Supreme Court: No Move Yet on Denying Human Gene Patents

The Supreme Court is in the midst of deciding whether to grant the Ass’n of Molecular Pathology’s petition for a writ of certiorari in the Myriad gene patent case. The petition, led by public interest patent attorney Dan Ravicher, poses a simple question to the court: “Are human genes patentable?” Petitioners also ask the Supreme Court to provide more latitude for public interest groups to challenge patents even in the absence of any personal or direct threat of an infringement action – arguing that the Federal Circuit is not following the Supreme Court’s guidance set forth in MedImmune.

In addition to the party briefs, ten amici briefs were filed with the court from a variety of medical associations, hospitals, and professors – all in support of the petitioners. None of the major patent law associations filed briefs in the case.

The briefs were complete and distributed to the Justices on January 25 in preparation of a February 17 conference. In patent cases, the typical result of the conference is that the court either (1) grants certiorari; (2) denies certiorari; (3) invites comments from the Solicitor General; or (4) does nothing until the next conference. We learned today that the Supreme Court is following path number 4 – no action until next time. At some point before the close of term, the Supreme Court will revisit the case and announce that it is following one of the other paths. In an e-mail, Hal Wegner noted that the Supreme Court is scheduled to release new orders three times during next five weeks.

The delay may well be related to the fact that the Court is in the midst of drafting a merits decision in another § 101 patent-eligibility case of Mayo v. Prometheus. Although the Mayo case focuses on medical methods rather than genes per se, there is still a good chance that outcomes will be linked.

Other Denials: The court today did deny certiorari in several patent cases, including Janssen Biotech, Inc. v. Abbott Laboratories; Hynix Semiconductor v. Rambus; and Eastman Chemical Co. v. Wellman, Inc.

In Janssen Biotech, the patentee unsuccessfully challenged the de facto heightened written description standard that the court has placed on biotechnology focused patents. In Hynix, the accused infringer unsuccessfully asked the Supreme Court to follow principles of equity in preventing infringement claims over industry-standard products by a patentee who had concealed its pending patent applications from the standard setting organization and had amended its claims during prosecution to cover the agreed-upon standard. In Eastman Chemical, the Supreme Court refused to consider whether the Federal Circuit should add some teeth to the indefiniteness doctrine codified in 35 U.S.C. §112(2).

Dennis Crouch

About Dennis Crouch

Law Professor at the University of Missouri School of Law. Co-director of the Center for Intellectual Property and Entrepreneurship.

117 thoughts on “Supreme Court: No Move Yet on Denying Human Gene Patents

  1. Yes, 4 out of 5 is correct. And since I am not 100% certain that Ned is a real Patent Attorney, it is probably 4 out of 4.

    Anyway notice how Ned didn’t answer any of the questions I presented, or questions from the other posters, but had/has plenty of time to argue about the identity of commenters, and make insults. Surest sign of a weak mind and a defeated cause.

  2. And 1 in 5 patent attorneys agree, I totally own you on that topic.

    Don’t you mean “And 4 in 5 patent attorneys agree, I totally own you on that topic.” ?

  3. Oh please do get a grip.

    The commenters in these threads are ripping you to shreds and all you can say, is everyone is AI?

    LOL!

    Look, thank you for the compliment, to think I have such a wide expanse of legal knowledge on patent law.

    But anyone that has read these boards more than 2 minutes knows I pretty much stick to one topic, 101, and useful arts, as it relates to 101. And 1 in 5 patent attorneys agree, I totally own you on that topic.

    Oh and BTW, that one attorney that does not agree, well that would be you.

  4. Nonsense. The Cowardly (but not hungry) Lion made an interesting point and raised a valid question.

    If you are so certain of your legal prowess and so sure of the righteousness of your judicial philosophy, then go ahead and answer it.

    Here, I will even repost the question:

    Cowardly (but not hungry) Lion said in reply to Ned Heller…
    AI is not the only one fixated on “claims as a whole.”

    How do you explain the new definition by the Office on “technological invention” which drags “claims as a whole” directly with both anticipation and novelty?

  5. Ned you are getting very very confused.

    Annie Mouse was the second to point out your lie. Just a Working Stiff was the first to point out your lie. Throw in Anon, who like owns you on every legal discussion you two have.

    You are now trying to spin “some facts” to get out of your lie, and it is quite hilarious.

    Maybe you should visit the blog instead of screwing things up so badly by answering only emails. Maybe you should understand the law you want to comment on and stop conflating and confusing yourself.

    The long and short of it was captured by Annie: “You are looking for novelty in the wrong area. You have conflated a general requirement with a specific exception requirement.

    It is quite humorous to see you sputter so badly on the law, as you “pride” yourself on being so accountable by posting in your real name.

    Come down off your pedestal.

  6. </i></i></i></i></i></i>
     
    Animus, I quoted in whole what you said.  You cannot change that.

    To clarify what we are talking about, man propose the following:
     
    New program on a disk, its functional relationships:

    1. The relationship of the program to the disk.
    2. The relationship of the program to the computer.

    These are two different functionalities.

    The claim is to a disk carrying a program that when loaded into a computer causes the computer to operate in a new fashion.

    However the new functionality is respect to a the computer. The functionality of the program with respect to the disk is old.

