Patent protection is not the sole motivating factor driving people to innovate, and it is not a system without costs.

    “Advancement is encouraged because no one wants to be blocked from using the next great formula so everyone works very hard to be the first to find the next block buster formula and because formula are disclosed instead of being held as trade secretes.”

    If that’s your line of reasoning, I don’t find it to be a very good one. With the state of science today, nobody is operating in a vacuum. Every new discovery that comes out stands on the shoulders of dozens of previous innovations. If your motivation to discover the next new thing is that you “won’t be blocked from using it”, then you’ve already failed, as most of your prior art will already be “blocked”. Discovering the next new thing becomes exponentially more expensive since you have to license all of the prior art before you even start trying to invent.

    Even if I could be convinced that extending protection to cover “everything under the sun” would be beneficial in theory, there’s also the reality of the USPTO. Lots of non-novel, obvious stuff gets through the USPTO, and some of those claims cause a lot of problems. As a practical matter, it makes sense to make some categories of innovation ineligible.

  16. SteveW: “Your proposed claim is not even a “purely mental process”,

    Exactly, this is both the fallacy and lunacy of Malcolm’s argument.

  17. Agree in principle. However, the list is what Congress and the courts deemed within the UA.

    A machine that is useful (as opposed to a process which actually has to state its utility) is patentable per se. Why? It is among the listed categories.

    A process does something useful. Until it does something useful, it is not a process at all.

  18. I draw the line with novelty and obviousness.

    x=yz is not patentable because its known. If we lived in a world where no one had multiplied two numbers before, where everything was done by repeated addition and you discovered the multiplication table, then you should, in my view, be able to get a patent for it. No one knew how to do it before. Granting the inventor 20 years of exclusivity in exchanged for telling the world about the multiplication tables does no harm. They weren’t able to use the tables before, because they didn’t know about them. Now they know about them and at least have the opportunity to pay for a license to use them or to plan to use them in 20 years when the technique is placed in the public domain. Alternatively, the discover keeps the info to herself, sets herself up as XYZ Accounting and makes a fortune in rapid record summarizing.

    Advancement is encouraged because no one wants to be blocked from using the next great formula so everyone works very hard to be the first to find the next block buster formula and because formula are disclosed instead of being held as trade secretes.

  19. Call me an anti-patent troll all you want, but it’s simply not true. If you can’t provide evidence that what you are asking for confers the benefit you say, then admit it, otherwise put up.

    It may surprise you, but I have very few problems with copyright law. There are exceptions for fair use, and the practicalities of the systems don’t compare well.

  20. IANAE You might consider actually reading Diamond v. Chakrabarty. Specifically, the very next sentence after the “anything under the sun” bit.

    “This is not to suggest that 101 has no limits or that it embraces every discovery.”

    I’m pretty sure that line is censored out of the Patent Txxbxgger’s Bible. Seriously, though, isn’t Ken Brooks supposed to be a registered attorney? That’s a pretty effin sad performance there.

  21. Steve o turn your question back to you – WHY do you think purely mental steps are not patentable?

    As I previously noted, Steve, Ned already provided one answer to that question: mental processes are the basic tools of scientific and technological work. Patenting mental processes does not “promote progress.” It promotes patenting. It promotes litigation. The grant of a patent requires that one’s conception be reduced to practice. That “practice” can not include merely thinking about the concept, and it doesn’t matter if the step of thinking is limited to a particular environment.

    Other answers include: the unconstitutional limitations on free speech (and free thought) that are implicated by the granting of such claims; the fact that the public (and most of their representatives, i.e., the ones who aren’t being paid off to shill for these so-called “diagnostic” companies) would be absolutely repulsed if you told them that corporations are filing patents that can be used to sue people who are engaging in otherwises legal acts that are turned into illegal acts because of the thoughts they are thinking.

    I merely disagree with you in that I think it’s wise to figure out where the truck is heading, and I think you are focused on the color of the paint.

    I could the same about you, of course. I’ve been watching this particular “truck” very, very closely for about fifteen years now. And I’ve been watching shills for the “personalized medicine” “industry” pretend that without claims such as those at issue in Prometheus we’ll all be worse off. Nothing could be further than the truth.

  22. Have to love the introduciton of “tragedy of the commons” into the conversation – coming from someone who has admitted a lack of working knowledge of patent law, all we have is anti-patent spouting.

    Tell me what you think of life plus 70 as a “strong protection” of merely expressing yourself.

  23. Ok, if we’re back to talking about what we *think* the law *should be*, why do you think that equations like E=mc2 should be eligible? And where do you draw the line? Of course it matters exactly how it is claims, but would any equation of the form E=mc2 be covered? How about x=yz? That’s a really simple equation. Does it matter what the variables mean? Does it matter if any of the variables are constants? Does it matter what the units are? Even if I did agree that patenting equations would be a good thing (which I don’t), I don’t see where you’d draw the line. Furthermore, what’s to prevent me from patenting all sorts of equations with no specific use? I could preempt the use of a lot of mathematics, even by using equations that may have never been explicitly published before.

    I’m not saying that equations are not useful, or that we don’t want to encourage people to develop them. That’s certainly not true, and I think we both agree on that. My problem is that I’ve seen absolutely no evidence that extending patent protection to such abstractions does anything to encourage their discovery, while there is evidence to the contrary. You seem so concerned with protecting the individual inventor without taking into consideration the global impact of such strong protections. I know the intro to every patent 101 starts with explaining the tragedy of the commons, but the tragedy of the anticommons has severe implications as well.

  24. Ken: “Ok let us try this again. 35 U.S.C. 101 places no limits on patentable subject matter. All one has to do is examine the legislative history and I belive either Diamond v. Diehr or Chakrabarty.

    You might consider actually reading Diamond v. Chakrabarty. Specifically, the very next sentence after the “anything under the sun” bit.

    “This is not to suggest that 101 has no limits or that it embraces every discovery.”

  25. Wether E=mCC passes the machine or transformation test is irrelevant (at least to the conversation I am having). I’m not arguing about what the law IS. I’m arguing about what the law Should Be. It is clear to me if you make a contribution like E=mCC you should be able to get a patent on it.

    In any event, I could draft a claim to E=mCC that passed the transformation leg of the test.

    A method for determining an energy equivalent of an object, the method comprising:
    establishing a variable having one of: and undefined value, an unknown value and an initialized value;
    determining a mass of the object;
    transforming the value of the variable from one of the undefined, unknown and initialized state to a state of representing the energy equivalent of the object by setting the value of the variable equal to the determined mass of the object multiplied by a square of a speed of light.

  26. In fact, calculations that are literally impossible for a human to perform are not treated any differently than the pencil and paper capable kind

    But they are. See the otherwise recent silly CAFC case on software that places a caveat on the “purely mental steps.” That caveat was “practical” (as in, i_diot savants do not get to play a role in determining patent eligibility).

  27. You didn’t answer the question,

    Another accusation by the one who accuses others of what he does.

    The laws according to MM:

    Thou Shalt Dissect.
    Thou Shalt Conflate.

    …and,

    Thou Shalt Not Answer Embarrassing Questions That Exhibit Limitations Of Your Legal Paradigms.

    Still waiting for your answer to:

    Why do you think claims including (but are not purely) mental processes are not barred?

  28. Steve, Agree.

    The discovery of a new property of old composition does not entitle one to reclaim the old composition, but only claim a new use of the old composition for the purpose of using the new property.

    Similarly the Discovery of a new property of an old process does not entitle one to claim the old process, but to claim a new use of the old process.

    These are self-evident propositions from the old school. The problem with the Prometheus claims is apparent when we consider the above self evident propositions.

    Sent from iPhone

  29. I truly understand what you are trying to say. However, “purely mental steps” in a patent claim is a concept that relies upon too many legal constructs to be meaningful. You are trying to derive what should be patentable from first principles, as if there is a patentability F=MA.

    Where statutory law clearly applies, SCOTUS will try to apply it. Where there is none, they will look to the purpose of the law (promote innovation? probably…) and the public benefit. They may not, of course, agree on what those things really are.

    Then, they will look to their precedents to see if their opinion about the patentability of it will write. If they have to extend or distinguish, so be it. There is plenty in almost any claim, including the Prometheus claims, to write it up saying that they are not directed to pure mental steps, if they choose to. There is also plenty in this area – and in many other areas that are not in any way controversial regarding 101 – to say that these claims are directed to pure mental steps.

    They are NOT going into this case wringing their hands about whether these claims are purely mental steps. They will simply say (if they uphold the patents, which you already know my opinion about that) there is an administering step here, or that in determining the optimal dose one of skill in the art understands that it incorporates the use of those optimal doses, or… (I’ve supplied two – we could make a game out of 100 ways to describe these claims as not directed to purely mental steps).

    To turn your question back to you – WHY do you think purely mental steps are not patentable? Beyond SCOTUS saying it, why specifically do you think SCOTUS say that? If you read Benson literally, any calculation capable of being done with pencil and paper is not patentable, even though this is clearly not the case (at least useful operations affected by such calculations, even where the operations absent the calculations may not be patentable).

    In fact, calculations that are literally impossible for a human to perform are not treated any differently than the pencil and paper capable kind. If you try to claim calculations, per se, that are impossible for a human to perform mentally or on paper, it will nevertheless fail under 101 even though it seems like it could fit under Benson.

    I merely disagree with you in that I think it’s wise to figure out where the truck is heading, and I think you are focused on the color of the paint. I’m signing off on this thread and leaving any last word to you, I’m sure we’ll get the chance to talk about this again. Cheers

  30. SteveW Whether it is a purely mental process is a label that is applied after you determine whether it is patentable.

    No, Steve, a purely mental process is a process comprised only of mental steps. Shall I write an example of a purely mental process in claim form? Let me know if you need to see an example of such a claim and I’ll write it out for you. Honestly, I don’t think you’re as dense as you seem to be at the moment. I do think that you are confused, perhaps because you have been drinking the kool-aid for a long time and haven’t thought about the issues very deeply.

    I did answer your question, but it is your question, not mine and it remains irrelevant.

    You didn’t answer the question, Steve. Ned did. The question was: why do you think claims to purely mental processes are barred? Ned answered the question … or at least he provided a Supreme Court case (one of many many cases that have unquestionably supported the barring of purely mental process claims) which included a terse explanation for the prohibition.

    The question is relevant to Prometheus’ claims, of course, because Prometheus’ claims are effectively claims to mental processes, at least as far as practitioners of the prior art steps recited in Prometheus’ claims are concerned. The day before the patent issues, those practitioners are free (under the law) to practice those prior art steps and think whatever they want about the results of those steps. The day the patent issues and they read about it they become literal infringers when they think about the “new fact” disclosed in the patent. From their perspective, they were changed from innocent workers into lawbreakers because merely because they acquired knowledge. That’s exactly the result which the bar against claiming purely mental processes is intended to prevent. What is the rationale for allowing patentees to get around the bar against purely mental processes by merely reciting an old prior art step in addition to the “new” mental process?

    If you still can’t see the relevance of my question, Steve, or you can’t admit to seeing it, well … you’re not alone. You’ve got a lot of sockpuppets keepin you company. 😉

  31. austin: Those citations are definitely helpful. However, could you explain to me how Diehr is a more practical test than the preemption?

    No one knows the parameters in preemption. Not the Government that represents the PTO, or the Supreme Court Justices of the United States. Where as an “application” involves doing something which is a behavioral action that is observable, repeatable, and measurable and thus totally objective. For example if I invent a process that tells you to do:

    Step a,

    Step b,

    Step c.

    and you will always get d.

    That’s a statutory process and passes the (DCAT) Diehr Concept and Application test.

    That’s the simplicity, objectivity, and efficiency of DCAT and why it should be upheld as the controlling test and not ignored, forgotten or subjugated.

    Now it’s been a month or so since I last read Benson. ( I have had to read these 101 cases at least a thousand times each over the last 6-7 years because there are true anti patent types on this blog that will out right lie and/or twist the Courts words with their own opinions and try to pass it off as law.)

    So, IIRC, and Benson is saying math equations alone are not statutory subject matter, then that is a Court created judicial exception, which means a rule arbitrarily made up by judges and not in U.S.C. Title 35 of the patent statute.

    And in my opinion I disagree with the judges and feel math equations alone should be patentable but I understand and accept the law that says it is not.

    But virtually everything else Benson had to say about 101 has been limited by Diehr and should be read through the words of the Diehr case. So Benson alone is largely irrelevant.

  32. Ned,
    See my post above. MMs claim is not a “purely mental process” in the ordinary sense of the word, and neither is the claim at issue in Mayo v. Prometheus. Whether it is a purely mental process is a label that is applied after you determine whether it is patentable. Benson and Cybersource are both policy-based decisions. They throw the magic words around, but they are discussing policy, not philosophy on the meaning of “mental process.”

