by Dennis Crouch
Mayo Collaborative Services v. Prometheus Labs., Inc. (Supreme Court 2012)
A unanimous (9–0) Supreme Court has held that the personalized medicine dosing process invented by Prometheus is not eligible for patent protection because the process is effectively an unpatentable law of nature. This decision reverses the Court of Appeals for the Federal Circuit’s holding that the claims were patentable because they included substantial physical limitations.
The Prometheus invention identifies a “relationships between concentrations of certain metabolites in the blood and the likelihood that a dosage of a thiopurine drug will prove [either] ineffective or cause harm. Claim 1, for example, states that if the levels of 6–TG in the blood (of a patient who has taken a dose of a thiopurine drug) exceed about 400 pmol per 8×10(8) red blood cells, then the administered dose is likely to produce toxic side effects.” In addition to claiming the boundaries between over and under dosage of thiopurine based upon measuring 6–TG in the blood, some of the Prometheus claims include additional limitations such as (1) administering thiopurine to a patient and (2) determining the blood level of 6–TG.
Law of Nature: In its decision, the Supreme Court first identified the correlation between 6–TG blood levels and over/under thiopurine dosage as an unpatentable law of nature.
The relation is a consequence of the ways in which thiopurine compounds are metabolized by the body—entirely natural processes. And so a patent that simply describes that relation sets forth a natural law.
As is usual in these cases, the Court referenced the groundbreaking discoveries by Einstein and Newton and noted that neither “E=mc²” nor the “law of gravity” would have been subject matter eligible. Taking that as a premise, the court jumped to the conclusion that, therefore, the discovery that the blood level of 6–TG in a human correlates with either an overdose or underdose of thiopurine is also subject matter ineligible.
Additional Elements: The Supreme Court then considered the additional limitations and held them insufficient to transform the identified natural law into a patentable process. The opinion repeatedly and favorably cites Parker v. Flook, 437 U. S. 584 (1978) in finding that the physical and transformative elements of the invention were not “genuine applications of those laws[, but] rather .. drafting efforts designed to monopolize the correlations.” As to the claimed application of the law of nature, court here found it relevant and important that the additional steps were already known in the art.
Because methods for making such determinations were well known in the art, this step simply tells doctors to engage in well-understood, routine, conventional activity previously engaged in by scientists in the field. Such activity is normally not sufficient to transform an unpatentable law of nature into a patent-eligible application of such a law.
The conclusion here is that (1) a newly discovered law of nature is itself unpatentable and (2) the application of that newly discovered law is also normally unpatentable if the application merely relies upon elements already known in the art. To be clear, the court still maintains the law of Diehr that “an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection.” On the other hand, the “application” must be “significant,” not “too broadly preempt” use of the law, and include other elements that constitute an “inventive concept” that is significant and separate from the natural law itself. Of note, it is likely important that in this decision the court unfavorably cites the limitation of Flook found in Diehr that eligibility under § 101 “must be” based on claims “considered as a whole.”
Process and Presumption: In addition to the legal elements, the decision can be read to create a process for determining patent eligibility for patent claims that include a law of nature. The court wrote that the “additional features” that show an application of the law must “provide practical assurance that the [claimed] process is more than a drafting effort.” This language suggests that the burden will be on the patentee to prove that its limitations are more than patent attorney tricks.
Whither Myriad: Although no action has been taken yet, I presume that the Supreme Court will now vacate and remand the pending Myriad case with instructions to the Federal Circuit to reconsider its holding that isolated human DNA is patentable. Following Mayo, the court could logically find that the information in the DNA represents a law of nature, that the DNA itself is a natural phenomenon, that the isolation of the DNA simply employs an isolation process already well known and expected at the time of the invention, and ultimately that the isolated DNA is unpatentable because it effectively claims a law of nature or natural phenomenon. One distinguishing point is that Prometheus claimed a process while Myriad claims a composition of matter. As we have seen in recent cases, the Federal Circuit already largely rejects formalistic distinctions between process and composition claims. Here, that distinction is further minimized by the reality that the claimed DNA is functionally characterized by the already well known process of isolating human DNA.
Read the opinion by Justice Breyer here: LINK.
The following is the text of the now invalidated Claim 1 of the Prometheus U.S. Patent No. 6,355,623.