    Regardless of whether or not we can agree on whether a claim to a disk with a new program is patentable, can we at least agree that these are the "facts" we are discussing?

  7. STRAWMAN ALERT:

    need not have any functional relationship to the article of manufacture

    That is clearly not what was said.

    What was said was that there was “a” functional relationship (singular, indefinite, but an existing functional relationship nonetheless).

    What was refuted was that this functional relationship was “the,” let alone “the claimed” functional relationship.

    All of which is very different from the newly fabricated “there is NO functional relationship.”

    As to “That functionality however is old.” Such is a non sequitur, as the newness of the relationship is not the issue. As has been stated, the only thing required is that there be some functional relationship. You are looking for novelty in the wrong area. You have conflated a general requirement with a specific exception requirement.

    And you have been caught in a lie doing so.

    There is no amount of spin you can apply to extricate yourself from this lie. Your attempts to buttress your position only make you look all the more silly, as you trade the mantle of incompetence for your original mantle of deceit.

    Your postings of late have been of such poor quality, and appear to be driven by ego more than intellect. Perhaps you need to enlist the aid of a reviewer to catch your mistakes before you broadcast them and take positions that you cannot defend.

  8. Just,
     
    "Not only that, but the lie exposes your utter ignorance of a critical part of patent law.
    The exception to the written matter doctrine only requires “A” functional relationship, not “THE” functional relationship, and certainly not “THE CLAIMED” functional relationship
    ."

    Now we get to it, do we not?

    Your basic premise is that the claimed novelty in an article of manufacture claim need not have any functional relationship to the article of manufacture in order that the claimed subject matter, the article of manufacture, defined over the prior art.
     
    Referring now to the government brief in Prometheus, it seems they are saying that if the sole novelty of a claim lies in a step that has no functional relationship to the otherwise patent eligible portions of the claim, that the claim is not new as a matter of law.
     
    I agree with this position.
     
    In Prometheus, the information that treatment levels had to be raised or lowered depending on the measure of metabolites was useful in a treatment regime where the administration would be adjusted depending on the measurement. However, the claim was not directed to a method of treatment, but to the measurement of the metabolites.
     
    With respect to an article of manufacture comprising a computer readable medium, the program is carried by the computer readable medium in a manner that it can be read by the computer. That functionality however is old. The claimed functionality, wherein the program causes the computer to operate as a new machine or as a new process, is functional when the program is executed by the computer. However that functionality is not claimed when the claim is not directed to the computer, but to the article of manufacture.
     
    I know that you say that it is the law that the claimed functionality is not necessary when considering whether the program is functional to the article of manufacture. However, when one is considering novelty, and not patentable subject matter, that functionality is critical.

     

  9. So?

    So, even just a working stiff realizes that you have been caught in one massive lie.

    So?

    7:39 PM Feb 24.
    You lied.

    1:52 PM Feb 25.
    You repeated that lie.

    So?

    You then built on that lie by claiming that this “creates a problem with them [Beauregard claims] in terms of 102/103/112

    Not only that, but the lie exposes your utter ignorance of a critical part of patent law.
    The exception to the written matter doctrine only requires “A” functional relationship, not “THE” functional relationship, and certainly not “THE CLAIMED” functional relationship.

    So?

    Glinda pegged it: “It merely needs to have a
    Anon pegged it: “
    It [Ned’s posts] is empty and meaningless

    So?

    Your proud ignorance, now THAT is OFFENSIVE.

    That is so.

  10. The subject matter of the programming has no functional relationship to the article of manufacture

    A blatant and oft repeated l_ie.

    There is no way to sugar coat this. For Ned to state such is inexusable.

  11. watching you get torn to shreds

    Unfortunately, as Ned has insisted on not answering and engaging in a civil discourse, getting torn to shreds will be all that will be done on that thread.

    Ned loses an opportunity to explore something that albiet takes courage, would have been vastly rewarding.

  12. JAWS,

    It is a mere conclusion masquerading as a legal thought.

    It is empty and meaningless. It ignores what the exception to the printed matter doctrine actually means and it has been covered many, many, many times.

    No one in an honest and thoughtful position would advance such a bankrupt view.

  13. Also,

    What do you mean “While the same lack of functional relationship” ?

    There is no lack of functional relationship.

  14. When the difference between the claimed subject matter and the prior art lies in new information or a new step, wherein the information or the step might provide a new utility not in the old process (or machine or article manufacture) claimed but in a different process that is not claimed, or as in this case, when one adds to an old article of manufacture a set of program instructions that provide a new functionality, not with the article manufacture being claimed, but with a machine or process that is not claimed, the additional material does not define over the prior art.

    Try as I might to diagram that sentence and make some sense out of it I cannot.

    Can you say that in English?

  15. Ned: “OFFENSIVE, you have to be AI as he is peculiarly fixated on “claims as a whole” and does not understand that that doctrine relates to obviousness and to 101 per Flook and Diehr. ”

    Now can you provide the proper pin cite where the Court specifically says that claims as a whole doctrine only applies to 101 and 103?

    If not, just be an honest man, admit you were wrong, learn something and move on.