    Since the “purely mental process” argument is intended to divert attention from the real problem or matter at hand, it is a “red herring.” (credit to dictionary.com) Tell me whether the cookie claim or Prometheus are bad, and then you will know whether they are patentable.

  33. “… anything that should be patentable will be deemed to not be a ‘purely mental process’ and anything that should not be patentable will be deemed to be a ‘purely mental process.’ We could have the transitory signal dance as well, which is also further nonsense.”

    I did answer your question, but it is your question, not mine and it remains irrelevant. Your proposed claim is not even a “purely mental process”, proving how artificial the concept is anyway.

    Whatever magic words you think up to be the test of patentability, artful claim drafting will be devised so the claims don’t fall into the category of your magic words. Then, we’ll be back to figuring out whether a given technology should be patentable or should not be patentable.

    Next, you’ll ask me in exasperated tones why I refuse to tell you how many pink unicorns just left my living room.

    You are looking at this backwards. You are trying to figure out if it is [insert magic words here], and you think that will tell you if it is patentable. If you figure out whether it is patentable, then you will know whether it is [insert magic words here].

  34. Thanks for the actual reply (rather than just yelling louder that I don’t understand patent law). Yes, I’m a scientist/inventor in biomed/biotech.

    Those citations are definitely helpful. However, could you explain to me how Diehr is a more practical test than the preemption? It seems that whether or not an invention has practical applications is as subjective as whether or not an invention preempts the prior art and/or nature. What am I missing? Ostensibly, any invention could have some sort of practical to a specific industry or process.

    I find it a bit humorous that all of the citations you provided are consistent with what I’ve been saying while everyone else is yelling at me for being somehow anti-patent. Gottschalk v. Benson, in my reading, holds that an equation alone is not patentable under 101. I’ve never said that an invention that uses a mathematical formula should be ineligible for protection, which seems to be what Diehr says. Am I misinterpreting this?

  35. Hello austin:

    Are you saying you are a scientist but not an attorney? Are you an Actual Inventor? Because that is whom the patent system was established for.

    Glad to have your views on the blog. And I hope you enjoy your time here. There are so some attorneys here and a few Actual Inventors too that post here.

    Well the MOT is not a pretty good test, as you say. It is merely a clue at best to help determine if an invention is statutory subject matter. See (Bilski)

    So the MOT can’t “legally” be used to deny an inventor his or her patent. That’s a fact.

    Preemption is worse than the MOT because patents are supposed to preempt the practice of the invention. No one has an objective process for applying preemption so in effect it becomes dissection which is also not allowed. See (Diamond V Diehr.)

    The best test is the Diehr Concept and Application test ( DCAT) and is “legally” the controlling test for 101 statutory subject matter.

    The DCAT works exactly like the Court used it in Diehr.

    You take the claims as a whole, including the concept.

    Then analyze the claim to see if there is an application to a specific industrial and/or marketplace process.

    If the answer is yes you pass 101!

    Its worked well for 30 years.

    See the cite history as follows:

    “The application of an abstract idea to a “new and useful end” is the type of invention that the Supreme Court has described as de- serving of patent protection. Gottschalk v. Benson, 409 U.S. 63, 67 (1972)”

    ( Diehr) : It is now commonplace that an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection. See, e.g., Funk Bros. Seed <450 U.S. 188> Co. v. Kalo Co., 333 U.S. 127, 76 USPQ 280 (1948);Eibel Process Co. v. Minnesota & Ontario Paper Co., 261 U.S. 45 (1923); Cochrane v. Deener,94 U.S. 780 (1876); O’Reilly v. Morse,15 How. 62 (1853); andLe Roy v. Tatham, 14 How. 156 (1852).

    ( Bilski) Page 14 : Finally, in Diehr, the Court established a limitation on the principles articulated in Benson and Flook.

    (Research Corp): Indeed, this court notes that inven- tions with specific applications or improvements to technologies in the marketplace are not likely to be so abstract that they override the statutory language and framework of the Patent Act.

    (Ultramercial): Although abstract principles are not eligible for pat- ent protection, an application of an abstract idea may well be deserving of patent protection. See Diehr, 450 U.S. at 187 (“an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection”)

  36. Read the government brief.  You will find some interesting law there.  

    Sockpuppet, you are a flame throwing denier.  You speak as IF you were god.  You lecture us.  But, in truth, you have no idea what you are talking about.  Ever.

  37. Continuing with the analogy, would it make you feel better if I admitted we were in an English-speaking country? Because I readily admit that. I also wasn’t trying to imply what you apparently think I was by putting “constraint” in parentheses. I know firsthand that it can be easy to lose track of the big picture when you’re too close to the problem. It seems that most people here are soo concerned with protecting the individual inventor that they neglect the impact on society as a whole.

    Stepping back from the shouting match, I’m really curious: what evidence do you have that shows that granting equal patent protection to everything encourages innovation globally? I personally have never seen any evidence to suggest that offering patent protection to things like mathematical equations or genes (without specific applications) does anything to promote innovation. I have seen plenty of evidence to the contrary, and gave one (albeit brief) such citation earlier.

  38. I understand that it is a test, but that it isn’t definitive. However, it seems to me to be a pretty good test. From the outside, it doesn’t really look like there is any universally applied test to determine patent eligible material, hence a lot of these debates. Do you have any reading you could suggests that would get me up-to-date on the state of the field right now?

    The test of whether or not a claim preempts the practice of the prior art (or nature) seems to me to be good in theory, but extremely difficult to apply in a consistent manner.

  39. austin,

    Aside from the rantings of some peculiar posters here, do you understand that Machine or Transformation is not the test, nor a requirement for patent eligibility?

  40. how about a more accurate one

    You are too full of yourself and your “first principle” position.

    You say in one breathe that you are not denigrating lawyers, and in the next you jibe with “constraint” – obviously not understanding how the “constraints” of a legal system actually work.

    This then is compounded by your twist of my analogy with an English speaker with native German speaker and you assuming the role of the native German speaker. Sorry – you have the roles reversed. You keep on forgetting that most patent lawyers understand TWO worlds whereas you understand only the one.

    I am one of those that understnad both with my eleven years in the truly technical world before my seven years of being in the truly legal world. You are the one yelling louder in French and thinking that such makes your point.

    It does not.

  41. I’m not denigrating what lawyers do. I respect that there is definitely utility to having a patent system, and that the system couldn’t exist without lawyers. I’m denigrating the position that absolutely everything should be patentable, and the repeated unevidenced claims that a strong patent system always promotes innovation.

    Because I don’t have the benefit (or constraint?) of knowing the outcomes of a century’s worth of patent law decisions, my approach to many of the issues tends to be from first principles. That is, the purpose of a patent system is to encourage innovation and the dissemination of knowledge by offering certain protections to inventors. From that perspective, offering patent protection to absolutely everything doesn’t really make sense. There’s no evidence to back up the claim that patenting everything always encourages innovation, but there is growing evidence to the contrary.

    If you really want to go with your analogy, how about a more accurate one. It’s like you, as a native English speaker, having a discussion in German with a native German speaker. When he corrects your grammar and tries to explain the language to you a bit, you tell him he’s wrong and that you know the right way to speak German.

    I’m not trying to tell you how I think the patent system does work. I’ve been trying to tell you why some aspects of how it has been working don’t really make sense from a scientific point of view and that there are reasons to question the assertion that offering strong IP protections to everything under the sun may be not be working to meet the ultimate goal of any patent system.

  42. He’s always there.
    I was called up to the Hill to show a couple how an old Slot Machine worked.It was broken. Never could got it to work. But I did not know it was illegal to have a WORKING Slot Machine. So you see I know now for sure I was being set up! But He was there making sure it still would not work. Sometimes I just didn’t realize just how much he has been there. So you see who I am doesn’t matter because He loves me no matter who I am. So if it doesn’t matter to him why should it matter to me?
    Here I am born again. But this time it will really mean something to me. I will never again think in my darkest hour that He was not there. Ha was always there.

  43. To me, it’s that the example of the formula alone doesn’t seem to pass the machine or transformation test, whereas the specific applications of the formula would, in my mind, pass that test. Could you explain to me why you think that an equation such as E=mc2 would, on its own and without a specified application, pass that test? And if it does pass that test, is there anything that wouldn’t pass that test?

  44. Ned it is not an exhaustive list. You should read Federico’s commentary on the 1952 Act. Section 101 merely provides examples of that which is patentable. What SCOTUS needs to do now is define the requisite utility for patent applications. I have been saying this since 1992. Look a microprocessor has absolutely no inherent utility. Can we all agree on this? It has utility only and until it is coupled to a system, provided power and . . . don’t forget, ahve a program included therein to facilitate it doing something utilitarian; yet, you can get a claim to a microprocessor without all the other feature that allow it to work being recited therein. Why is that? Because it is implied that mental steps will be undertaken by the person of ordinary skill in the art to give an otherwise meaningless result of countless semiconductors processes utility. What is that utility? Once we understand this, we can understand the extent that mental processes can be applied to provide the requisite utility.

  45. you really, really, really believe that mental steps are process steps?

    This is one of the more absurd Nedisms I have seen.

    No matter what the definition of the word “is” is, the word “is” is still the word “is.”

    Do mental steps somehow occur above, below, outside, infused within other steps? Are they “magic?”

  46. Surely things of the mind, mental steps of any character, cannot be the stuff of patents.

    And yet, we fully embrace the hope, love and “extascy” of mental steps within a patent.

    Go figure.

  47. Ken, you cannot be serious. It defines patentable subject matter as machnes, articles, processes and composition. Process are defined to include art, and using machines, etc. Obviously they include as well, processes of making machines, articles and compositions.

    So your statement that anything is patentable is just a bit broad.

    Take for example, hope. Can you patent that?

    Can you patent the love a child?

    Can you patent extascy?

    Can you patent delusions?

    And so on and so on.

    Surely things of the mind, mental steps of any character, cannot be the stuff of patents.

  48. 6, thanks.  I got you thinking.
     
    The anwser is not self evident, is it? 
     
    However I think the reason is simply this:  hedging is an entirely mental concept, just as is price, value, beauty, ugliness, etc.   They exist in our minds.  They can be represented by numbers, but numbers too are mental concepts.   Abstract.
     
    So, when one hedges he reduces risk.  The way it is done is described in claim 1.  The process is mental.  That is why it is abstract.

  49. JUSTICE BREYER: Ah. Now, we’re into the problem. And that is the problem of how much you have to add.

    JUSTICE BREYER: If you look at the Court’s cases, they seem to say Flook, one thing, and Diehr another thing.

    AI: Yes

    JUSTICE BREYER: And so what is your view about how much has to be added to make it an application of a law of nature? And how would you put that in words?

    AI : First, I would like to say I agree with “GENERAL VERRILLI: “If one says that it’s nonpatentable because all you are doing is patenting the application of a law of nature, you’re invalidating all those process patents.”

    Second, according to the statute and this Courts precedent in Diehr all it needs to be is a step that is more than a silent, unexpressed thought. Otherwise we end up back at the MOT as the exclusive test which this Court struck down in Bilski and Mayo was in effect suggesting when you ask the same question of him.

    So one such possible step could begin with the word “informing”.

    Anything more and we end up down the slippery slope of preemption that is really the dissection of claims which this Court has said cannot be done to deny or declare an invention no patentable.

  50. “I don’t recall that Bilski held that vice in the claim was the way it was claimed. I think they held that hedging or rather a method of hedging was abstract.”

    Good for you, because that is what they said and it is what I said.

    That said, the “vice” is always somewhat in “the way it is claimed”. You could always choose conciously to not claim an abstract idea. They choose to. Their bad. One could always choose conciously not to preempt the entirety or nearly the entirety of a given abstract idea. They choose to. Their bad.

    “My real question is that assuming this, why was hedging deemed to be abstract?”

    Because hedging, as a concept, is abstract in its nature Ned. I’ve already explained to you that I’m a fundamentalist, I do not deem it necessary to give “reasons” why a thing, for instance hedging, is abstract, it is abstract because that is its fundamental nature. One simply observes what hedging is and either finds abstractness there or not, one does not find “reasons” that it is abstract and then conclude that it is abstract. Although one could in at least some situations if one were so inclined. The USSC is not so inclined and neither am I.

    It is the same way one does not observe a table and conclude it is abstract. One observes a table and concludes it is not abstract. One “observes” hedging in the mind’s eye so to speak and notes that it is abstract.

    To help you understand, the determination is made in much in the same way one does not have to find “reasons” that a thorn bush is “prickly” for a thorn bush to be prickly. It is not prickly only because you found reasons that suggest to you that it is prickly, it is prickly by its nature. If you were wholly ignorant of the plant and yet touched it you would still find yourself pricked regardless of whether or not you knew anything about it.