A method of optimizing therapeutic efficacy for treatment of an immune-mediated gastrointestinal disorder, comprising:
(a) administering a drug providing 6-thioguanine to a subject having said immune-mediated gastrointestinal disorder; and
(b) determining the level of 6-thioguanine in said subject having said immune-mediated gastrointestinal disorder,
wherein the level of 6-thioguanine less than about 230 pmol per 8×108 red blood cells indicates a need to increase the amount of said drug subsequently administered to said subject and
wherein the level of 6-thioguanine greater than about 400 pmol per 8×108 red blood cells indicates a need to decrease the amount of said drug subsequently ad ministered to said subject.
the Fed Cir upheld the D Ct’s invalidation of BRCA1/2 diagnostic claims. Myriad has appealed that part of the decision
No, I don’t think so. Only the eligibility of the isolated nucleic acid composition claims has been petitioned to the Supreme Court.
Those claims will survive 101.
end sockie italics
end sockie italics
NED: “AI, since you seem to come around to the view that business methods are not categorically eligible patentable subject matter, I count you among the converted.”
AI : The ONLY methods that are not categorically eligible patentable subject matter are pure thinking methods. Business methods have no place in that sentence. So stop your silly azz word games. As a Patent Attorney you should have more important things to do with your clients time and more.
“Mention of a vague “inventive concept”; ”
yeah a lot of people use that term, significantly your new US classification system is going to be using the inventive concept to classify documents. It really isn’t that hard to come up with what the inventive concept is in a given independent claim. It really isn’t IBP. Examiners are going to be doing it on a daily basis shortly. So get used to it.
“merely conclusory 101 insignificance of so-called “field of use” limitations; ”
Again, not really all that hard to spot those.
“the naked acknowledgement of the utility requirement; ”
Appropriate.
“merely conclusory policy argument of “occupation of the entire field”;”
Also known as stare decisis.
“the logically nonsensical exclusion from 101 significance of method steps that “trigger a manifestation of an entirely natural process”; ”
That wasn’t “why” it was excluded from 101 significance. Indeed, it was significant in terms of 101. It was blatantly obvious that it was little more than an attempt to make the unpatentable patentable by the drafting art. Why is this so hard for you?
“an essentially useless definition of a “law of nature” that does not enable a 101 test having any particularity;”
really? What is it? I don’t remember seeing that definition.
“the merely conclusory addition of “insignificant PRE-solution activity” without any workable indications of what constitutes significance or how it is achieved; ”
See, you’re looking at this the wrong way, you don’t simply go in and look at whether or not something is significant and check off a little box somewhere “this is significant”. You look at the totality of the circumstance and then evaluate what each part is contributing to the totality of the circumstance. The you evaluate what is achieved by the totality of the circumstance. Here, it is easy to see what is achieved. Effectively you get a patent on the fact recited in the claim. You then go back and say, well, is there anything in this claim that would make me think twice about this determination that I just made? And if so then whatever it is that would make you think that is significant. If there is nothing that makes you think that then whatever else is in the claim is insignificant. Also field of use limitations and those sorts of things are evaluated a bit differently.
This really isn’t that hard to understand if you start off with the proper mindset instead of that which was ingrained in you since lawlschool by the ta rdyers that were teaching patent religion back 20 years ago.
Careful Jon, you will enrage the biggest cl of the site and be labeled a sockie.
“Next, I treat all methods the same”
That’s not even close to being believable.
Ned: Next, I treat all methods the same, as did the Court in Bilksi.
AI: I call Ned Bull Sheet!
You are the anti business method crusader on this blog.
You have thousands of posts arguing against so called business methods which according to your thinking is limited to financial products and some types of software.
But you have not went on a jihad against medical methods, or manufacturing methods, or composition methods.
Why not?
Why have you fought soo long and sooo hard only against what you perceive as business methods?
Then why do you post on this blog and offend everyones intelligence by pretending that you have never been against these so called business methods?
I tell you why.
You are either a troll, or a lying POS, or both.
BTW, I called the PTO and asked if business methods are patent eligible subject matter, and they said yes.
So F you Ned and your GD Holy war.
I see that ego-centricity is not confined to attorneys.
Excellent! Now everybody can claim victory.
But the Fed Cir upheld the D Ct’s invalidation of BRCA1/2 diagnostic claims. Myriad has appealed that part of the decision, and Prometheus should deliver the death knell to those sorts of claims.
Time for the PTO to modify its gene patenting guidelines….
Next, I treat all methods the same, as did the Court in Bilksi. None are categorically excluded.
Use the language of the Court and we will have peace.
And why do you have to have such a selectively tight language, essentially singling out your posts to business methods, at the exclusion of all other types of methods?
That’s the real question.
And that’s the real indicator of someone with an agenda.
As posted, I expect the same arguments in the same frequency against medical methods given this Supreme Court case as you have committed to with the Bilski Supreme Court case. Yet, you have not made the argument even once.