    Oh, and Ned, you accusing other commenters of being myself, every time you are backed into a corner with logic and case law , is getting rather old,

  16. Simple, the same problem identified by the Government brief in Prometheus with the claims in that case applies with equal force here.  When the difference between the claimed subject matter and the prior art lies in new information or a new step, wherein the information or the step might provide a new utility not in the old process (or machine or article manufacture) claimed but in a different process that is not claimed, or as in this case, when one adds to an old article of manufacture a set of program instructions that provide a new functionality, not with the article manufacture being claimed, but with a machine or process that is not claimed, the additional material does not define over the prior art.

    While the same lack of functional relationship to the claimed subject matter of the new information or steps could form the basis of a section 112 paragraph 1, 2 rejection, the government brief did not address that issue. However, I think there's some merit to such a rejection.

  17. This creates a problem with them in terms of 102/103/112.

    What is the 102 problem?

    What is the 103 problem?

    What is the 112 problem?

  18. That’s a mistatement of the exception to the written matter doctrine Ned.

    It is not a mistatement of the exception per se.

    It is a mistatement of fact.

    The subject matter of the programming must have a functional relationship to the article of manufacturing or otherwise, the article of manufacturing would not exist. The only reason for the existence of the article of manufacturing is to serve its functional purpose, that of fixing the software in a tangible medium so that that software can be configured into a machine and make that machine a new machine. If there was no functional relationship, the tangible medium would not be able to transfer the software.

    Ned’s error is trying too hard to make this functional relationship exotic. It simply need not be so. It merely needs to have a functional relationship. See the hat band case. See the measuring cup case.

  19. “How do you explain the new definition by the Office on “technological invention” which drags “claims as a whole” directly with both anticipation and novelty?”

    The Office is AI!

    Ned could be another Lincoln with the thoughts that he be thinking if he only had a brain.

  20. your knowledge of my post there betrays you.

    It’s a bit of hubris to think that only certain people have been watching you get torn to shreds on that thread.

  21. AI is not the only one fixated on “claims as a whole.”

    How do you explain the new definition by the Office on “technological invention” which drags “claims as a whole” directly with both anticipation and novelty?

    How do you like them apples?

  22. You spend too much time posting and not enough time following the law.

    The Office removed its newly proposed rule changes for 1.56 because of the “passage of the AIA.”

    This happened what, two months ago now?

  23. The subject matter of the programming has no functional relationship to the article of manufacture

    That’s a mistatement of the exception to the written matter doctrine Ned.

    Watch your strawmen.

  24. You know, AI, is becoming very clear that you post under a lot of different monikers. You pretend to be a large number of different people, but your uniform language and opinion betrays you. Every now and then you slip up, saying you posted something before, and when you look it up, lo and behold, the post was there but with a different moniker.

    You, AI, are and exceeding sick person and you really need to get help.

    As to Mooney, he is a delight just like 6. He will tear you a new one if you say something stu …id. But, he will listen to you and respond with intelligence. I have always had very enjoyable discussions with the man. I think you would too if you were not so much of a narcissistic braggart.

  25. OFFENSIVE, you have to be AI as he is peculiarly fixated on “claims as a whole” and does not understand that that doctrine relates to obviousness and to 101 per Flook and Diehr. (However, parsing claims into old and new elements for 101 purposes does not seem to be correct as novelty should have nothing to do with patentable subject matter.) It does not have anything to do with novelty or even with 112.

  26. OFFENSIVE, your knowledge of my post there betrays you.

    Yes, I believe any claims directed to an article of manufacture passes 101. I have been converted by the Government brief in Prometheus.

    But that does not end the problem with B-claims. The subject matter of the programming has no functional relationship to the article of manufacture. This creates a problem with them in terms of 102/103/112.

  27. “the pea-brained troll MM with a comment that adds nothing and merely proclaims an opinion that is completely unsupported”

    MM’s entire posting legacy summed up in one sentence. Impressive!

  28. And, do you really, really believe there is nothing at all wrong with B-claims? They are a joke!

    According to your post on the 500+ thread, they are not a joke – they are “fixed” as your requirement goes.

    So who is the joke?

    As to 1.56, you do realize the Office has pulled the new version, right?

    As to “where the point of novelty,” don’t you ever realize that the claim as a whole is the point of novelty?

    I think the “joke” question becomes rhetorical at that point.

  29. “The exceptions to the Written Matter Doctrine are clear in the Beauregard case and the fact that enough controlling law exists makes any such action by the PTO “to bring the novel issue to the courts” moot.”

    The WMD and the exceptions thereto are totally irrelevant to a Beauregard claim properly construed. Why do you guys keep bringing it up?

  30. OFFENSIVE, you make a good, solid point on the Rules Package.

    But I counter with Rule 1.56.

    Next, DNA and gene patents.

    And, do you really, really believe there is nothing at all wrong with B-claims? They are a joke!

    Next claims to re patenting old diagnostics procedures where the point of novelty is in the information produced?

    And the beat goes on?

    Either the Solicitor or the Commissioner or the Director, as the case may be, is asleep at the wheel in case after case. They should take novel legal issue to the courts and not decide them themselves, or set up a rule (1.56) that has an substantive effect after the patent has issued.

  31. By pulling the plug, the PTO effectively “decided” the legal issue themselves. THIS they do not have the authority to do.

    Unless of course they realize that they their position was wrong to start with and that existing, governing law controls.