    Now you might say “well, I dissent” I think it is prickly only because I found reasons that it is prickly! And that is fine. That is your view.

    However, a fundamentalist simply observes the qualities of the plant and notes the characteristics of the plant in relation to the world around it, including animals and people, and perhaps goes so far as to consider what would happen should an animal or human touch the plant. Prickliness, or not, will emerge as a fundamental quality of the plant. In an analogous way, abstractness, or not, will emerge as a fundamental characteristic. That is my view which is shared by the USSC.

    Either way is fine, but my way, the way the USSC uses, is infinitely quicker and less work in the 101 analysis. That said, even I myself might deem to give “reasons” something was abstract if I thought it to be persuasive to the person to whom I was conversing.

    Admittedly it is a rough analogy, but I think you might somewhat get the idea from it.

    What may be of further use to you is to read a modern translation of the ancient philosophers and their thoughts on “reality”, “on being” and the qualities of each. Without a solid foundation such as this you may find yourself want to ever understand the concept for your day job.

  51. “I don’t recall that Bilski held that vice in the claim was the way it was claimed. I think they held that hedging or rather a method of hedging was abstract.”

    Good for you, because that is what they said and it is what I said.

    That said, the “vice” is always somewhat in “the way it is claimed”. You could always choose conciously to not claim an abstract idea. They choose to. Their bad. One could always choose conciously not to preempt the entirety or nearly the entirety of a given abstract idea. They choose to. Their bad.

    “My real question is that assuming this, why was hedging deemed to be abstract?”

    Because hedging, as a concept, is abstract in its nature Ned. I’ve already explained to you that I’m a fundamentalist, I do not deem it necessary to give “reasons” why a thing, for instance hedging, is abstract, it is abstract because that is its fundamental nature. One simply observes what hedging is and either finds abstractness there or not, one does not find “reasons” that it is abstract and then conclude that it is abstract. Although one could in at least some situations if one were so inclined. The USSC is not so inclined and neither am I.

    It is the same way one does not observe a table and conclude it is abstract. One observes a table and concludes it is not abstract. One “observes” hedging in the mind’s eye so to speak and notes that it is abstract.

    To help you understand, the determination is made in much in the same way one does not have to find “reasons” that a thorn bush is “prickly” for a thorn bush to be prickly. It is not prickly only because you found reasons that suggest to you that it is prickly, it is prickly by its nature. If you were wholly ignorant of the plant and yet touched it you would still find yourself pricked regardless of whether or not you knew anything about it.

    Now you might say “well, I dissent” I think it is prickly only because I found reasons that it is prickly!1111eleventyone!!! And that is fine. That is your view.

    However, a fundamentalist simply observes the qualities of the plant and notes the characteristics of the plant in relation to the world around it, including animals and people, and perhaps goes so far as to consider what would happen should an animal or human touch the plant. Prickliness, or not, will emerge as a fundamental quality of the plant. In an analogous way, abstractness, or not, will emerge as a fundamental characteristic. That is my view which is shared by the USSC.

    Either way is fine, but my way, the way the USSC uses, is infinitely quicker and less work in the 101 analysis. That said, even I myself might deem to give “reasons” something was abstract if I thought it to be persuasive to the person to whom I was conversing.

    Admittedly it is a rough analogy, but I think you might somewhat get the idea from it.

    What may be of further use to you is to read a modern translation of the ancient philosophers and their thoughts on “reality”, “on being” and the qualities of each. Without a solid foundation such as this you may find yourself want to ever understand the concept for your day job.

  52. sockie: according to the fabled Ned logic, if Prometheus loses, there go all methods claims directed to medicine…

    MM: Completely false. Nice try with the scare tactics, though. Kevin Noonan would be proud of you.

    AI: So then it’s on the record you disagree with Neds logic. After all Ned Heller did spend better part a year so arguing:

    1. That since Bilski’s claims were labeled a so called business method….

    2. and those claims failed 101.

    3. Then all so called business methods fail 101.

    But of course Malcolm you still have a problem proving that any patent has ever prevented anyone from thinking. Thus your own whacko illogical theory fails just as miserably as Ned’s

  53. A Dufresne: You know you are using dissection. Why is this even a question?

    NH: Dissection, according to Diehr, involves ignoring the old elements of the claim. What we’re doing here, is ignoring the mental step(s).

    AI: Steps in a process are the elements of a claim and you know that Ned . You are inherently and terribly dishonest.

  54. Ok let us try this again. 35 U.S.C. 101 places no limits on patentable subject matter. All one has to do is examine the legislative history and I belive either Diamond v. Diehr or Chakrabarty. Patentable subject matter is found by a new, and sufficiently new (non-obvious) and useful idea. However, in order to be patentable a claim must be drafted that is sufficiently definite 35 U.S.C. 112, so that the metes and bounds of the patentable subject is defined. This requirement satsifies two requirements. First, and foremost, it satisfies due process notice. Congress cannot grant a monopoly unless the public is placed on Constitutionally acceptable notice of the monopoly. Secondly, it must be definite so that it satisfies the requirements of Title 35 United States Code.

    As I stated before, I are pretty sure that the rule against patenting a law of nature comes from an incorrect interpretation of a 1920s Commissioner’s Decision concerning a camshaft, for a Cadillac, I believe. The camshaft was shaped according to a mathematical equation.

  55. Nice comment, Ned. I don’t buy this concept of a “mental step employed to modify a physical step” that we’ve discussed before. But I certainly agree that Prometheus’ claims would fail that test as well. You also wrote:

    Laws of nature claimed as such would be examples of mental steps which would not define a process.

    And I would add that a fact claimed as a step of thinking about the fact, is for 101 purposes, no different than claiming the fact itself. Call it a law of nature or call it an abstraction. It doesn’t matter. As the government noted — ant this was completely uncontested by any of the parties or the Supreme Court — the addition of an old, prior art “transforming step” does not remedy the illegality of removing a process of merely thinking about the fact from the public domain (because the claim, if granted, precludes practitioners of the prior from thinking about the recited fact).

    One humorous aspect of the Prometheus oral argument (and this may be in their brief as well) is their strange position that, even though their “invention” was the discovery of a biological fact (expressly admitted), their claim to a method of thinking about the fact did not “preempt” (shorthand for “monopolize”) the fact/natural law/whatever because, uh, … it might not really be a fact! And Mayo can get their own patent on claim to thinking about an improved fact, after they take a license from Prometheus of course and pay some damages for thinking about Prometheus’ fact. Or Mayo can spend another couple million litigating the “utility” issue, whic is probably really enablement, but that’ll only cost about a million dollars to figure out. But the important thing, Prometheus wants us to know, is that their claim really isn’t preventing Mayo or its employees from thinking about a new fact, even though Prometheus can’t stop anybody from practicing any of the other steps in their claim, just the additional step of thinking about that new fact. But the claim isn’t protecting the fact itself. Just thinking about the fact.

    What a bunch of greedy slimeballs. I’m hoping somebody on the Supreme Court or one of their clerks has a functioning brain and can put two and two together. Prometheus’ claim (and claims like it) can be tanked on very narrow grounds which will have little effect on progress in medicine or any other art. Or, as you suggest Ned, the Supremes could just kick it back down to the USPTO to invalidate as anticipated (by ignoring the mental step), case closed.

  56. Now that’s some refreshing and crisp legal thinking there Malcolm.

    You have really outdone yourself.

  57. holding in Diamond v. Diehr, where the point of novelty in the claim was a mathematical algorithm,

    Diehr…. point of novelty….

    HELLO McFly

  58. So what do we have? We have in the statutes a declaration that machines, articles, compositions and methods of making and using these are statutory. The difficulty always comes when one begins the claim beyond the statutory authorization.

    Who can point out the easy flaw in the flow of logic to this point?

  59. Ken, section 101 does say that machines, processes, articles of manufacture, and compositions of matter are patentable subject matter. Three of these are clearly physical things. In addition, a process is defined in section 100 : “process” means process, art or method, and includes a new use of a known process, machine, manufacture, composition of matter, or material. Not stated but implied is that “process” also includes the process of making a machine, article of manufacture and composition of matter.

    So what do we have? We have in the statutes a declaration that machines, articles, compositions and methods of making and using these are statutory. The difficulty always comes when one begins the claim beyond the statutory authorization.

    For example, are mental steps process steps? The government brief in Prometheus makes clear that they are not. Thus if a claim consists wholly of mental steps, it does not describe a statutory process.

    Other difficulties occur when, for example as in the Prometheus case, mental steps are added to an otherwise physical process. Should this be treated under 101 are under 102? The government prefers 102, and I see no vice in that.

    Then we get to the difficult issue of whether the operation of machine can be claimed as a machine or whether it can be claimed as a new process. Is this a section 101 issue, or is this a section 112 issue. It could be both, but I would prefer section 112. (In case you do not understand what I’m talking about, the operation machine typically is claimed as a programmed computer today, where the computer itself is old but it is programmed to do something new.)

    In all of this, there lurks the issue of substantial utility. New machines, articles of manufacture, compositions of matter and processes typically have substantial utility. But not in all cases. A machine which does nothing useful does not have substantial utility even though it is machine. This clearly is an issue of section 101.

    So we get to substantial utility in the context of the process claim. Inviting body punches in another thread argued forcefully that the real problem with the Prometheus claims is that they did not have a substantial utility actually claimed, albeit the information was useful. This is the clue, I believe. If you compare Benson Flook and Diehr, it appears that the only difference between patent eligibility, and patent ineligibility was whether the output of the “mental step” was put to (a physical) use in the claim.

    Circling back to laws of nature and things found in nature.

    1) Laws of nature claimed as such would be examples of mental steps which would not define a process.

    2) Things of nature are old, even though that we may discover them. They truly are in the public domain.

    Now we come to abstract ideas, finally. What are these? The Supreme Court in Benson listed abstract ideas in the same sentence as separate categories of patent ineligible subject matter. However, in truth, the way the Supreme Court applies the abstract subject matter test demonstrates that it is really applying a mental steps test. Thus when the claim presents an otherwise patentable process consisting of physical steps that have substantial utility, and the novel subject matter in the claim consists of mental steps, the question of patentability (as opposed patent eligibility) is whether, as in Diehr, the mental step is employed to modify a physical step in a functional way to produce something physically new. If it does not, it is not patentable, and makes no difference to me whether the determination is made under section 101 or under section 102.

    The government brief seems to prefer 102. But this position seems at substantial war with the holding in Diamond v. Diehr, where the point of novelty in the claim was a mathematical algorithm, which is a species of mental steps.

    Do you agree?

  60. les,

    That is because (and no offense intended) austin is not approaching the issue as a legal issue.

    It is not that you need to be a lawyer to understand law, it is that you cannot denigrate what lawyers do just because you don’t understand that lawyers do what they do because you are dealing with law.

    He is falling to the fallacy that a technical understanding gives him the superior edge, forgetting that most people (not all) that are in this field not only have the legal understanding but also have the technical understanding.

    It’s like having a discussion in German who only knows but a few phrases and whose native tongue is French. When the discussion gets heated, the limited person (lingual) thinks that yelling louder in French will make the point more clear and carry the discussion.

    There are times when all you can do is to recognize that the best you will reach is an agreement to disagree and point the person to a German class for him to better understand the actual conversation.

  61. Other than pointing out that you dont think e=mcc should be patentable, you havent explained why….the industry advancing activity is the discovery of the formula….once you have that….the duck taping of a flux capacitor to a Delorien is so trivial it can be done in a barn….

  62. I don't recall that Bilski held that vice in the claim was the way it was claimed. I think they held that hedging or rather a method of hedging was abstract.

    My real question is that assuming this, why was hedging deemed to be abstract?

    Sent from iPhone

  63. Hi Ned:

    I am not sure why you think I am on your side in this exchange. I am just enjoying watching Malcolm get intellectually B slapped up by SteveW.

    Don’t you just think its a hoot the way MM wraps himself up in red herring fallacies and endless repeats the same irrelavant question, as soon as the weakness of his theory is exposed?

    It’s like watching a marathon of the Three Sto ooges featuring all scenes with Curly! Yuk Yuk Yuk

  64. D_amn sure my answer is clear as crystal to anyone who doesn’t have his/head up his/her axx.

    D_amm sure whether or not your “answer” was “clear” was not the point – your “answer” was not an answer to the question asked.

  65. D_amm sure that’s not an answer to Completely Related’s question.

    D_amn sure my answer is clear as crystal to anyone who doesn’t have his/head up his/her axx.

  66. Pretty sure you are a fxxckin clxxlxx mxrxn just trxxllin here.

    D_amm sure that’s not an answer to Completely Related’s question.

    You do like to avoid actually answering questions, don’t you MM?