In fact, I noticed you completely fell off the world on the other thread:
link to patentlyo.com
This decision uses an atomic bomb to swat a mosquito
LOOK OUT FOR THE MUSHROOM CLOUD!!!!
/chickenlittle off
Wrong MM.
Look up and go to your next nearby ACLU meeting.
There are plenty of people who think “all such chemicals” should be outside of the patent system for basic humanitarian reasons.
Yeah I know what you’re talking about, and it is a mental “step”. According to the patentee and the way it was drafted. According to the patentee it was drafted to capture people “thinking” after doing the steps that were old in the art. Literally a mental step. It is a mental step that also just so happens to involve a lawl of nature.
Still lolin’ @ u. Anyway, I’m done talking to you, have your say if you wish.
sanex34,
Why would 6 start now? That’s just pesky details for old lawlyer type follks.
“The USSC has itself been 100% consistent with itself over 50 years”
Totally Clueless.
WALL OF TEXT CRITS 6 for 10 million damage!
It is arbitrage that reads that as a mental step. And then ignores it. Next time you could look at what it is that is been discussed. But you are too busy showing how clever you are.
“and therefore requires more effort and capital to apprehend and apply”
If it is harder to apply than the judicial exceptions which are currently blowing people’s fin minds then there is no hope your approach will ever be adopted simply because it is too difficult for anyone to apply.
“2 people who shared precisely the same understanding of just exactly WHAT that analysis actually is;”
Any 2 people that have read my writings on the matter should understand it pretty well. I suppose if I had to I could hold their hands through it.
“Ultimately, I have learned to appreciate these opinions for what they are–big sandboxes, with abundant opportunities for future play–and maybe that’s not entirely a bad thing, ”
I would have to disagree with you. The only place where it is a sandbox is at the CAFC. The USSC has itself been 100% consistent with itself over 50 years. The district courts also by and large are hugely consistent with the USSC. It’s that pesky rogue appeals court that keeps gumming up the works.
Right. That is just like these claims. Determining whether a level of metabolites related to a drug that has been administer tells you that you should adjust the dose is just like thinking about dinner and a movie. Right.
You do understand that I am talking about arbitrage up there right? “Everything after step (b) can be ignored, because they are just “mental steps”” Maybe you should read a thread.
No. It is not. I happen to think that invalidating the claim under 35 USC 101 is correct, because the claims cover any practical use of a law of nature relating a dose of an exogenous substance to a level of metabolites in blood, and this in itself would require the dosing and the blood analysis (and this is in the decision). I don’t agree with bringing 102 or 103 into it. I cannot understand how the decision remarks the danger of bringing 102 and using it in excess and then gives no guideline of what is an appropriate use of it. This will get digested in the office, which has a practical approach of making rules so simplistic that you bet they will be taken to the extreme by some examiners sooner or later (and I never understood why the training does not go through decisions in depth instead of summarizing in bullet points hard and fast rules). This reminds me of the 103 training, where they took a nuanced decision as in KSR and turned it into form paragraphs to follow. They ended up telling us that you didn’t need to address motivation anymore. That was quite absurd I thought, but that is what we got. I can see some steps: look at a claim, find the law of nature or abstract idea, isolate it. Look at everything else. Is it known? 101. That would apply well to this case, but will be absurd in others, particularly when a new algorithm to improve a process is found. I am not saying that is what will happen. But precedents take a life of their own. At times it appears that the Supreme Court has no concept of what role it has, and how each and every decision affects how the law is interpreted. If you think an approach you have taken can be dangerous, limit it. Don’t wait for the mess that will occur to say “This is what we meant”.
“IS there any objective factual evidence that patents increase innovation?”
Nah bro, but I do have anecdotal evidence that patents do increase disclosure.
I’m not critiquing them, I’m making a statement of support of other arts that just happens to be a relative statement. To pretty much simply be saying: the sky is not falling.
“Huh?”
Huh?
Huh?
Huh?
Huh?
Huh?
Huh?
Huh?
Huh?
Huh?
Huh?
Huh?
lolin’ at u bro.
“This guy defines a law of nature as a mental step (his analysis, not mine), then says, I don’t need to consider that. ”
You should really try reading the claim. It would be super helpful to you.
Anyway, I’ll see you in a few years bro, here’s lolin’ at u.
“Maybe you could read the decision”
And maybe you could read up on inherency and about how recognition by those in the art is quite irrelevant.
“It might be inherent that that is the level that works, but it was not inherent in the art as you put it to make the decision based on the level claimed”
There is no step of making a decision ya tard, read the claim, they specifically drafted it to make it that way.