    The exceptions to the Written Matter Doctrine are clear in the Beauregard case and the fact that enough controlling law exists makes any such action by the PTO “to bring the novel issue to the courts” moot.

    The Office wastes enough money chasing their illegal power grabs (Anyone tally how much was spent on Taffas and the aborted training?). They do not need to be encouraged to waste more.

  32. Yes.

    The PTO owes a duty bring novel issues of law to the courts and not decide these issues by themselves. Their decisions, while “interesting,” are not the law. They bind no one and at times create chaos.

    The patentability of so-called Beauregard claims has never been decided by the courts. Why? The PTO pulled the plug on IBM’s appeal and unilaterally began issuing such claims. IBM was displeased by this decision as it expected to win the appeal. By pulling the plug, the PTO effectively “decided” the legal issue themselves. THIS they do not have the authority to do.

    What we can see from all this is that the PTO has been governed at times by arrogant fools who do damage to society by keeping issues of law from the courts until the damage is almost beyond remedy.

    Thus it is that one of the Federal Circuit panelists in this case abdicated her role an Art. III judge, deciding to defer to the PTO even while expressing her opinion that the PTO was wrong.

    (That 2 out of 3 of the panelist that think the PTO is and was wrong on issuing isolated DNA patents.)

  33. Interestingly, the first gene patent was issued in 1906. However, with the recent discussion of whether a gene can be patented and having the decision hinging on the Supreme Court, I wonder what will happen if it does get denied. It will approximately affect over 8,000 patents related to human engineered genes (you can see the number of gene patents available here: link to bit.ly ).

    Any thoughts?

  34. The Challenge (met by none):

    Write a definition without circularity (and without using either technological or technical) for:

    § 42.301(b) Technological invention.

    On the thread link to patentlyo.com
    I noted to Paul Cole’s comment of “Anyone able to provide a straightforward definition of that simple word will earn a major prize.”

    I posted a several comment long answer to this topic (which oddly enough once again trips the filter once again, even without the Diehr references).

    The comment is roughly half way down the comment string.

  35. a dozen or so posts on this thread alone

    Noisy gongs only support the noise itself and not the legal principles that one would espouse in the absence of noise.

    In other words, the post at 8:52 is meaningless and proves nothing, except that the blog is full of meaningless posts. This runs directly to the fallacious “Say a lie often enough it becomes the truth.”

    BigGuy deserves a Big So What?

  36. BigGuy looks an awful lot like the pea-brained troll MM with a comment that adds nothing and merely proclaims an opinion that is completely unsupported.

  37. …at least according to Max.

    Max is the last person I would look to for legal understanding, even of the EP.

    He is the Euro-6 buffoon.

  38. Just making one point I made in the above post more clear. See correction below:

    “Ned: “At seems clear that machines, articles of manufacture and compositions of matter have always been deemed to be within the useful arts. ”

    AI: And according to the statute, processes have been within the useful arts as well.

  39. Ned: “You have butted into a conversation on an entirely different topic, a conversation about a definition the PTO must adopt for the term “technological.” Whether technological is in the Constitution is completely beside the point.”

    AI: If you indeed want to create a definition that is not Constitutional, then what is and is not within the Useful Arts is entirely on point.

    Ned: “You are what is known in the law as a meretricious interloper, and in psychology as a demented psychopath.”

    AI: Ned, no one is impressed with your juvenile invective. But what would be impressive is to demonstrate that you have a superior command of the law . Thus far on these topics, ( business methods/101, Useful Arts) you have failed to do so.

  40. Your post is laden with false assumptions. To keep you honest I will point them out below.

    Ned: “At seems clear that machines, articles of manufacture and compositions of matter have always been deemed to be within the useful arts. ”

    AI: And according to the statute, processes.

    Ned: Processes, as defined in cases like Corning vs Burden, were also included.

    AI: Processes have not been limited to the type of processes used in Corning vs Burden, which is a case from the 1800’s iron age.

    Ned: But as we found out later in cases like State Street Bank and in Bilski, not all processes comprising a series of steps are deemed to be within the technological arts.

    AI: False. SSB and Bilski merely acknowledged the Court created judicial exceptions such as abstract mental processes that already existed. Those exceptions did not begin with these cases. And in no why were processes limited to any particular definition of technology, or technological arts.

    Ned: That’s why we have to limit processes as I limited it them in my definition.

    AI: False. Your conclusion is based on a faulty premise as demonstrated above. There is no Constitutional, Congressional or Judicial mandate to limit processes beyond the already existing Court created judicial exceptions that apply to all categories of statutory subject matter.

    There, cleaned up all your false ASSumptions.

  41. looking glass: “I was going to go into the fact that processes are a statutory subject matter apart from the other classes and that you had needlessly conflated the classes (your application to MAC is not what the law is), but your nemesis beat me to the punch. Your putdowns of that person (AI) whom outdoes you on such a consistent basis smacks only of sour grapes.”

    Uh Oh. Now you did it. Ned will accuse you of being (Actual Inventor) and proceed to denigrate you and ignore any valid points of law you may bring up. Thus he never has to be held accountable for the law.

  42. Ned: ” The question is whether the patent office should look to EP law to carry out its mandate to describe “technological.”