  67. As I noted in my above comment, sockie: the question is impossible to answer directly because your premise is false and/or the question is not being clearly asked

    That’s strikes two and three, MM.

    First strike is your non-answer at 1:53 PM.

    Second, as plainly can be seen in the black and white of that 1:53 PM response, you never indicated that my question was impossible to answer directly (in fact, you imply the opposite by thanking me for the “softball” – unless it’s opposite day, “softball” just does not equate to “impossible to answer directly”).

    Third, I am not sure why you may think the question is not clearly asked (again, the reference – your reference – to my question being a “softball” belies your current non-answer at 8:19 PM).

    So, let’s see you actually answer the question I did ask (and yes, this has been directly before the courts).

    Let’s hope you can help yourself.

    -and by the way, your rendition of Diehr is missing an important holding, one that you are surely familiar with (and one that destroys your little attempt at introducing dissection back into the legal arena).

  68. I think you have a penchant for bringing up irrelevant things. The method was listing of the physical steps necessarily needed to perform a specific “method of hedging” in the abstract. Limited perhaps by a certain industry (I don’t recall), but still, the claim intended to preempt a method of hedging risk in the abstract by claiming it the way they did. That’s it, the end of the “reasons” it “was” abstract. That is all of the analysis. The analysis is complete.

    As to the 4th claim in Bilski I think they enunciated the reasoning sufficiently in decision. It had to do with further limiting the claim by specifying the various portions of the abstract hedging process where analyzed in an abstract Monte Carlo simulation. Further limiting a claim currently preempting an abstract idea with other abstractions isn’t likely to get you out of the woods so to speak. It just further complicates the abstract idea that is an issue. For instance, instead of preempting simply a method of hedging, they are preempting a method of hedging and analyzing the hedging, which is no less abstract than the hedging itself. As a matter of fact, the evil attorney in Mayo noted this, correctly, I do believe, in his oral arg. Although he stated it in a rather bad way.

    You’re roughly on the right track I think Ned, but you try (seemingly force yourself) to get bogged down in “information” and “mental steps” far too often. I don’t know why you do this. F info and F mental steps. They are species of a broader genus exclusion, do not needlessly restrict yourself to the tiny species when performing an analysis. Apply the rule against fords instead of just the prohibition against F150’s so to speak. Not every abstract idea must only be pure information or a mental step. Bilski has little to nothing to do with “information” and even less to do with “mental steps”. Which is why the supremes didn’t mention anything about that in the decision.

  69. sockie Pretty sure that “fabled Ned’s logic” is the application of a single example to rule an entire class (or category) of method claims.

    Pretty sure you are a fxxckin clxxlxx mxrxn just trxxllin here.

  70. mental processes are not patentable, as they are the basic tools of scientific and technological work

    Thanks, Ned.

    Of course, that’s just one reason that mental processes are not eligible for patenting. It’s a good one, but there are others. If you find someone on the street and tell them that it’s possible to be sued for drinking coffee (old transforming step) and thinking a “new thought”, you’ll discover there are other reasons.

  71. sockie Why do you think claims including but are not purely mental processes are not barred?

    As I noted in my above comment, sockie: the question is impossible to answer directly because your premise is false and/or the question is not being clearly asked. You might as well ask me when I stopped beating my horse (I’ve never owned one).

    It’s certainly the case that after Bilski (at least) it is perfectly legal for a court to “bar” patenting of a claim that recites a mental step and a non-mental step. Wasn’t Bilski’s claim such a claim, after all? Even if not, the Supreme Court in Bilski made it perfectly clear that the option is theoretically available.

    Let me answer the question that I think you are trying to ask, which is: why do you think that some claims that include mental steps and non-mental steps are not “barred.”

    The answer to that question gets back to the holding in Diehr, a case you are surely familiar with (if not, see the summary in my previous comment). The mere presence in a claim of a step that would be patent-ineligible if recited alone is not sufficient to render the entire claim ineligible. For example, a claim reciting [new transformative step(s)]+[new mental step] or a claim reciting [new transformative step(s)]+[old mental step] does not raise any obvious eligibility issues (some may disagree with this). Of critical importance: those who are obviously and admittedly practicing only transforming steps in the prior art do not have to worry about being dragged into court for THINKING about something new.

    I hope that helps.

  72. Might research cost be somewhat correlated with non-obviousness?

    It certainly does, at least if you’re the most patent-lovin judge on the Federal Circuit. Judge Newman infamously relied on the money spent by the patentee to find the patentee’s isolated enantiomer non-obvious in Sanofi-Synthelabo v. Apotex (Fed. Cir. 2008). Sanofi stands for the proposition that if you disclose a compound that you aren’t actually in possession of, spend a lot of money and waste time actually isolating it (even if you end up using an ancient, well-known method to do the isolation). Then rely on how much money and time you wasted to argue that it wasn’t obvious.

  73. 6, Bilksi:

    The Supremes did not clearly state why the hedging method of claim 1 was abstract, but I think the answer is the follwing, and I wonder if you agree.

    Like a mathematical algorithm that manipulates abstract concepts embodied in numbers, a hedging method manipulates abstract concepts involving risk. The risk factors can be expressed mathematically, and it was in Bilski claim 4.

    The manipulation of abstract concepts such as numbers can be performed in a machine that deals in numbers, but they also can be performed mentally. Regardless of this point, Bilski did not require the abstract concept be performed on a machine.

    So, in the end, while there were quasi-physical steps recited (placing contracts), they were, what, insubstantial? They provided inputs to a mental assessment of risk, and the process was terminated when risk was balanced.

    This is all very similar to Diehr, except that the process there was terminated when measured pressure, temperature and time were right. The numbers, while abstract, represented real physical phenomena. Risk does not. And, neither does the result of a calculation in Benson. The answer does not represent anything physical. Just an abstraction.

    In a sense, therefor, Bilski was an example of the abstract idea exception known as the mental steps exception. The process could be performed entirely by humans where the balancing was taking place entirely in the mind of a human being.

    Once it became clear that Bilski was claiming a mental process, I don’t know why anyone needed to go to the next step and determine whether the claims preempted the concept. They did, because claims preempt what they claim. If they claim a mental process, they preempt the mental process. Preemption is a red herring, at least in Bilski, and probably in Prometheus as well.

    What do you think?

  74. “Phenomena of nature, though just discovered, mental processes, and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work.” Benson link to scholar.google.com

    Followed,

    Cybersource, link to scholar.google.com

    “The Supreme Court has stated that “[p]henomena of nature, though just discovered, mental processes, and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work.” Gottschalk v. Benson, 409 U.S. 63, 67 (1972) (emphasis added). In Benson, the patent at issue claimed a method of programming a general-purpose computer to convert binary-coded decimal (“BCD”) numbers into pure binary through the use of a mathematical algorithm. Id. at 65. The Court focused in part on the mental character of the claimed process, stating:

    The conversion of BCD numerals to pure binary numerals can be done mentally . . . . The method sought to be patented varies the ordinary arithmetic steps a human would use by changing the order of the steps, changing the symbolism for writing the multiplier used in some steps, and by taking subtotals after each successive operation. The mathematical procedures can be carried out in existing computers long in use, no new machinery being necessary. And, as noted, they can also be performed without a computer.
    Id. at 67. Thus, in finding that the process in Benson was not patent-eligible, the Supreme Court appeared to endorse the view that methods which can be performed mentally, or which are the equivalent of human mental work, are unpatentable abstract ideas—the “basic tools of scientific and technological work” that are open to all. Id.”

  75. Steve, you’re melting down. I would advise reading your comments carefully pressing the “post” button.

    Why should I be on the hook to answer that question? I have not proposed that purely mental processes are barred, nor is it relevant.

    You’re “on the hook”, Steve, because you refuse to answer the question, for some strange reason. We’re talking about claims which recite mental processes and which also effectively remove those mental steps from the public domain, at least from the perspective of those who are practicing the prior art. The question is certainly relevant. I’ve made all these points many times before.

    Even if purely mental processes are barred

    Excuse me … “if”? The bar against eligibility of purely mental processes is not disputed by anyone, Steve. At least, not anyone that I’m aware of. Certainly nobody on the Supreme Court and nobody on the Federal Circuit, nor in the USPTO, (nor any judge in any district court that I’m aware of, anyway). Neither of the parties in Prometheus v. Mayo dispute it. I assume you don’t either. Please confirm that you don’t dispute that purely mental processes are barred from patent eligibility. And then please let me know why you believe that bar exists.

    I understand why you choose not to address these fundamental issues squarely, Steve. But do it anyway. Surprise me.

  76. WARNING! Surgeon General Warning: If you should click that link your mind may very well melt and ooze on out of your ears if it plays on 720p.

  77. No, I think E=mc2 is, in itself, abstract. It’s a mathematical construct that is modeling a piece of how we think the world works. It isn’t really an invention or a new thing. That doesn’t mean that it couldn’t spawn inventions of its own. Did you figure out a way to use E=mc2 to travel faster than light? Awesome, you don’t need to work another day in your life. Did you figure out a way to use it to build a bomb? There may be some national security issues, but I think that’s perfectly patentable. I don’t think the equation itself meets that bar though. It also isn’t realistic to make infringers out of every other person that toys around with that formula, or uses it in their own work.

    I think the same thing works with your anti-gravity example. Did you re-arrange a few equations to come up with something that suggests you can defy gravity? Awesome, but I don’t feel that in itself is patentable. Did you come up with an actual anti-gravity device? Sweet. Go cash in.

  78. …But in most cases, you wouldn’t be “prevented”. You would only have to pay a reasonable royalty for standing on the shoulders of the guy who got the first few words, and on the shoulders of the guy that got a whole sentence…..

    Even if E=mCC is abstract (which I would dispute), why does that disqualify it.

    Buy the way, i think you don’t mean abstract. I think you mean broad. A patent to E=mCC would be broad. It would cover a lot of stuff. Arguably, others would have to pay a royalty to do a lot of different things. In this case, the breadth is commensurate with the contribution to society. If you invent a new toothbrush, thanks, you get a patent to that toothbrush. If you figure out the equation that gives us anti-gravity, from which we can revolutionize transportation and oh by the way, time travel….well you get to collect royalties for that… thanks a lot….here’s your spot on the beach….the babe with the coconut drinks will be by in just a minute Sir.

  79. In that case I’ll allow. If it’s cr@p, someone else can fix it in litigation. You mind if I cycle you through an RCE first?

  80. “As I’ve noted before, the problem with the “pre-emption” test is that it requires one to first identify the thing that is being pre-empted and without any clear, objective way of doing that, you end up with arbitrary results.”

    I wouldn’t call invalidation of a given claim “arbitrary”. Especially in the situation where it was preempting a judicial exception. Nor would I call the proper application of the test to all claims ever issued “arbitrary”. I fail to see what you believe is arbitrary about the preemption doctrine. Indeed, for all the indications that you understand it quite well, this one thing seems to indicate you do not understand it all that well.

    “Hence the ridiculous back and forth here about whether all uses of metabolite levels for optimizing auto-immune disease therapy were “pre-empted” or not.”

    That is true, but the back and forth is mostly due to people who do not understand the doctrine fully trying vainly to half-apply it.

    “With any luck, this will spell the end of the “pre-emption” doctrine, which was a stillborn doctrine anyway, as far as I was concerned.”

    Nah, it’ll stick around. It is in place just so attorneytards don’t try to avoid the judicial exceptions by the drafting art. Indeed, by doing things like adding on a step of pumping someone full of a drug onto an observed “correlation” and calling it an inventionlol. That problem, attorneytards trying ot draft a claim to capture a judicial exception with or without explicitly stating it, will still be around after this decision thus the doctrine will necessarily still be needed after this decision and thus they will not do away with it.

    The doctrine will be in place for as long as the judicial exceptions are in place because all it is is a natural extension thereof to ensure compliance by drafters. If they want to do away with the judicial exceptions then ok…

  81. “Why do you keep saying “why do you think claims to purely mental processes are barred?” Do you have a shortcut key that enters this phrase, and you keep accidentally hitting it?”

    LOL!

  82. For such a “softball”, your answer is incomprehensible.

    Try again.
    In English.
    With actual logic.

    And try to actually answer the question:

    Why do you think claims including but are not purely mental processes are not barred?

  83. See, I don’t see E=mc2 being the same as drugs, devices, or “actual diagnostic tests”. E=mc2 is completely abstract, and is a fundamental rule of nature: it’s just how things work, to our best approximation. Drugs and devices are a very specific ways to manipulate nature. I also tend to see a bit of a distinction between “discovered” and “invented”, though my understanding is that patent law does not make that discrimination. E=mc2 was discovered. It was true before it was discovered, the equation just tells us something about the world that is inherently true. Drugs are decidedly invented. Even if it is a compound that existed naturally, unless we had been naturally using it as a drug, that use would be novel, and would be an invented use.