“They claimed changing dosage based on that precise level,”
O rly? Where are those limitations brosensky?
Here, let me copy/paste it for your dumarse:
A method of optimizing therapeutic efficacy for treatment of an immune-mediated gastrointestinal disorder, comprising:
(a) administering a drug providing 6-thioguanine to a subject having said immune-mediated gastrointestinal disorder; and
(b) determining the level of 6-thioguanine in said subject having said immune-mediated gastrointestinal disorder,
wherein the level of 6-thioguanine less than about 230 pmol per 8×108 red blood cells indicates a need to increase the amount of said drug subsequently administered to said subject and
wherein the level of 6-thioguanine greater than about 400 pmol per 8×108 red blood cells indicates a need to decrease the amount of said drug subsequently ad ministered to said subject.
Note that wherein statements (aka “in which” statements) are most definitely not decisions being made.
Go get ya some trainin’ bro. And then read yourself some lawl. Come back in a couple years and I’ll speak to you further, till then I’ll be loling @ u.
Your first question should instead have been “whether there were any Justices SUFFICIENTLY ignorant to unthinkingly assent to the analysis offered”, the answer to which is, quite plainly, “yes”.
MM, you know that you and I see “effectively” eye-to-eye on preferred outcomes, and that we just prefer different ways of getting there.
My way is more rigorous and principled, and therefore requires more effort and capital to apprehend and apply–and both effort and capital are in short supply at the USSC. An approach akin to your own therefore carries the day–but I wouldn’t be so quick to identify with its substance, if I were you–that is, I wouldn’t be so quick to say that I think I know with any clarity what it is likely to mean going forward.
You may honestly believe that it is “a very simple and straightforward analysis”, but I doubt that you could find 2 people who shared precisely the same understanding of just exactly WHAT that analysis actually is; however, they will all agree that it is “very simple and straightforward”, at least insofar as they can interpret it.
As you know, the longer you go in this game, the more you get a “feel” for what is going on, and in that sense, the more seasoned among us are better able to make use of opinions such as this one, doctrinally inadequate though they may be. Those with the best “feel” will be those who have been in it longest, and who are connected to the political and legal pulse of Congress, big lobby, and the courts. I’m always working at improving my feel, and I believe that I can see behind the “real” world of this opinion to the underlying “quantum” legal world, and that I therefore have some sort of advantage relative to those who cannot. My correct prediction of this outcome, and the fact that there is ongoing discussion concerning the 101 effect of a subsequent step of dosing, reinforces my belief in the value of my methods. Rather than seeing this as a “tough break”, in the larger picture it is a resounding victory for my self-construct. After all, you are not the only ego-centric attorney who can claim victory in this case.
But where does all of this leave business? It means they have to hire legal experts. The better the expert, the more they cost…and this is an expert they need BEFORE THEY EVER MAKE A MOVE, which then puts the legal expert in charge of business decisions.
Fine, in a large, diversified organization…but for others, it represents a real problem, and access to the quality of counsel needed presents a real barrier to successfully playing the patent game, IMHO to the actual detriment of innovation and progress.
Ultimately, I have learned to appreciate these opinions for what they are–big sandboxes, with abundant opportunities for future play–and maybe that’s not entirely a bad thing, but it does seem to trivialize the importance of people’s livelihoods.
Sounds melodramatic, I know.
I’m glad Prometheus went down in flames–I knew they should, and I felt they would. I feel that my approach has been entirely vindicated, and more than that, that I have some sort of a unique and better understanding of the 101 analysis.
I look forward to any contribution this opinion can make to future 101 analyses of so-called “business method patents”.
Huh? This guy defines a law of nature as a mental step (his analysis, not mine), then says, I don’t need to consider that. Where do you get that he should get USPTO training that trumps the law? What is the step? The thinking that a certain level is appropriate or not? How is that step inherent, when people did not know what number was right? How could they do that mental step? The purpose of giving the dose is to see if the dose is correct? The purpose of giving the dose is to treat illness, the purpose of analyzing metabolites is to ensure the dose was correct.
Malcolm, I always listen to you and give what you say serious consideration. It turns out in this case, Prometheus, that you are almost 100% right in your analysis. All I can say is, bravo!
The Next, I am not ingnoring that "a" permissible reading of "ARE" is that "all" business methods are categorically eligible. The Supreme Court held in Bilski that business methods were not categorically excluded. Why do you guys have to use such loose language in describing the holding of that case? I can only think that you have an underlying agenda.