    No Ned, when you describe “technological” you are describing the universe. Therefore the PTO should look to Quantum Physics for it’s understanding, not a social bureaucratic system based on and governed by pre 1925 thinking.

  43. Ned: ”
    Because the EPO law regarding what a technical effect is has been well developed …at least according to Max.”

    And Malcolm is usually right and 6 a genius, according to Ned Heller.

    Hey Ned, how about just answering the question next time rather than making these comical appeals to bogus authority.

  44. BigGuy, the USA IS the undisputed leader in inventions and technology.

    This is a historical fact.

    The EPO mindset, and definitions ,when it comes to business methods, and technology in particular is tethered to the 1800’s.

    So why would we want to model our definitions, especially of technology, after theirs?

    Ned, and other anti patent commenters favor such an approach because it would limit the scope of patents and severely retard, rather than the promote the progress of the useful arts.

  45. AI, obviously, you do not even know what we are talking about.  You have butted into a conversation on an entirely different topic, a conversation about a definition the PTO must adopt for the term "technological."  

    Whether technological is in the Constitution is completely beside the point.

    But this post of your does illustrate just who you are.  You are what is known in the law as a meretricious
    interloper, and in psychology as a demented psychopath

  46. I am not.

    I am not attacking your definition for being incomplete.

    I am not attacking your definition.

    I am not attacking ANY definItion.

    Why?

    Because there is no technology requirement in the Constitution for patents.

    PERIOD!

  47. The question is whether the patent office should look to EP law to carry out its mandate to describe “technological.”l

    W

    T

    F

    Why should it do that? Why not the reverse? Aren’t we the better “technological” country? Maybe we should model our technological limitations on Botswana…

  48. Sorry for the misquote.

    However, the question really is not whether YOU should accept EP law.  The question is whether the patent office should look to EP law to carry out its mandate to describe "technological."l

  49. A claim that does not manipulate anything in the physical world necessarily manipulates things only in the imagination.  I assume that you would agree that things that exist only in imagination are not technological?

    Just for example, should I file a patent application that describes and claims an improved method of counting the number of angels on the head of a pin, I would hope you would agree that such a claim, and such invention is not technological.

  50. By the way Ned, that’s yet another example of “strawman” which on annother thread you denied aver doing.

    It seems that you do it far more often than you think.

  51. why should YOU accept US law?

    W

    T

    F

    Accept Ned, that never was the question. The question wasn’t whether I should accept US law. It was why should I accept EP law.

    The EP law you and MaxDrie tried to import as I first noted in my comments at Feb 22, 2012 at 12:38 PM.

    Those very same comments that you still have not provided an answer to.

    If you spent half as much time actually providing answers as you do dancing around not providing answers, the discussion would be able to move forward instead of bouncing back to you and what you do not provide.

  52. are deemed to be within the technological arts

    W

    T

    F

    And the price of tea in China is what?

    Technical arts does not equal useful arts.

    This is a fact. Gone over many times by many people. Your selecteive re-editing of the law is not proper. No manner how many times you do it.

    Are you trying to be obtuse?

  53. Looking glass, this is not really simply a recital from 35 USC §101. It looks to the history of the development of patentable subject matter. At seems clear that machines, articles of manufacture and compositions of matter have always been deemed to be within the useful arts. Processes, as defined in cases like Corning vs Burden, were also included. But as we found out later in cases like State Street Bank and in Bilski, not all processes comprising a series of steps are deemed to be within the technological arts. That's why we have to limit processes as I limited it them in my definition – two methods of making and using MAC's, the processes that modify physical things or use physical things, or processes that must be performed at a specified time.

  54. Ned,

    I was going to go into the fact that processes are a statutory subject matter apart from the other classes and that you had needlessly conflated the classes (your application to MAC is not what the law is), but your nemesis beat me to the punch.

    Your putdowns of that person (AI) whom outdoes you on such a consistent basis smacks only of sour grapes.

    As for what the Supreme Court has argued about Useful Arts,

    W

    T

    F

    there too, you have been shown to be incorrect. I think Anon did that.

    Finally, you still do not address why I should be inclined to accept any non-US law wholesale.

    W

    T

    F

    How many times do I need to ask the question?

    Obtaining straight forward answers from you is much too difficult and time consuming. I do not have the patience to keep you on task, so if you don’t give me an answer in the first or second time, I will just assume that you don’t have an answer to give.

  55. Ned Logic On Parade : “Ned it does not speak well of you if the person you claim is not intellectually qualified to post here gets the best of you when it comes to your favorite subject of law. If such a person should not speak, what type of silence should you be subjected to?”

    Ned Heller can’t engage in a discussion of 101 on the merits . He knows his agenda to subvert the law will be exposed once the call for Actual Case Law is made.

    Any conclusion from Ned’s anti patent conjecture would, as the Court said, “violate the canon against interpreting any statutory provision in a manner that would render another provision superfluous. See Corley v. United States, 556 U. S. ”

    He can’t even put together cogent arguments for policy change or competently discuss history on the subject.

    Thus he is compelled to do the only thing he can, resort to juvenile ad hominems.

  56. Ned: Regarding MAC and methods of making and using MACs, there should be no controversy. This was argued to the Supreme Court as what Useful Arts meant.