    Another difference in my mind, especially concerning drugs, is practical utility. As a society, we want to have more and better treatment options, and without protection there is simply no way that a company is going to pour an average of >$1bn into a new drug it can’t recoup it’s costs from. The amount of effort that goes into an invention doesn’t currently have any impact on whether or not that invention is patentable, but maybe it wouldn’t be completely illogical if it did. Of course, there are a lot of valid objections to that idea and I understand that it probably isn’t very practical either.

    I think a lot of problems stem from the fact that science just doesn’t work in quite the same way it used to. Some fields evolve incredibly rapidly, and a 20-year monopoly seems to be just too much in some of those fields. Other have other huge problems associated with that timeline: e.g., pharmaceuticals, mainly that the clock starts ticking from the date of disclosure, which is often more than a decade before a drug actually hits the market.

    This analogy might fall completely on its face, but bear with me. Imagine for a minute that the complete works of Shakespeare weren’t written, but instead have existed forever in some language that is unreadable to all humans. One day, some clever chap figures out a tiny corner of it, and can now read a word or two. Does it make sense for him to have a complete license over those words? I’m not sure, maybe. He definitely should have license over his way of deciphering them. Not too long after, another guy comes up with a way to read an entire sentence. Great. But now he needs to make sure his sentence doesn’t contain any of the previously patented words. Before too long, somebody invents a way to read the entire manuscript. However, the problem now is that 1,000 different people own fragments of the work, which are individually not worth very much. In fact, there are so many patents that it isn’t entirely clear who owns what. Even more, nobody at all is allowed to use the entire thing, so we all miss out on the benefits of being able to see an entire Shakespearean play. To me, the inventions along the path were the methods for reading the encrypted works, not what the words themselves were.

    This is the same situation with a lot of biology. At some point, it may have made sense for specific genes to be eligible for patent. But now, allowing those patents just makes everything a mess and prevents us from using the human genome as a whole. I don’t see an excellent solution to this, but I can tell you that the current patent system, especially as it is applied to biochemistry/biotechnology, doesn’t make sense to me or most other scientists. I think it makes more sense, big-picture-wise, to limit patents to more concrete inventions: methodologies for gene sequencing, drugs that target a specific receptor, etc. The motivation to discover more about biology is already there in other ways: if you find a new gene, it’s a potential drug target, and you have the change to develop a new drug that nobody else could have.

    In theory, I have no problem with allowing patents on “nature” under 101, so long as the USPTO did an adequate job of ensuring a rather strict interpretation of non-obviousness under 102/103. At present, too much “obvious” stuff gets by, making the system a bxtch to work with.

  84. Why should I be on the hook to answer that question? I have not proposed that purely mental processes are barred, nor is it relevant. Even if purely mental processes are barred, that is a red herring, because anything that should be patentable will be deemed to not be a “purely mental process” and anything that should not be patentable will be deemed to be a “purely mental process.” We could have the transitory signal dance as well, which is also further nonsense.

    All of these concepts are efforts to pretend that patent law is a mathematical theory, derivable from some kind of first principles. That is nonsense. Patent law is a purely artificial construction, an attempt to provide a motivation for innovation, and the practical effect of the rules will always win out over the pretend Socratic syllogism. The nicknames for (un)patentable subject matter, such as “software”, “signals”, “mental processes”, etc. are just the ways that we write opinions to record a decision that was made for other reasons.

    So, to reiterate my first point, your crumbling cookie claim does not break patent law, but is rather ho-hum.

    Diagnostic methods directed to drug administrations that have narrow treating ranges that are unusually beneficial, where those treating ranges are difficult or expensive to determine, and accordingly where the public will benefit from their disclosure, will continue to be patentable. This is true even if Prometheus falls, whereupon it will be clear that the Supremes didn’t think this drug administration really met that public benefit role. The next diagnostic method that comes along, that really is a public benefit, will be distinguished on some fancy logic that someone like you will think is some new first principle of patent law that someone discovered written on the Akashic records.

  85. Everything bad you identified about allowing patenting of E=mCC can be said with regard to drugs, devices and “actual diagnostic tests” and everything good you said about those patents can be said with regard to E=mCC. I just don’t see what makes something OK to patent in your view and what makes something not OK to patent.

    When the Wright Bros. got their patent on wing warping, or wings that could be warped, their competitors cried fowl and said they were now blocked from making progress…The patent for lipitor may have made it more difficult to get to crestor too… I assure you, those patents don’t claim just a single chemical, but instead claims broad ranges of formulations…

  86. Why do you keep saying “why do you think claims to purely mental processes are barred?”

    Why do you refuse to answer the question, SteveW?

    Hint: the answer is not because “such claims are difficult to litigate.”

    Try again, Steve.

  87. Why do you think claims including but are not purely mental processes are not barred?

    Thanks for the softball, sockie!

    First, as you surely know, some claims in the form [transforming step]+[new thought] are in fact barred from patenting as a per se matter, at least according to the US government. Specifically, claims in the form [old step]+[new thought] are anticipated per se.

    Second, the reason a court has not yet held expressly that this specific form of claim I just identified is patent ineligible as a matter of law is that the issue has not yet been put squarely before the court. No case — not a Supreme Court case or a Federal Circuit case — has squarely addressed the issues I’ve been raising in these comment threads for the last couple years. That said, it’s only a matter of time. Prometheus’ claims can not be both eligible and patentable under 102/103 without effectively protecting thoughts themselves. The US government knows it. Surely the USPTO knows it.

    I’ve seen other commenters here (always sockpuppets, curiously enough) like you who simply can not get it through their incredibly thick skulls that the Supreme Court’s holding with respect to mental processes was actually very narrow. The correct holding is that the mere presence in a claim of a mental step is not enough to render the claim ineligible. That holding is a far cry from the strange beliefs of the sockpuppet/txxbxgger/Quinnbots who seem to insist that the mere presence in a claim of any step that can be characterized as “transforming” is sufficient to render the claim 101 eligible per se, regardless of what else may be in the claim. The Bilski decision put that concept to bed, in language that was shockingly clear and easy to understand.

  88. On the other hand, there are things that I really DO think should be given patent protection. Drugs, devices, actual diagnostic tests. Though I think changes need to be made to deal with the practicalities of FDA approval, I think most pharmaceutical patents are entirely reasonable. Nobody is going to put that kind of money into developing drugs without that protection. Same goes for devices. As far as diagnostic tests, such as the Prometheus case, I don’t think that just coming up with a couple of numbers should be adequate to qualify for patent protection. That doesn’t mean that all diagnostics fail the test. Things like the microfluidics chips that are coming down the line, for example, obviously should qualify for patent protection. Of course, it seems that saying anything other than “everything should be eligible for patent” is heresy on this thread, and by disagreeing with that stance I’m just the idxot that doesn’t understand law. Honestly, it seems a bit self-serving. The party line seems to be that you guys are the valiant protectors of invention and innovation, but from the other side of the fence it looks more like most of you are just concerned with keeping yourselves gainfully employed.

  89. Part of my problem is from a more practical perspective. The USPTO seems to be mostly, if not completely, incompetent (from a scientific standpoint). A ton of stuff gets through that really should have failed under 102/103. Stuff that is obvious to any PHOSITA seems to get through all the time, and it isn’t always practical to challenge every questionable patent that gets in your way. In the case of Prometheus, my problem is that they’re essentially being granted control of an entire market for doing a minimal amount of work. They “discovered” the cutoff values for metabolite testing, which is relatively straightforward to do. In return, they’ve essentially been granted complete control of all testing to modulate levels of that drug. I can guarantee that had they not done it, someone else would have done that same experiment to determine those values, simply because it’s an obvious step and it’s easy to do. In all likelihood, it would have been an academic group that published the results. To me, this is a case of the patent system not doing what it’s supposed to: the research here most likely didn’t need to encouragement of a patent to be performed, but the patent is now prohibiting other people from finding out new things or doing their jobs better.

  90. I absolutely see benefits to patents in many situations. It just so happens that the subject material we’re talking about has a lot of instances where I really don’t see as many benefits, or where the disadvantages outweigh the benefits. In the case of your E=mc2 example, there is no evidence that providing patent protection to abstract mathematical ideas will encourage the discovery of more of them, or that it will lead to more rapid advancement of that field. But if you did offer protection to such things, all of a sudden every mathematician, physicist, or basic scientist would be spending all of their time tip-toeing around all the patented equations, and even then they wouldn’t know if they were accidentally infringing. If part of the goal of having a patent system is to disclose inventions to the public, it doesn’t appear to do a very good job of that within the scientific community either. In fact, use of the patent literature is explicitly discouraged in a number of institutions for a number of reasons (link to nature.com).

    From my impressions here after a day, it seems that the majority of people here would disagree with the decision of the ACLU v. Myriad Genetics, claiming that genes absolutely should be eligible for patent protection. I disagree. There may be reasons from a legal perspective that that protection should be offered, but from a practical standpoint (from the scientific community) it’s a nightmare. The barrier for patenting a gene is too low, and the consequences are too many. Currently, we’re a few years off from the point where it becomes financially and technically practical to sequence full genomes whenever we need specific genetic tests. However, with gene patents thrown into the mix, the thicket of claims is going to be such that genome sequencing will be a disaster. This is absolutely hindering scientific innovation. Of course, this is great for you guys since it guarantees you a seemingly endless supply of work. Not so much for any of us that actually need to work in this field.

  91. Why do you keep saying “why do you think claims to purely mental processes are barred?” Do you have a shortcut key that enters this phrase, and you keep accidentally hitting it?

    If a claim is impossible to prove infringement, then it is worthless, and if it is worthless then no one is going to patent it except as an academic exercise. The law should not even worry about those claims, if people want to contribute to the patent office coffers, so be it. I’ve never met anyone that wanted to patent merely as an academic exercise, maybe your experience is different.

    The problem with your claim is not proving infringement, it is inherency in the prior art. Your claim does not require that they think the magic numbers, that is the issue with it. If a claim is only thinking magic numbers, you will never prove infringement. If a claim includes thinking magic numbers, then you can at least think about bringing suit. There will be external indicia of infringement that may be relevant – like eating cookies while staring at a stopwatch that is accurate to 1/1000th of a second, say.

  92. That would seem to imply that you don’t see any benefit to offering patent protection for anything. Is that correct?

    If it is not correct, and you do see a benefit to patents in some instances, why is that same benefit not applicable to the discovery of “natural laws”?

  93. Pretty sure that “fabled Ned’s logic” is the application of a single example to rule an entire class (or category) of method claims.

    What do you think was the point Ned was making by using a single example to determine the fate of an entire class?

  94. I could say something similar to you: learn a bit about the actual science and scientific community before you claim that something you’re doing is in our best interest.

    You could say that.

    And it would fit with what you have already said about a subject you don’t know anything about.

    At least you are consistent.

    I will let MM explain why your comment about “actual science and scientific community” is absolute horse shht and only shows that you don’t know what you are talking about from either a legal nor a technical angle.

  95. Any time I see the word “mouth-breathing” in a post I wonder why the poster even bothered to hit the post button.

  96. A better question:

    Why do you think claims including but are not purely mental processes are not barred?

  97. SteveW Proving infringement is extremely difficult on purely mental processes, of course, and a claim including only these is worthless whether or not you can sneak it through.

    It’s no more difficult than proving infringement of claim comprising a single, old transforming step and a single mental process. Is Prometheus’ claim “worthless” in your opinion?

    And I’m not sure why you bring this issue up anyway. Do you think claims to purely mental processes are barred because it’s difficult to prove when they are infringed? I mean … really?

    That’s not the mechanism for why I say someone just eating cookies is not going to infringe. They are not going to say “it has been less than 14.382 seconds, and therefore I don’t want another cookie” if they are “just eating cookies”.

    My claim doesn’t require that the cookie eaters say anything to anybody. They just have to do whatever they were doing before and then think about the “need” that is indicated by my magic numbers. Just like in Prometheus’ claim. And if I know that they know about my magic numbers (very easy to achieve) that’s more than enough for me to drag them into court for a good old time.

    Why do you think claims to purely mental processes are barred?

  98. Very easy to answer. I wrote a law review article on this nearly 20 years ago. Section 101 contains no limitation on patentable subject matter-Period. If an idea as defined by the claims of a patent is new, and sufficiently new (non-obvious), and useful (here is the real trickSCOTUS needs to define the utility that warrants a patent) and you can make a summary of the invention (claims) definite (that would be satisfying 35 U.S.C. 112) then you have patentable subject matter.
    What is ridiculous is that law of nature prohibition. It came from an old 1920s Commissioner opinion and was dicta. It involved a cam shaft for a Cadilac that was formed in accordance with a mathematical equation. The Commission said something to the effect that were the claim mere to the mathematical algorithm it would not defined patentable subject matter. However, since the object (cam shaft) was made in accordance with the mathematical algorithm it was patentable subject matter. I leave it to Dennis to do the research on this case. I read it before Dennis was in law school.