What 6 said. It was explained to everyone here many many times that there was simply no way that the alleged prohibition against claim dissection in Diehr was some sort of “absolutist” position that could trump all other considerations. No court, not the Supreme Court and not even the CAFC, treated claims that way. It was a pipe dream repeated ad nauseum by commenters here who were typically too ashamed to post under the same pseudonym more than once.
Tough break, IBP. They do refer to utility at least once, so that aspect of your otherwise incomprehensible analysis wasn’t entirely disregarded. 😉
Instead we are left with such things as “inventive concept” (practically useless), and derived rhetorical descriptions such as “effectively claiming a law of nature itself”, rather than any discussion based on first principles and actual statutory language.
Well, as I’ve been saying, that’s what it all boils down to. The purpose of 101 is to prevent people from effectively claiming abstractions and laws of nature. At least one way to effectively claim either of those things is to prevent people from thinking about them. And “people” definitely includes “people practicing the prior art”, i.e., people practicing “conventional, well-known, old” methods.
[Oldstep]+[newthought] claims are ineligible because they are effectively claims to the new thought, whether that thought is a thought about a law of nature or any other alleged “fact.”
This is a very simple and straightforward analysis. Nobody in these comments ever disputed any aspect of the analysis. The only questions were (1) whether there were any Justices too ignorant to understand the simple analysis, and (2) whether there were any Justices who love patents so much that they would choose to ignore the problem I identified so many times here. The answer to both questions is, quite plainly, “no.”
6, the reason I thought they would not go the way they did is because I believed all that prior discussion in Diehr concerning dissection and novelty.
In other words, you listened to AI instead of me.
Don’t make that mistake again and you’ll be a lot better off.
g that same sequence is a natural phenomenom
But the claim is not to “sequence” information, sockie. The claims is to a novel isolated nucleic acid composition that is as “unnatural” as any other novel isolated chemical composition that might subsequently be found floating in the gonad cells of an Antarctic sea urchin.
Nobody — NOBODY — is seriously proposing that all such chemicals would be suddenly ineligible for patenting under such circumstances. That’s because it’s fxxxxing stxpxd.
Ned, you are back at your semantics again, playing with the word “categorically” and ignoring the generally accepted meaning of the phrase “_____ methods” are eligible subject matter.
What is clearly meant by the phrase is that ANY type of method is eligible to be reviewed under 101 and the (amorphous) exceptions. You are the only one that sets up a strawman different position and you do so in your crusade against the “evil” tha tyou see in this particular category or type of method patent.
What is clearly meant is that there is no specific type of method that is categorically denied even the chance of being patent eligible subject matter.
The attention you receive from the Crusaders is based on the fact that at every opportunity you are proslytizing about the evils of business method patents and how they are not supposed to be covered in the patent system.
Your use of “meretriciously” is inappropriate.
No MPF claim w/o clear indication of the drafter for the claim to be interpreted as such.
TSCO2M, wrong. It is but a presumption that the lack of “means for” indicates that there is not an intent. That presumption is overcome when there is no structure and there is the functional language.
AI, since you seem to come around to the view that business methods are not categorically eligible patentable subject matter, I count you among the converted.
So please stop saying the following, "Business methods ARE eligible subject matter." That is the reason and the sole reason we had the conversation we had.
MOT, in a sense you are right in a sense you are wrong. What I believe happened here is that the court clarified that the only transformation we have to observe is a transformation caused by the otherwise unpatentable law of nature or abstract idea.
C.H., I agree that the decision caught me off guard. I was surprised that they would ignore the transformations exhibited by the old elements of the claim. The Federal Circuit had rested its decision upon those transformations. The government brief, which is usually followed by the Supreme Court, also did not suggest that the Federal Circuit erred in this reliance. I think the Federal Circuit and the government both the drew their clues that one had to take into consideration these old transformations because Diehr had seemed to caution that one could not ignore the old elements as part of the consideration of the claim as a whole. But then along comes this case, and that is exactly what they do. We can only scratch our heads.
Looks like Malcolm and others like him that were arguing for dissection have won the day and persuaded the court that the only transformation that needs to be taken into account is the transformation caused by the otherwise unpatentable law of nature or abstract idea, which is, after all, the "new" element in the claim.
Listen, Next, yes they have and that was the sole reason for the conversation that you butted into meretriciously.
The court was lazy.
And here I had it all laid out for them on patently-o.
Patents are not high on their list of priorities, and maybe they shouldn’t be.
In fact, I don’t believe that patents should be within their purview at all.
This decision could easily be read to support the type of utility-based 101 analysis that I first presented here on patently-o. As various posters upthread have realized, that is what the case boils down to, even though the USSC wasn’t sufficiently either perspicacious or articulate to recognize or state it clearly.