    AI : And it failed. The Court refused to adopt this line of thinking from Stern, that would limit innovation to inventions of 1790.

    Useful Arts, as its used in the Constitution has a much broader definition.

    Ned, you need to brush up on your Con law.

    Or at the very least stop conflating your “Should Be Law” with “Actual Law”

  57. Ned: “If a claim covers a machine, article of manufacture or a composition of matter, or a method of making or using a machine, article of manufacture or a composition of matter, the claim is directed to a technological invention”

    AI: Your problem is that “processes” is an independent category of patentable subject matter. A process is not tied to nor dependent on a machine, article of manufacture or a composition of matter. That is only your wishful thinking and/or inherent intellectual dishonesty at play.

    Here read the “Actual Law” as opposed to your “should be law” :

    BILSKI ET AL. v. KAPPOS:

    Section 101 defines the subject matter that may be patented under the Patent Act:
    “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.”
    Section 101 thus specifies four independent categories of inventions or discoveries that are eligible for protection: processes, machines, manufactures, and compositions of matter. “In choosing such expansive terms . . . modified by the comprehensive ‘any,’ Congress plainly contemplated that the patent laws would be given wide scope.” Dia- mond v. Chakrabarty, 447 U. S. 303, 308 (1980).

  58. SA, are you aware of any other case like this one where the Supreme Court did not take certiorari under circumstances where the government filed an amicus brief before the circuit court supporting the District Court opinion, and where the District Court was reversed?

  59. Hey, looking glass, I think I did cover processes: of making and using Machines, Articles, Compositions (“MAC”).

    Next I covered general methods (processes) that modify or use anything physical, or which must be accomplished in specific time, e.g., are required to exist in and affect time-space.

    Regarding MAC and methods of making and using MACs, there should be no controversy. This was argued to the Supreme Court as what Useful Arts meant.

    Regarding the last part, physicality, I take that directly from all the SC cases that uniformly say that physicality is the clue.

    Time also exists in time-space.

    That about sums it up.

    If you can improve on this, please give it a shot.

  60. Ned,

    WW

    TT

    FF

    1)
    You left out one critical parameter from the law in your 2:31 post:

    Processes.

    Any type of “technological” or “technical” definition must caover all of the permitted classes of patent eligible subject matter.

    2)
    your post in no way address the EPO body of law and why I should be even remotely inclined to accept such foreign things.

  61. Looking glass, try this:

    If a claim covers a machine, article of manufacture or a composition of matter, or a method of making or using a machine, article of manufacture or a composition of matter, the claim is directed to a technological invention. A claim may be directed to a technological invention even if covers something other than the first sentence if it modifies or requires the use of anything physical, or if it must be accomplished in a specific time.

  62. Even more reason Ned to be clear about what the definition means.

    Even more reason to criticize the apparent circular nonse the Office put out.

    Can you write a definition that is not circular>

  63. EG, at the Supreme Court, amicus briefs are almost never filed supporting the respondent at the petition stage. Amicus briefs supporting the respondent are counterproductive and just signal to the court that the case is really important, thus increasing the odds of a cert grant. The court will not get the impression that potential amici only agree with petitioner’s view.

    If the court grants cert, then there will almost certainly be many more amicus briefs filed on both sides addressing the merits.

  64. EG, at the Supreme Court, amicus briefs are almost never filed supporting the respondent at the petition stage. Amicus briefs supporting the respondent are counterproductive and just signal to the court that the case is really important, thus increasing the odds of a cert grant. The court will not get the impression that potential amici only agree with petitioner’s view.

    If the court grants cert, then there will almost certainly be many more amicus briefs filed on both sides addressing the merits.

  65. I think we are trying to define technological so that we can distinguish claims to techonological inventions from those that are not.  Novelty seems to have no place.
     
    I would propose this:
     
    If a claim covers a machine, article of manufacture or a composition of matter, it is per se technological.
     
    If a claim covers a system or method, the claim is technological if it has a technical effect.  Ref. EPO law.
     

     

  66. Looking glass, it was congress that used the term that is so well developed in the EPO.

    Besides, this is just for the interrim special BMP review. It is not intended to apply to 101 generally.

  67. look to the EPO… That would bring in a well developed body of law

    and

    the next step is to incorporate into US jurisprudence the entire 30+ years of EPO caselaw on the subject.

    W

    T

    F

    Exactly who will be bring in this wholesale foreign law into US law? The courts? That would be ultra vires. The Congress? good luck, they have already moved on.

  68. In addition to not defining technical, I don’t understand

    1. recite

    2. claim as a whole in this context

    3. why BOTH novel and unobvious

    Claim cover things. See, e.g., Section 112, p.6.

    Claim as a whole is necessary only if obviousness is necessary.

    If a claim covers a novel technical solution that should be enough.

    Now, WRG to technical, look to the EPO. Make a specific reference. That would bring in a well developed body of law to help us on this issue.

    Actually, I don’t even understand why there has to be novelty at all?

  69. but when the critical question is dependent on the word in question

    Have IANAE explain his blue toothbrush to a blind person.

  70. “None of the major patent law associations filed briefs in the case.”

    I do find it surprising that AIPLA, IPO, and definitely BIO, didn’t at least file amicus briefs, even if they did so without supporting Myriad. It’s possible (but not likely) that there was a “split” in either the amicus committees or Board for these organizations.