  99. austin, rest assured that are a lot of patent attorneys out there who agree with most or all of the positions you’ve been taking.

    The idea that granting patents on equations like E=MC2 will increase the rate of discovery of those equations is completely meritless. The mouthbreathers who peddle that crxp are the same mouthbreathers out there who, in other contexts, insist that we should let “the free market” solve every problem that confronts our society (like homelessness – if people see kids dying in the streets of starvation and cold, maybe they’ll start working harder!). I’m sure you know the type. Thankfully their stxpidity and hypocricy is extremely easy for a modestly educated person to expose. Unfortunately, there are infinite legions of dxmb and/or confused and/or invested axxholes out there (like the sockpuppet you just responded to) who will never, ever get it. It’s best not to engage them at great length. They aren’t interested in learning anything.

  100. Hey, glad to see someone living up to that awesome lawyer reputation here. I may not understand patent law as well as you do, but you don’t seem to understand how science works. Quite frankly, in the current atmosphere, far more scientists experience the tragedy of the anticommons than the tragedy of the commons.

    I may be a “clueless non-legal patent professional”, but I end up working in this mess of a patent system that you guys create. Quite frankly, it seems that the vast majority of the time you guys have no idea what you’re talking about with regards to anything scientific or invention related.

    “learn a little about what patents do before you come here to bag on them”

    I could say something similar to you: learn a bit about the actual science and scientific community before you claim that something you’re doing is in our best interest.

  101. dammit, this used to be an echo chamber here and all that used to matter was reaching the wrong conclusion (=less patents for everyone!).

    Who let in these sockie-troll-Gene Quinn people who actually know about what the law really means?

  102. That be just plain crazy anti-patent talk austin.

    Heck if we allowed patents for such, Einstein would have been probably been beaten to that discovery 60 years earlier (thus providing a net gain of free use of 40 years).

    Not only are you a non-legal professional, you are a clueless non-legal patent professional.

    Learn a little about what patents do before you come here to bag on them.

  103. Actually, austin – that sounds like it should be extremely easy to find a cite for it.

    Um, you do know what a cite is, right?

  104. The old man sure gets a lot of exercise, running from questions, jumping to conclusions, chasing fantasies…

  105. I’ll have to review that disturbing commercial with the Manning’s eating oreos. I think it may anticipate this claim.

  106. That’s not the mechanism for why I say someone just eating cookies is not going to infringe. They are not going to say “it has been less than 14.382 seconds, and therefore I don’t want another cookie” if they are “just eating cookies”. Under your proposed claim, only both elements have to exist, there does not have to be a decision tying the two elements together.

    Proving infringement is extremely difficult on purely mental processes, of course, and a claim including only these is worthless whether or not you can sneak it through.

  107. bja please stop posting misinformation.

    There is no misinformation in my comments, bja, and stating that there is misinformation without any citation of the alleged misinformation merely demonstrates to everyone what an incredible douche you are.

  108. ” I really don’t think this is an “law of nature” case at all. This is a “mental steps” case that is truly independent of whether the claim was directed to medicine or something else like a machine. ”

    You can see it either way, I understand MM’s position and I like it as well.

  109. “This claim is obvious (or potentially anticipated) because it is inherent to cookie eating – someone has had a piece of cookie fall to the glass within 14.382 seconds and thought they should eat a second cookie, and had another cookie fall to the glass after 14.972 seconds and thought they should not eat a second cookie.”

    *puts on my JD hat* I DEMAND SUBSTANTIAL EVIDENCE TO BACK UR FACTS SIR! UNTIL THEN NO PRIMA FACIE CASE ESTABLISHED!

    lulz.

  110. please stop posting misinformation. You’re neither making yourself look smarter, nor enlightening anyone else.

  111. Michael, thanks for your reply here.  I didn't understand that you did not know that the claim did not require the doctor to do anything but simply read the report to infringe.

  112. I disagree with that. I think if you discover E = m*c*c, and you come up with an application of it, you should be able to patent that specific application. E=m*c*c is a fact, is isn’t eligible for patent protection, which I think is appropriate.

    I also don’t see any benefit to offering patent protection to the discovery of natural laws. I see far more negatives than positives. Scientific discovery always stands on the shoulders of those before them. It is very likely that, given the state of knowledge at time E = m*c*c was first discovered, had Einstein not found the relationship then someone else would have within the next 20 years. However, if you would have given him patent protection over that relationship, then a huge body of science that used that fact would not have been able to be performed for 20 years.

  113. SteveW Of course, now someone just eating cookies is not going to infringe

    How do you know that, Steve?

    Why is there a prohibition on claiming purely mental processes, Steve?

  114. Sue E said in reply to MM…
    Trying to hold a conversation with MM reminds me of wrestling with a pig in the mud…

    Reply Dec 07, 2011 at 07:37 PM I know the answer said in reply to Sue E…
    Yeah … you get dirtied and the pig enjoys a good romp in the mud.

    Reply Dec 08, 2011 at 12:24 AM EG said in reply to Sue E…
    How true, Sue E!
    Reply Dec 08, 2011 at 07:50 AM

    That’s right, EG: better that you and your sockie friends stick to Quinnie Poo’s echo chamber where the difficult questions never get asked and all that matters is reaching the right conclusion (= more patents for everyone!).

  115. Didn’t I just say that? There’s no indication that the Prometheus claims were known in the prior art. If they were, then the claim is not novel, or it’s obvious (I’ll note that they end with an adjustment of dosage – a process – and not just thinking about it). That’s why I don’t infringe when I read lab reports, but my doctor might if the treatment is adjusted based on information.

  116. Dissection? 

    In the words of Jack Nicholson, "You can't handle the truth."

    Dissection, according to Diehr, involves ignoring the old elements of the claim.  What we're doing here, is ignoring the mental step(s).

  117. But Michael, this is the position of the government as declared in their amicus brief. A claim that ends in a mental step where all the other physical steps are old is not novel under section 102. Otherwise, the claim would make infringement the practicing of the prior art.

  118. Ned won’t touch this topic with a ten foot pole. Besides he is too busy in the other threads trying to prove MOT is still the sole test and other such non sense.

  119. But, I am going to make this assumption that makes his analogy inapt, that the ore location process was new, not old. Had the process itself been old and the only thing that the patent described was a mental step such as “the ore is mineable using technique z if the ore depth is not greater than a specific number”, the patent would still make the practice of the prior art an infringement. That cannot be right.

    Exactly correct. I just made this identical point in the Prometheus Summary thread.

  120. I agree with you. I don’t think it should matter either. I think if you discover E=mCC you should be able to patent it. The world didn’t know about it, so the world couldn’t use it before. Now I tell the world about it and in exchange I get 20 years exclusivity. At least the world can use if they get my permission and in 20 years the world wont even need my permission. Seems to me the world is far better off than if I keep it a trade secrete.

  121. I wasn’t saying that aspirin itself is unpatentable. I was poking at Les’s argument and how it is unreasonable for his test to depend on whether or not aspirin is man-made or naturally occurring.

  122. I think you’re misunderstanding what I think IANAE was trying to get at. Reading between the lines a little, I think he was trying to point out that the body’s natural response to pretty much anything is to find a way to get rid of it. It can either do this directly, or it can modify them in very specific ways to help get rid of it. These mechanisms of well understood, and anybody with a basic understanding of physiology knows them. You can give me an unknown molecule that I have no idea what it does, tell me nothing about it except its structure, and I can tell you with 99% certainty that your body will try to get rid of it (or what it would do with it, in the case of certain nutrients), and even tell you the likely ways that your body would do this. It’s not intrinsic to the molecules themselves, it’s how your body deals with this. These mechanisms are completely natural.

    That doesn’t mean that I can tell you how any random drug works or anything like that. In my mind, it doesn’t have any effect on drug patents, or any global implications such as “no medical patents allowed”.

    What it does say, to me, is that the metabolism of any chemical – drug or no – is a natural process. Furthermore, that measuring the concentration of a drug or its metabolites in the body is a completely obvious way to determine if you’re giving the right amount of drug.

  123. I’m not sure exactly what kind of citation that you’re looking for. Prior art showing that increasing the concentration of something is not a new idea? If that’s really what you want, I can find you a million examples of it. However, this seems like one of those things that’s soo obvious that it shouldn’t even need a prior art. How do you cite something that the vast majority of the population finds to be intuitive?

  124. I never made any argument at all about aspirin being unpatentable. I was poking at Les’s argument that the finger test was patentable because aspirin is man-made.

  125. sockie: Hey, don’t be proud of me, all I am doing is applying the fabled Ned’s logic.

    Actually, sockie, you just pulled two words completely out of the context of Ned’s comment and made up some argument completely unrelated to the point Ned was making.

  126. austin – you need a cite to show the LEGAL aspect of the issue.

    Try to keep up and remember that you are on a LEGAL blog.

  127. Completely false.

    Hey, don’t be proud of me, all I am doing is applying the fabled Ned’s logic.

    You got a problem with that, take it up with Ned.

  128. Might research cost be somewhat correlated with non-obviousness

    See 103(a) – Still good law

  129. 6, I really don’t think this is an “law of nature” case at all. This is a “mental steps” case that is truly independent of whether the claim was directed to medicine or something else like a machine. Just as Malcolm says, if the claim ends in a metal step and everything else in the claim is old, the claim cannot be patentable under section 102. The only real question is whether the same doctrine applies to 101 as well.

    Absolutely correct, Ned. And 6 seems to understand that in his 10:45 comment. As I’ve noted before, the problem with the “pre-emption” test is that it requires one to first identify the thing that is being pre-empted and without any clear, objective way of doing that, you end up with arbitrary results. Hence the ridiculous back and forth here about whether all uses of metabolite levels for optimizing auto-immune disease therapy were “pre-empted” or not.

    If I was going to argue “pre-emption”, I would have argued that practicing the prior art was pre-empted by the claim because once a practitioner knows Prometheus’ magic numbers, they can’t really “un-know” them. Thus by virtue of having been exposed to the new information that is embodied in the mental step, they become unwilling infringers every time they thing about the result (a result which is old in the art, in every way).

    With any luck, this will spell the end of the “pre-emption” doctrine, which was a stillborn doctrine anyway, as far as I was concerned.

  130. But Austin you have to find that Aspirin exists, then you remove it, refine it. Are you telling me that if I make a pill that is half Aspirin, half Acetaminophen, I will lose because you claim Aspirin is nature and the other is not? Can I have 1/2 a Patent? What about A great Wine. I crush the Grapes, add my special secret recipe of the Lilac blooms making it the most delicious ever invented… I lose because they are found in nature? What about Perfumes.. Whale gunk, Flowers, oil, what happens then?

  131. sockie: according to the fabled Ned logic, if Prometheus loses, there go all methods claims directed to medicine…

    Completely false. Nice try with the scare tactics, though. Kevin Noonan would be proud of you.

  132. You need a citation for this? People have been extracting and concentrating compounds for thousands of years. Herbal teas, tinctures, etc. are all ways of extracting and concentrating chemicals. Taking more of something is so “obvious” that people will often do it even if it isn’t the right thing to do. It seems to be almost a natural instinct. A strawberry tastes good? Eat two. One cup of tea makes you feel better? Have another. One aspirin helped your headache a little? Take two.

    Regardless, now we’re arguing about details that aren’t relevant to the original hypo that Les brought up. Say your body has the same reaction to salicylic acid and acetylsalicylic acid (which is likely since they both work in the same way) that lets you determine if you need more or less by looking at your finger. Whether using this to control dosing is patentable or not should not hinge on whether the specific drug you took occurred naturally or if it was slightly modified to make it easier to absorb.

  133. In any event, the body’s normal reaction to any molecule

    And so it has begun – the Fruits of the Weldon Amendment – NO MEDICAL METHOD PATENTS ALLOWED.

    next step – ANY method patent that relies on any force of nature.

    We will get you all, my pretties!

  134. EVERYTHING is in nature – your argument is a fallacy because you are presuppossing that if something is found in nature (or can be “substituted” for the building blocks found in nature), it is not patentable.

  135. The only real question is whether the same doctrine applies to 101 as well.

    You know you are using dissection.

    Why is this even a question?

    How can you be so obtuse?

  136. “The concentrations in which aspirin is taken are not naturally occurring.”

    No, but the compound is known good, concentrating a good thing to be able to take more of it is obvious, and the body’s reaction to a higher dosage is still inherent.