Instead we are left with such things as “inventive concept” (practically useless), and derived rhetorical descriptions such as “effectively claiming a law of nature itself”, rather than any discussion based on first principles and actual statutory language. Why not discuss “effectively” in terms of statutory language and statutory concepts instead?
The court’s fumbling unnecessarily produces apparent absurdities, such as the removal from 101 significance of method steps that “trigger a manifestation of an entirely natural process”, which is doctrinally regrettable, and sure to waste social resources. Interpretation of a phrase like that is not where the real action should lie–the real action should be in the lab, in the garage, and in the shop, where work should be able to be performed efficiently under relatively clear and understandable guiding principles of intellectual property.
I take from this decision that my analysis not only produced an appropriate result, but that it was more doctrinally sound than the USSC’s and did not rely on any political basis, and is therefore better, as it is comprehensible, clear, and repeatable, and as it contributes to greater, rather than less, certainty.
I think that this set of facts an decisions presented the court with a reasonable opportunity to make some headway regarding 101, but that they unfortunately did not take advantage of the opportunity presented to them. I do believe that they intended to, but ultimately were incapable.
As I have posted in the past, I still believe that in the case of process patents, claim dissection can be permissible, if it is used to break the claim into a beginning, a middle, and an end, in the service of identifying the trajectory of the claim as an aid to determining the substantiality of utility.
I was only suggesting to Bakels that the EPO act of issuance, in the face of a statute (Art 52, EPC)that explicitly declares discoveries to be ineligible for patent protection, shows that the claimed subject matter is more than a discovery as such. Thus, this case is perhaps not a perfect exemplar for his proposition, that pure scientific knowledge is becoming a commodity to be monopolised.
C.H.–
You should have stopped with your first sentence.
If you were one of my legal writing students, I would give your comment an F, based on your last sentence.
Gee, isn’t that special what simian Bakels would like. I would just like confirmation that we have national health insurance like in Canada, but wait this is the U.S.A. DOH!
Maybe, but a USSC seat is a primarily political appointment, not a primarily legal one.
My point being that it is more “political writing” than it is “legal writing”.
No, 6, I’ve gone through it with a fine-tooth-comb, and noted it up in 3 different sessions.
Here are some of the deficiencies, or unfortunate aspects of the opinion, IMHO:
Mention of a vague “inventive concept”;
merely conclusory 101 insignificance of so-called “field of use” limitations;
the naked acknowledgement of the utility requirement;
previously impermissible claim dissection;
merely conclusory policy argument of “occupation of the entire field”;
the logically nonsensical exclusion from 101 significance of method steps that “trigger a manifestation of an entirely natural process”;
an essentially useless definition of a “law of nature” that does not enable a 101 test having any particularity;
the merely conclusory addition of “insignificant PRE-solution activity” without any workable indications of what constitutes significance or how it is achieved;
the favorable view of harmonization in support of broader political aims.
Like I said before, I agree with the disposition of this case–but this unanimous decision from the highest court in the land represents squandered opportunity.
We need a specialist patent court. The only good thing here are the result, and the fact that the abysmal CAFC opinion has been superseded; resulting confusion militates against the benefits of the second thing, leaving only the first–the outcome–as the thing to be celebrated IMHO.
“Jack, heuristic algorithm = advanced math, egro any application of it is pure math.”
Hey! Legro My Egro!
BS, wrong. No MPF claim w/o clear indication of the drafter for the claim to be interpreted as such.
Another bad 101 decision. Look, claim 1 recites “administering a drug” which is clearly more than a “law of nature” or an “abstract idea”. Exhibit 1 for Prometheus should have been a live doctor in the courtroom injecting a live patient with the drug.
Andrew–
Your series of posts here is astounding.
My professional advice to you would be to stop posting immediately.
IS there any objective factual evidence that patents do notincrease innovation?
“I remind him that, in the EPO, Prometheus got its claims through to issue.”
Just like it did in the US. So?
The Decision is nonsense used to justify the outcome desired by the judges that wrote it. What “type” of discovery is specified in the statue. The type that the judges find convenient to imagine at a particular point in time? I thought we’re supposed to give words their ordinary meaning…
IS there any objective factual evidence that patents increase innovation? Are there any peer-reviewed journal articles that show this evidence conclusively? People who work in IP just seem to accept that patents increase innovation without completely understanding what is really going on.
“But those in the field did not know the precise correlations between metabolite levels and likely harm and ineffectiveness”. Maybe you could read the decision. It might be inherent that that is the level that works, but it was not inherent in the art as you put it to make the decision based on the level claimed. That was not known. They did not claim that that level was the right spot. That is inherent. They claimed changing dosage based on that precise level, and people did not know what level was the right one. If people do not know that level you cannot say that it is inherent to use that amount in order to make a decision.