    But given that these organizations filed amicus briefs for the Federal Circuit, not filing amicus briefs during the petition for certiorari phase seems strange, and is, in my opinion, a tactical mistake because it gives the unfortunate impression that the potential amici only agree with petitioner’s view (e.g., ACLU, PubPat, etc.) which isn’t true. Admittedly, those amici will have an opportunity to submit briefs if the petition is granted, but submitting those briefs now might have shown to SCOTUS that the views on this case aren’t “one-sided” by those not party to this case.

  71. Nice, but when the critical question is dependent on the word in question, such circularity is defeating.

    But let’s see you take up Shilling’s challange: Now explain this without using the words “technological” or “technical.” Put your cleverness to some actual use.

    By the way, “blue” could easily be described in technical terms as reflecting light between certain wavelengths.

  72. Ah, now I see your viewpoint. Fair enough.

    Rule 42(c) of the 1973 EPC has it that an invention is the solution to a “technical problem”. Rule 43(1) requires that the claim defines the invention in terms of “technical features”. These fundamental Rules, after all that time, guesting at the USPTO will unfortunately only increase the level of complacency within the EPO.

  73. another judicial nightmare

    That’s not for me to decide, but I do think that this particular definition is akin to using the word “blue” in a definition of “blue toothbrush”, which definition is along the lines of “a toothbrush wherein either 40% of the handle is blue or wherein all of the bristles are blue”. That’s a perfectly fine definition, though it uses “blue” twice and it doesn’t even attempt to define what “blue” means. It’s a definition of where on the toothbrush the blue has to be.

  74. “Nothing wrong with using “technological” or “technical” in that definition.”

    …….just as long, IANAE, as you are not sleepwalking into another judicial nightmare, or leaping out of the abstract frying pan into the technical fire.

  75. Nothing wrong

    Except for the fact that the entire thing is circular.

    Except for that, sure there is nothing wrong.

    Back to the Tower with you!

    Here in full glory:

    § 42.301(b)

    Technological invention.

    In determining whether a patent is for a
    technological invention solely for
    purposes of the Transitional Program for
    Covered Business Methods (section
    42.301(a)), the following will be
    considered on a case-by-case basis:
    whether the claimed subject matter as a
    whole recites a technological feature
    that is novel and unobvious over the
    prior art; and solves a technical problem
    using a technical solution.

    Now explain this without using the words “technological” or “technical.”

  76. I just read Quinn’s review, and was singularly unimpressed with his sycophantic attitude toward the panelists.

    I had just written a huge post which I have now deleted, on Rader, institutions, organizations, you name it.

    But my statesmanship seems to have abandoned me today. I feel like it’s all pi$$ing into the wind.

  77. the USPTO’s definition of “technical,”

    Firstly, it’s not a definition of “technical”, it’s a definition of “technological”.

    Secondly, it’s not a definition of “technological”, it’s a definition of “technological invention”.

    It’s a definition of what aspects of the invention have to be technological for the invention to count as a technological one. It’s not a definition of what “technological” means. Nothing wrong with using “technological” or “technical” in that definition.

  78. When the court decides to “relist” a petition to the next conference, that usually shows up on the docket the same day or the day after the orders list. If there isn’t a new docket entry posted this week scheduling the case for the next conference, then you can be pretty sure that the court is holding the petition pending the release ofMayo, at which point it will probably either grant, deny, or remand for further consideration in light of Mayo.

  79. No, PMP, I don’t. It hasn’t even started that long journey.

    But judging by the USPTO definition, borrowed from Europe, the next step is to incorporate into US jurisprudence the entire 30+ years of EPO caselaw on the subject. Of course, being in a civil law jurisdiction, the EPO doesn’t do Binding Precedent. That makes a difference, when trying to reach consensus on what is meant by “technical character”. No SCOTUS definition needed, at the EPO.

  80. So what do you think of the USPTO’s definition of “technical,” (in the new proposed rules) in which circularity of “technical” or “technilogical” is used three times in the definition?

    Do you think the US has reached that binary Y/N understanding?

  81. Coming as I do from the home of “technical” as the yardstick, it is bad form, I think, for me to say anything negative about “abstract”.

    I contend that, at the EPO, after thousands of cases, “Technical character?” has by now boiled down to a binary Y/N matter. Can that ever be so, anywhere in the world, for the question “Abstract?”.

  82. Max, so now Rader is complaining about the lack of a bright-line-rule? He is the one, personally, who is the most at fault for today’s lack of clarity. He is the one that constantly complains that section 101 is little more than gestalt, when at the same time he announces the Gestalt rule, i.e., that the claims and Bilski were abstract without explaining why they were abstract.

  83. Is this a CATCH 22 situation? The CAFC is in a fog, so the case goes to the Supreme Court, to blow it away. But even as that happens, the sinking heart of the CAFC knows (going by Rader CJ’S recent remarks to Don Dunner, as reported by Gene Quinn) that far from blowing away the fog, SCOTUS, with its inability (disguised as reluctance) to formulate a bright line rule, is just going to make navigation even more of a challenge for the CAFC.

    All good for litigators, no doubt. And what’s good for litigators is good for America.