  137. Even if that were true. The concentrations in which aspirin is taken are not naturally occurring. If memory serves, one would have to eat 30 kilos of bark for the equivalent of one asprin.

  138. The therapeutic effect of ASA is exactly the same as that of salicylic acid. The acetyl part only makes it easier to stomach. So yes, biochemically speaking, aspirin really does grow on trees.

    In any event, the body’s normal reaction to any molecule (even synthetic ones) is both natural and inherent in the body’s all-natural chemistry.

  139. I don’t have a reference handy, but I’m pretty sure that aspirin (acetylsalicylic acid) is present at low levels in willow bark, though other salicylates are present at higher concentrations. Regardless, other salicylates can produce analgesia, so they could be substituted in your original argument. You could also replace aspirin with morphine, which is completely naturally occurring. That you can substitute such similar compounds and your conclusion changes because of the details of their existence seems to make your argument a bit flimsy.

  140. The interweb seems to disagree:

    Aspirin or acetylsalicylic acid, is a derivative of salicylic acid that is a mild, nonnarcotic analgesic useful in the relief of headache and muscle and joint aches. The drug works by inhibiting the production of prostaglandins, body chemicals that are necessary for blood clotting and which also sensitize nerve endings to pain.

    The father of modern medicine was Hippocrates, who lived sometime between 460 B.C and 377 B.C. Hippocrates was left historical records of pain relief treatments, including the use of powder made from the bark and leaves of the willow tree to help heal headaches, pains and fevers.

    By 1829, scientists discovered that it was the compound called salicin in willow plants which gave you the pain relief.

    link to inventors.about.com

  141. Why not?

    I think it is the biggest contribution to progress in the useful arts ever. Why shouldn’t AE have been grated 20 years exclusivity for discovering it?

  142. Aspirin occurs in nature, as do many other analgesic drugs (opioids, other salicylates, etc).

    The reaction is almost certainly due to the body’s intrinsic ability to deal with foreign compounds, and thus I would question your assertion that the reaction is “not a law of nature”.

  143. when the thought police are required to prove infringement, there really isn’t that much to worry about.

    give that schmo his patent/$10K wall hanging.

  144. Thanks for the reply. To make sure I’m understanding this, even if they decide that this passes the bar of being patentable material, it then needs to meet the standard of ‘non-oviousness’?

  145. Those are simply separate issues about which there is no current controversy. The issue before the court is, does the claimed invention fall within at least one of the categories of things for which patents may be granted. For example, is the claimed invention a process or method….

    Whether it is a novel or obvious method is only an issue if it is first determined that it IS a method.

  146. Everything in one way or another relies on some law of nature. It’s either patentable or all of you guys are out of a job because nothing is.

  147. Not a legal professional here, but coming from the other side of this. I’m wondering if anyone could explain to me why there’s been seemingly little emphasis on the novelty/obviousness of the patent in question? The idea of adjusting dosing depending on the level of a drug or the metabolites of that drug is completely obvious to any PHOSITA (physician, basic scientist, etc). The discussions about what is necessary to turn a natural phenomenon into a patentable invention are philosophically interesting, but seem unnecessary to invalidate this Prometheus’ claim. I think Shapiro got close to hitting the mark with his cholesterol example.

  148. First of all your honor, it is NOT a law of nature. Asprin is not naturally occurring. The fingers reaction to aspirin might arguably be a “predictable reaction”, but since its a reaction to something made by man it does not represent a law of nature.

    Furthermore, my observation or determination that an appropriate dosage can be determined from observing the finger is a discovery that contributes to progress. I can keep the discovery to myself as a trade secrete and set myself up as a curer of headaches and have the secrete die with me or I can share it with the world to use in 20 years or so and in return be granted exclusive rights.

    Disclosure of this method is just the sort of thing the patent laws were meant to encourage.

  149. A dosage device comprising a means to attach said device to a subject’s little finger, further comprising means to detect skin color change and a means to administer a medicament wherein upon activation and detection of a color change from X to Y in said subject’s little finger said dosage device administers Z dosage units of said medicament to the subject.

    …and wherein said dosage device is not a nurse?

  150. (Note that “new” is in 101.)

    Please try to understand “Thou Shall Not Conflate”

    If the added steps don’t involve some useful transformation, then the claim shouldn’t be patent-eligible. (“Useful” is also in 101.)

    Please try to understand “Bilski – MOT is not a requirement, but just a clue.

  151. claim was directed to medicine

    uhoh, according to the fabled Ned logic, if Prometheus loses, there go all methods claims directed to medicine…

    (sigh)
    business mthods by abstraction
    medicine methods by mental step

  152. 6, I really don't think this is an "law of nature" case at all.  This is a "mental steps" case that is truly independent of whether the claim was directed to medicine or something else like a machine.  Just as Malcolm says, if the claim ends in a metal step and everything else in the claim is old, the claim cannot be patentable under section 102. The only real question is whether the same doctrine applies to 101 as well.

    Sent from iPhone

  153. JUSTICE BREYER: Suppose I discover that if … someone takes aspirin … for a headache and, you know, I see an amazing thing: if you look at a person’s little finger, and you notice the color [indicates that] you need a little more, unless it’s a different color, you need a little less. Now, I’ve discovered a law of nature and I may have spent millions on that. And I can’t patent that law of nature, but I say: I didn’t; I said apply it. I said: Look at his little finger.

    JUSTICE BREYER: Okay? Is that a good patent or isn’t it?

    AI: If this Court wishes to continue holding Diehr as controlling case law on 101 subject matter, as it expressly so held in Bilski, and not consider those elements of Flook and Benson limited by Diehr, then my answer is no.

    If I may, my analysis is based on the DCAT, a mnemonic device for the Diehr Concept and Application Test. The ONLY Supreme Court sanctioned test and controlling analysis for 101 Subject Matter for the last 30 years.

    The DCAT works exactly like the Court used it in Diehr.

    You take the claims as a whole, including the concept.

    Then analyze the claim to see if there is an application to a specific industrial and/or marketplace process. If the answer is yes you pass 101.

    In your hypothetical there is application, but not to a specific industrial and/or marketplace process. Therefore it does not pass. People in their home would infringe. However if applied to say medical methods in the medical industry, the process now has a meaningful limitation to applied commerce, which is the purpose and result of all patents.

    The DCAT is the 101 test/ analysis that has worked well for at least 30 years and I highly recommend the Court reaffirm it here today.

    See the cite history as follows:
    ( Diehr) : It is now commonplace that an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection. See, e.g., Funk Bros. Seed <450 U.S. 188> Co. v. Kalo Co., 333 U.S. 127, 76 USPQ 280 (1948);Eibel Process Co. v. Minnesota & Ontario Paper Co., 261 U.S. 45 (1923); Cochrane v. Deener,94 U.S. 780 (1876); O’Reilly v. Morse,15 How. 62 (1853); andLe Roy v. Tatham, 14 How. 156 (1852).
    ( Bilski) Page 14 : Finally, in Diehr, the Court established a limitation on the principles articulated in Benson and Flook.
    (Research Corp): Indeed, this court notes that inven- tions with specific applications or improvements to technologies in the marketplace are not likely to be so abstract that they override the statutory language and framework of the Patent Act.
    (Ultramercial): Although abstract principles are not eligible for pat- ent protection, an application of an abstract idea may well be deserving of patent protection. See Diehr, 450 U.S. at 187 (“an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection”)

  154. U.S. Supreme Court Justice Stephen Breyer’s family Wednesday sold its shares in Nestle S.A. in order to allow the justice to participate in a high-stakes case that examines whether companies and inventors should be allowed to patent medical diagnostic tests.

    The case is being argued Wednesday morning. Supreme Court spokeswoman Kathy Arberg confirmed the stock sale and said the transaction allows Mr. Breyer to continue to participate in the case. Ms. Arberg said the shares belonged to Mr. Breyer’s wife, who arranged for the divestiture.

    One of the parties in the case, Prometheus Laboratories Inc., put Mr. Breyer in an unexpected bind late Tuesday when it belatedly disclosed to the court that Nestle was its new corporate owner.

  155. MM, your claim is faulty (even ignoring that they need to actually eat the second cookie somewhere in the method) and does not create any great difficulties for the patent system. This claim is obvious (or potentially anticipated) because it is inherent to cookie eating – someone has had a piece of cookie fall to the glass within 14.382 seconds and thought they should eat a second cookie, and had another cookie fall to the glass after 14.972 seconds and thought they should not eat a second cookie.

    If you change your claim to the following: “thinking that a second cookie should be eaten in response to a piece of the cookie falling into the glass within less than 14.382 second of dipping, and thinking that a second cookie should not be eaten in response to a piece of the cookie falling into the glass after 14.972 seconds…” then the obviousness or anticipation issue is fixed. Of course, now someone just eating cookies is not going to infringe – which is just how it should be since things should either be not novel/unobvious, or not causing infringement of normal activities.

    Your hypo has not broken our patent system, and doesn’t require novel theories on patentable subject matter to “fix.”

  156. Claim of patent 1152263 by DW Atkins assigned to Coleman and filed in 1915.

    “A heater comprising a base, a burner mounted on said base and having an opening in the top thereof, a flue depending from said top in alignment with said opening, a deflector plate carried by said base and spaced therefrom, an inner casing having a cloded lower end and an open upper end, an open end extending to within a slight distance of the top of the outer casing, said inner casing supported by said deflector plate and spaced therefrom and arranged concentrically with said outer casing to provide an annular space therebetween whereby the heat would have an unobstructed passage upwardly in said space and downwardly in said inner casing and an asbestos covering for said inner casing.”

    That heat rises in a law of nature and the claim relies on this law of nature. This should not have been patentable.

  157. Hint hint that’s because it isn’t the natural phenom or “lawl of nature” that is being preempt in this case.

    It is the abstract idea that a certain level of that sht present in the blood or body or whatev after u’ve been shot up with meds indicates somethin bad a happenin’ up ins yo, or not yo, so you need to adjust on ur meds yo, or not adjust ur meds yo. And that sht be preempted on. Or something around that, I forget exactly what, it has been awhile since I wrote it up proper like.

    I noted this sometime back and D had said he may try to get in touch with relevant mans, but his royal USSC arguement messer uper man that they hired on managed to bungle it pretty well going down the natural phenom route. He is close on the natural phenom route though, because the correlation is very nearly the thing which is being preempt, but not … quite. It is actually the abstract idea that the correlation indicates you need to adjust ur meds or not. Either way, Mayo probably wins anyway. But they may not win on all claims.

    This is what happens when someone argues the wrong thing. Your argument doesn’t quite come out quite right. You know there is an issue, and you know you’re close to hitting the nail on the head, but you’re a centimeter off and everything just comes out wrong.

    But you’re right, as much as he stressed it it is as if I had made the preemption argument. It’ll probably win even as badly as he bungled it tho. Because the USSC justices and MM is right, they’re for all intents and purposes patenting the fact noted at args.

  158. Might research cost be somewhat correlated with non-obviousness? Though I must admit, Breyer’s hypothetical does not sound like it was difficult research, and he did not propose that it was hard to discover, but rather that much money was spent.

    One thing I do find a little mystifying, is the distinction between making the invention, and proving that it works. The standard drug company hack of separating the enantiomers of a drug with side effects to see if one has fewer side effects — this is an obvious thing to try, right? Proving that it works could cost millions of dollars, but the “proof” is not the invention, is it?

  159. Regarding the ore mining claim, it would be nice if he cited a patent that we could look at. Did he cite one in his briefs?

    But, I am going to make this assumption that makes his analogy inapt, that the ore location process was new, not old. Had the process itself been old and the only thing that the patent described was a mental step such as “the ore is mineable using technique z if the ore depth is not greater than a specific number”, the patent would still make the practice of the prior art an infringement. That cannot be right.

  160. Michael, I discover that if one drinks beer girls will find one more attractive.

    Can I patent drinking beer, which is old, with the following added, “wherein one’s attractiveness to girls increases?”

    I think not.

    The problem with Prometheus claims is they make practicing the prior art an infringement.

  161. OK, not the precise wording that I was looking for, but the point of differentiation from either the natural phenomenon or the preexisting process. (Note that “new” is in 101.) If the added steps don’t involve some useful transformation, then the claim shouldn’t be patent-eligible. (“Useful” is also in 101.)

    I do note that this is at tension with examples cited by the Prometheus advocate, such as methods of finding ore (without requiring mining of the ore). But it is a sensible approach, and claim drafters would do well to draft claims that meet this test.

    One of the big problems with the Prometheus claims, which is not even hinted at in argument, is that it covers a decision NOT to change anything. The only step in claim 46 is measurement step, with absolutely no requirement to do anything with the result of the measurement.

  162. Right, yours was “thought” and “policy”, also not in the statute. Yes, facts can be protected. The particular way to build a machine is clearly patentable but also clearly a fact.