That is judicial nonsense. Buy that logic, the light bulb wasn’t new when it was discovered either. One could always make a light bulb by assembling the correct components. Someone just had to come along and bother to do it. Even more so for the airplane, ’cause birds were right there in front of us.
What a meandering mess of an opinion – this looks like a confused, expansive and contradictory opinion from a group who hasn’t really thought things through – not the Supreme Ct. of the land. How is it that the CAFC puts out professional, coherent and nuanced rulings and the Sups come in to patwent law and act like a loudmouth bigot. I’ve discovered penicillin can treat Alzhemier’s. Not patentable – simply adminstering means nothing (apparently its not even a gerund anymore but instead it identifies a category of people). And the action of penicillin on Alzheimers is a law of nature which doesn’t involve human action beyond the adminstering step. Not patentable. Except for the proviso towards the end of the opinion thrown in to say new uses of drugs would be patentable…
OK, so they didn’t think this was patentable – but the loose and sloppy language sets a messy precedent. Using a mallet to splat an aphid.
I think Bakels has in mind a confirmation (lest there be any doubt on the matter) that “discoveries, scientific theories and mathematical methods” (all “as such”, as in Article 52 of the European Patent Convention) ought NOT to be eligible for patent protection.
Bit strawman-ish though, isn’t he? Whoever would dispute his proposition? I remind him that, in the EPO, Prometheus got its claims through to issue.
OK. Whatever that means. “Confirm” eh? What was it that was confirmed? And what does this verb “commodified” mean in this context? And, “all” do you mean by this the innovations that would not be there if not for the inventors?
The simians seem to have forgotten that these are inventions that would not be there but for the inventors.
It is very important that the U.S. Supreme Court confirmed that not all valuable knowledge can be “commodified”, at least not by means of a “property rule”.
“Peppered throughout this judgement are intimations that the claims were seen as being simply “too broad”. ”
“Breadth” is not a 101 issue. Breadth is properly treated with the enablement requirement.
“They could not imagine how to do the job clinically under 102 or 103 so all that was left was to deploy 101.”
No. All that was left was to use the law properly. Buying into the conflation is OK theory is simply an admission that they don’t know and don’t care to know the law enough to apply it appropriately. The damage is done not only to the notion of “natural law,” but moreso to the notion of “human law.”
The portion of the opinion discussing the other portions of the law looks to be an unfinished draft. It is entirely unintelligible.
This decision uses an atomic bomb to swat a mosquito.
Why would this case lead you to the computer and business method critique? This case had neither.
Actually, my equation was not exsiting at the time I “discovered” it.
My equation is not a “law” of nature, becuase it is not an actual fact. It is a man made (by me) emperical tool and a representation of how I believe nature to act.
It is a map.
A map is not the real world.
There have been other maps on this very same territory.
Those maps have been shown to be wrong. Did nature change? Did she rewrite her laws to make these other maps incorrect?
No.
This fact alone, when properly understood, would show to anyone with a quarter of my intellect that the maps I create are merely that: maps.
Only the truly ignorant elevate that which they do not understand to some godly level and try to treat such as unassailable.
While I enjoyed the spotlight from my efforts, I truly was concerned about the deification of those efforts. To read my name taken in vain by Justice Breyer just makes me spin.
Just no question:
The Rise of the Planet of the Apes!!!!!!!!!!!!!!!
Simians everywhere. MM should now be proud to be a simian as the entire SCOTUS has grown hair and swings on trees now. It is time for us humans to head to New Zealand.
Of course, I am afraid of using modern technology now that I konw that it all has captured abstract natural laws of scientific truth with insignificant post solution activity.
$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$
$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$
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The dollar people are winning.
$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$
Yes, I agree with you Stick. Particularly since the Congress has had 14 years since State Street to act and they have not.
A question:
How do you think that this case would have gone if US law had a method of treatment exception such as the one that exists under English law?
link to ukpatents.wikispaces.com
” That decision is a step. Seriously. Get some training. ”
Yeah, because pto training on the newest fad in drafting trumps the lawl every single time!
I like the comment from Karny above at 11:15pm. I must say, my idea of “natural law” is a bit different from that of Justice Breyer.
I was struck by the fact that the application in the EPO went to issue, with effective useful claims. So manifestly there is new and non-obvious subject matter here. One just has to be careful what one asks SCOTUS for. Peppered throughout this judgement are intimations that the claims were seen as being simply “too broad”.