  84. Ned: ” Now, for all to see, repeat your often repeated statement that Bilski held that business methods were held to be eligible subject matter? ”

    AI: Ned, business methods are statutory because they fall under “process” in the statute. What you need to learn is that the only time a process is non statutory is when the Congress passes a law that specifically says so, or the Supreme Court makes a judicial exception and declares the process non statutory. Abstract mental processes comes to mind as one such example.

    The Court had the opportunity to declare business methods non statutory when it was specifically asked to do so in Bilski.

    However the Court did not so hold and business methods continued to be statutory subject.

    Shortly after the Congress had the opportunity to declare business methods as non statutory with the passage of the AIA.

    Again the Congress chose to allow business methods to remain statutory subject matter.

    These are the facts.

    And I can’t understand why any so called licensed patent attorney would argue the contrary.

  85. Ned: AI, by using illogical reductio ad absurdem arguments, you have demonstrated for all to see that you, sir, are not intellectually qualified to post here.

    AI: Ned, I am not making any type of arguments. I am merely summarizing your arguments for which you have become quite infamous.

    Did you not argue Malcolm is usually right?

    Did you not argue 6 is a genius?

    Did you not argue that since Bilski’s business method was ruled non statutory subject matter that all business methods are non statutory subject matter?

    If I am wrong about any of the above please take this time to correct yourself.

    Otherwise I find It quite odd that you would then make a post accusing me of saying what you said, then condemning me for your arguments.

  86. Hmmph. I thought Ned Heller had the lock on illogical reductio ad absurdem arguments. Wasn’t that during his Kantian phase (before he realized that Kant abhors falsehoods)?

    Ned it does not speak well of you if the person you claim is not intellectually qualified to post here gets the best of you when it comes to your favorite subject of law. If such a person should not speak, what type of silence should you be subjected to?

    The holding of the court in Bilski was that the claims were rejected because they were abstract, NOT because they were business methods. After all this time you still don’t get it.

    BTW, AI your post of 5:25 was so dripping in irony that Ned is red from the rust. Way to slam the trio in only three sentences. Very efficient.

  87. MM: Don’t feed it, Ned

    AI : Translation; “Ned don’t respond to any post that requires solid facts, sound logic and gasp…actual case law! Or simply don’t talk to anyone but me cuz I like the attention and having a friend, and on, AI has cooties!”

  88. AI, by using illogical reductio ad absurdem arguments, you have demonstrated for all to see that you, sir, are not intellectually qualified to post here.

    Now, for all to see, repeat your often repeated statement that Bilski held that business methods were held to be eligible subject matter? Follow that with your often repeated statement that the claims in Bilski were not business method claims, because if they were, your initial statement that they were eligible can not be reconciled with the holding of the court that they were not.

  89. Malcolm, apparently not.

    Here is a snippet from one of the amici:

    "This case presents the issue of whether 
    human genetic material, or a segment of the 
    human genome, upon isolation and/or extraction 
    from the body, constitutes patent eligible subject 
    matter as defined in 35 U.S.C. § 101.  To be clear, 
    the patents now at issue  do not claim a means of 
    isolating or extracting the gene; they claim the 
    gene itself as invention.  The U.S. District Court 
    held that the genes as defined in the patent claims 
    are “products of nature” and fall squarely within 
    the judicially recognized exceptions to patentable 
    subject matter.  On appeal, the Federal Circuit 
    panel affirmed the lower court’s invalidation of 
    method claims but reversed its invalidation of 
    composition claims holding that the genetic 
    sequences themselves were  indeed patent eligible.  
    The panel was divided and produced three separate 
    opinions, including one concurrence and one 
    dissent.  Writing for the majority, Judge Lourie 
    concluded that the mere  isolation of a gene 
    sequence was alone sufficient to qualify the genetic 
    material as a product of human invention, despite 
    the fact that the nucleotide sequence of the gene 
    had not been altered, added to, reduced, or 
    manipulated in any way. 
    The Federal Circuit’s decision as presented 
    in the majority opinion is irreconcilable with this 
    Court’s prior teachings on the scope of § 101. 

  90. MM: “The claims that recite no transformative step whatsoever and cover methods of merely looking at a DNA sequence and thinking about what the sequence “means”?”

    AI: 1. There is no requirement in the statute or by the Court for a “transformative step”, in any invention whatsoever.

    2. There are no patents of merely “looking” or “thinking”, period.

  91. Is the petition limited to the question of isolated DNA? IIRC, there were process claims involved as well.

    The mxrxns are appealing the process claims? The claims that recite no transformative step whatsoever and cover methods of merely looking at a DNA sequence and thinking about what the sequence “means”? The claims that the CAFC spent two seconds grinding into dust? Really????

    Really?

  92. And because I used hook and loop on my Window Winch model, when I clearly told him I would use screws.. you think you can steal it too?

  93. Malcolm, if the Court denies Human Gene Patents then according to “Ned Logic” ALL bio patents are now non statutory. Do you agree Since Ned says you are always right.

    Of course if you are not sure we can always ask 6, since Ned says he is a genius.

  94. Although the Mayo case focuses on medical methods rather than genes per se, there is still a good chance that outcomes will be linked.

    Good grief. We should all hope / pray that is not the case as the 101 issues raised by the two cases are as about as distinct as they can possibly be.

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