    Do I think that pure “information” can be patentable? Not for the most part, but I don’t think you get there by adding restrictions to patentable subject matter. I’ve written several articles on this if you are interested in my viewpoint.

  163. My personal view is that there needs to be a “M or T” type test that is applied at the point of novelty (which could be statutorily supported based on the “improvement thereof” language). But the Supremes will never go this way.

    Point of Novelty….

    LOL LOL LOL.

  164. This is a perfect response, Justin … assuming you are correct in interpreting Breyer’s question as referring to a claim that requires only looking at the finger color (and not requiring a step of aspirin intake, in which case a different answer is required).

    What the hxll was Shapiro thinking? The obsession during oral argument with discussing “laws of nature” was truly a waste of everyone’s time.

  165. …is useful for the production of that information, but since information is insubstantial…

  166. Or, more concisely:

    Justice Breyer, should I be able to patent the act of measuring your foot size? It could be useful if I were to knit you a pair of socks for winter.

  167. Only 2 types of things can potentially exhibit utility as required by 101: physical things, and methods.

    Since information is neither, it cannot exhibit utility as contemplated by 101.

    A claimed method, the end product of which is information, is useful for the production of that information, but since information is insubstantial the process does not exhibit 101 utility as contemplated by this very court in Brenner v Manson.

    And even if information was itself substantial, the claim at issue here would still fail to satisfy the utility requirement.

    The asserted utility the petitioner chose to state in the claim is the optimization of therapeutic efficacy, not the production of information. Because performance of the claimed method never actually optimizes therapeutic efficacy, the asserted utility is not credible, and therefore does not exhibit 101 utility as contemplated by this court in Brenner.

  168. Re: Justice Breyer’s challenge – A mental observation is never subject to a patent under Section 101. If it is an observation of a physical process brought about by a patented process, it is the physical process itself which might be eligible for a patent – not the observation of it (even if money was spent to help bring the observation about).

    Seems straightforward enough.

  169. People throw in all sorts of other stuff that’s not in the statute that’s based on public policy, including the banning of laws of nature in the first place. Just look at MMs response below…

    None of my comments mentioned “laws of nature.”

    Do you believe that one can protect facts with patents, Michael?

  170. I don’t see much distinction between that claim and claim 46, which is a measurement coupled with a prediction based on that measurement. But if it works better for you, the hypothetical claim could be:

    A method for predicting energy output, comprising:
    1) combining concrete and water to make an object; 2) measuring the mass m of the object;
    3) predicting the quantity of energy E that could be obtained when the object is fully converted to energy, using the formula E=mc^2.

    Now I’ve manipulated matter prior to making a measurement and a prediction based on the measurement. I’d still say it’s not patent-eligible, in my view.

    My personal view is that there needs to be a “M or T” type test that is applied at the point of novelty (which could be statutorily supported based on the “improvement thereof” language). But the Supremes will never go this way.

    Frankly, I think that State Street was potentially on the right track with its “useful, concrete and tangible” language, but they completely misapplied their own test by considering a method of calculating share values (or whatever) as “concrete” and “tangible.”

  171. Your proposed claim lacks a step in which you are introducing a foreign substance into the body and monitor the metabolite that the body creates by breaking down this foreign substance.

    Prometheus’ broadest claims lack this step. That said, Breyer’s hypothetical is far more similar to Prometheus’ claim than Sean’s.

    A better claim would be

    1. A method of optimizing cookie consumption, comprising:

    dipping a sample cookie in and out of a glass of milk until the moment a piece falls to the bottom of the glass and,

    if a piece of cookie falls to the glass within 14.382 seconds of dipping, thinking that a second cookie should be eaten, but if a piece falls to the glass after 14.972 seconds, thinking that a second cookie should not be eaten.

    That claim presents the *exact* same issues presented by Prometheus’ claims. The numbers recited in the claim are novel. Anyone who dips their cookie in milk is a potential infringer. All I have to do get you cookie dippers into court is inform you of my patent. Then you’ll know about my magic numbers. That’s a reasonable basis for infringement.

    Awesome patent system we have here, aint it?

  172. “1) measuring the mass m of an object;
    2) predicting the quantity of energy E that could be obtained when the object is fully converted to energy, using the formula E=mc^2.”

    Not that I agree with saddlepack maker’s supposed distinction because the claims in Prom were only construed thus by the Feds iirc, and that construction was likely in error. But, even persuming that such a construction should be given credence.

    A method for predicting energy output, comprising:
    1) measuring the mass m of an object;
    2) providing the object in an environment
    3) monitoring the object observing any changes it makes to its surroundings
    4) predicting the quantity of energy E that could be obtained when the object is fully converted to energy, using the formula E=mc^2.

    Does it really change the determination all that much? How do the newly added limitations affect the scope of what is covered by the claim in the real world? Everyone doing steps 1 and 4 will be doing steps 2 and 3.

    “Prometheus’s claim is not seeking to predict a natural phenomenon, as your proposed claims seeks to do but instead is seeking to determine the next step in the treatment plan (i.e., to adjust the dose or not).”

    First of all, claims don’t “seek” to do anything, they merely exist. And even if they did I don’t notice any limitations in the claims regarding what they seek.

  173. That is an excellent example of a claim directed to a natural phenomenon.

    This is distinguished from the claim at issue in Prometheus. Your proposed claim lacks a step in which you are introducing a foreign substance into the body and monitor the metabolite that the body creates by breaking down this foreign substance. Secondly, Prometheus’s claim is not seeking to predict a natural phenomenon, as your proposed claims seeks to do but instead is seeking to determine the next step in the treatment plan (i.e., to adjust the dose or not).

  174. For the record, this view is 100% contradictory to numerous Federal Circuit cases…

    Yes, and it is 100% in line with other cases that go the other way. Inherency doctrine is a mess. See, e.g. Seaborg (element unknown but inherent, patent granted). The point is not whether a composition’s properties are understood, but whether the public implicitly gets the benefit of those properties (e.g. the Claritin metabolite case).

  175. Risch: I follow the public benefit view of inherency. If people noticed finger color changes (even if informally), then it’s not novel. If they didn’t then it is novel.

    For the record, this view is 100% contradictory to numerous Federal Circuit cases which directly addressed the issue of whether a composition’s properties needed to have been recognized in the prior art (they don’t) in order to find inherent anticipation based on those properties.

  176. Mr. Shapiro might be an excellent advocate generally for all I know, but he really didn’t do his client any favors here.

    How about this claim?

    A method for predicting energy output, comprising:
    1) measuring the mass m of an object;
    2) predicting the quantity of energy E that could be obtained when the object is fully converted to energy, using the formula E=mc^2.

    I would argue that this is close to what Prometheus claimed, and that this should not be patent-eligible.

  177. The question is not whether it’s a “good patent”, because that question presumes that all conditions for patentability have been satisfied

    I think by “good patent”, Breyer meant “good enough to pass 101.”

    I would respond that he hasn’t applied anything, since the dose was never actually adjusted, therefore utility is not satisfied.

    BREYER: So information is not useful? A method that provides useful information that I can use when advising, say, a nurse on how to cure a dying patient. Such a method is not useful?

  178. I would respond that he hasn’t applied anything, since the dose was never actually adjusted, therefore utility is not satisfied.

    If Breyer then went on to say that the dose was adjusted based on the finger information, then I would say that a properly-drafted method claim could satisfy 101 if all the other requirements of 101 were met.

    The question is not whether it’s a “good patent”, because that question presumes that all conditions for patentability have been satisfied–the question is whether the claim interpreted in light of the specification satisfies all the requirements of 35 USC 101.

  179. OK, so if it is only thinking about modulating the dose, then there’s no practical utility because the method doesn’t actually do anything…

    And so it fails under 101.

    there’s no implication in the hypo that finger examination is in the prior art

    Oh. I guess there’s also no implication in the hypo that we are talking about patent law as it exists on planet Earth.

    after all, it cost millions to discover…

    Millions of what? There’s no indication in the hypo that Breyer is talking about US dollars.

    *yawn*

  180. OK, so if it is only thinking about modulating the dose, then there’s no practical utility because the method doesn’t actually do anything…

    You are adding an assumption here: practicing the prior art. That’s a novelty question – there’s no implication in the hypo that finger examination is in the prior art – after all, it cost millions to discover…

  181. Whether it’s novel is not related to whether it’s patentable subject matter

    Unfortunately, you’re incorrect. Whether the non-mental steps are novel determines whether someone can practice the prior art and be found guilty of infringing only because he/she thought something “new”. This result can’t be permitted under the law, which forbids patents that prevent people from thinking new thoughts. If I’m not performing any steps that are patentable (because they are old) except thinking a “new thought”, your claim can not be enforced without effectively turning it into a claim to a mental process. Again, that’s not permitted. How do you propose to resolve the conundrum, bja? Would you find such a claim anticipated?

    Obviously, if the non-mental steps in the claim are novel, the issue doesn’t present itself. So yes, bja, whether the prior art steps are novel is “related” to the subject matter eligibility issue. Again, that’s because patents that protect mental processes (literally or effectively) are suspsect under 101.

  182. patentable subject matter under 101 is a separate inquiry from the novel and obviousness inquiries of 102/103.

    Just because it passes 101 doesn’t mean that it’s novel and non-obvious.

  183. There’s all sorts of patents that individuals can infringe without knowing it – why should modulating dosage be any different?

    Let’s be careful here. Breyer’s hypothetical claim does not require “dosage modulation”. Like Prometheus’ claim, all that is required is for the aspirin taker to THINK about modulating the dose.

    Are there “all sorts of patents” that I can infringe merely by practicing the prior art and thinking a new thought while doing so? I don’t think so. I’m sure there are a few (Prometheus’ patent being a prime example). They should all be expunged from our patent system by any means necessary. I’m not aware of any person who isn’t directly invested in the system (i.e., people other than patent attorneys and their clients) who supports such patents.

  184. “mental processes”, which this hypo is not.

    And the correct answer is: “Yes, I’m only looking at a step here that is performed mentally, and ignoring the rest of the claim in order to mis-apply a 101 rejection here.”

  185. Maybe or maybe not. I follow the public benefit view of inherency. If people noticed finger color changes (even if informally), then it’s not novel. If they didn’t then it is novel. Still probably obvious. Either way, it’s not a subject matter question.

  186. The treatment itself isn’t novel, though. Just the relationship of finger color to treatment adequacy. Is that novel, because someone hasn’t described it before, even though it has always occurred?

  187. Why not? People throw in all sorts of other stuff that’s not in the statute that’s based on public policy, including the banning of laws of nature in the first place. Just look at MMs response below…

  188. If it costs millions to discover because it wasn’t obvious but is extremely valuable, then it’s the exact type of research and discovery we should encouraging.

    Sure. The question is: is it the exact type of research and discovery we should be encouraging by granting patents that make infringers out of people who take aspirin and look at their fingers?

    Respectfully, I think there are other ways to encourage such research. Perhaps some ways that don’t continue to enrich the richest members of our society while driving up costs for everyone else.

  189. How would you respond to Justice Breyer’s idea with respect to 35 U.S.C. §101?

    JUSTICE BREYER: Is that a good patent or isn’t it?

    MM: No, it’s not a “good patent” because taking aspirin is old in the art and your claim turns people who take aspirin and merely *think* about their little fingers into infringers. In other words, the claim protects thinking about the fact that you discovered, in its only relevant context, and is thus effectively a claim on the fact itself. That’s undeniably the case with respect to people who take aspirin and have little fingers. When they look at their fingers and consider this fact, they are literal infringers of this bad claim.

    BREYER: But aren’t you just dissecting the claim and saying, “You can’t get patent looking at a finger so this claim is invalid”? What about the other steps?

    MM: No, I’m not dissecting the claim. I’m looking at the effect of the claim on the public, which is a time-honored practice by this Court.

    BREYER: How is your analysis different from a 102 analysis where one simply ignores the mental steps when considering anticipation?

    MM: It’s not very different. But I’m not aware of a Supreme Court case that says one must ignore mental steps when considering anticipation. I am aware of Supreme Court cases that say that patents can’t be used to protect mere thoughts, which is what your bad claim does, at least as far as people with aspirin-takers with little fingers are concerned.

    By the way, a decent summary of the hearing may be found here.

    link to scotusblog.com

  190. I say it’s patentable. You aren’t patenting the change in the finger – that’s a law of nature. And there’s no law of nature that says you treat with aspirin. If it costs millions to discover because it wasn’t obvious but is extremely valuable, then it’s the exact type of research and discovery we should encouraging.

    The problem with a lot of these patents is that they don’t cost millions and they are obvious, and that’s NOT the type of activity we should be encouraging, but that’s not a subject matter question.

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