Each SCOTUS Justice has a doctor who strives to prescribe Goldilocks dosages (enough but not too much). Each Justice is going to recoil from the idea that his or her doctor will be prevented by a duly issued patent from making the optimal Goldilocks judgement. So, when the patentability of such a Goldilocks claim rests on the magic numbers it recites then one would hope that the numbers really are in some way magic numbers.
But here? Who says that 230 is any more magic than 200 or 250? Might it not depend on the sample of test subjects, and on the way you measure the parameter? After all, even the claim prefaces each number with the word “about”. They didn’t like the smell of it, so they threw it out. They could not imagine how to do the job clinically under 102 or 103 so all that was left was to deploy 101.
Otherwise at the EPO. Because its 102 and 103 tools are so sharp, clear and effective it can take a relaxed view with its 101 filter. Rader knows this, and was aiming at the same thing in his court. But now he’s been de-railed by SCOTUS. I regret the damage done to legal clarity, when such liberties are taken with the idea of a “natural law”.
“I am an examiner and I think you are in need of training.”
Says an examiner in need of training.
“But you cannot give the 103.”
I lulzed.
To be sure, a 102 or a 103 is perfectly fine in this case brosensky. That wherein clause “feature” was inherent in the prior art regardless of whether or not it was recognized. But of course, validity is a question for a court. And in this case the court never got around to 102 iirc, summary judgement wasn’t it?
Go get ya some trainin’ bro, come back with your head screwed on right.
Going to have to think about it 6. But, talk of the iron age and information age in Bilski with the Benson talk that if we represent it in symbols to process it on a computer than it is a law of nature. Those two views cannot be recognized with one another.
“The Court cites prior decisions which recognize that all inventions embody natural scientific principles and caution that applying the law of nature exclusionary principle too broadly could eviscerate the patent law. Then it proceeds to do just that.”
/facepalm
“Is there any patent that’s safe from this analysis?”
I would guess 95% outside of computer and business method tomwankery. Give or take like 3%.
LOL.
What does that mean: simply changing the number to the base of the number?
So, in computer architecture I can represent almost all relationships with symbols that your disgusting brain sees as “math”, so according to you all of computer architecture is math and a law of nature.
ignorant psychotic chimp.
Jack, heuristic algorithm = advanced math, egro any application of it is pure math.
Not logical thinking. First, you are confusing an algorithm with math. They are not the same. An algorithm is a definite method for performing some task.
Your statements illustrate such a vast ignorance, that I certainly can’t be expected to explain this to you.
Algorithms implemented on computers are transforming information. You are actually saying that a computer that recognizes faces is not eligible for patentability because you think it embodies a law of nature.
This is a witch hunt. Computers are modern field that use symbols that happen to look like the symbols Newton used.
And, your distributive law is not an algorithm.
As a side note, the SCOTUS yesterday, used a judicially created exception to wipe out patentability for a wide range of subjects despite the Congress not doing so for 14 years. And, yes, the Lemley article is argument.
I think we need to find out how much if anything Lemley is being paid by industry groups. Let’s face it, the Stanford Law Review means nothing. Professors are, in general, chasing money, and there should be no presumption that a law review article or a professor is anything but a paid attorney expressing their clients opinions.
The problem with corruption is the way it builds on itself. The presumption that Lemley is nothing more than a paid gun is wrong.
No a heuristic algorithm for face detection is advanced mathematics. So any application of that is pure math. Which would make it also non-patentable. Only you don’t seem to understand that. Or are intentionally being deceptive.
I’ll give a simple algorithm to demonstrate: The Associative Property of Addition.
A+B+C = A+(B+C) = (A+B)+C
That’s an algorithm. Any application of which results in doing math. Ditto face recognition heuristic algorithms.
The Benson ruling was correct. Converting BCD to binary is simply changing the base of a number to a different base. Albeit BCD is harder to calculate.
Ned: Only after endless semantic debates did I get AI to agree that every method claim (and even some that are deemed methods), even his precious business method claims, are still subject to the traditional exclusions relating to laws of nature, mental steps and abstract ideas and for that reason are not categorically eligible
W
T
F ???????
That is total BS . What a way to flip the script and twist the facts.
You have outdone yourself with this new set of lies Ned.
You are the one playing semantic games .
That’s what everyone that follows this debate has busted you for doing.
And you are STILL playing games with the word “categorically”.
You are the one that was forced to concede that all processes and methods are are subject to the same conditions and requirements of USC 35 and the Judicial exceptions , as any other statutory category.
You tried to argue MOT was still the sole test.
You lost!
You tried to argue business methods were not patent eligible subject matter.
You lost!!
You tried to argue that business methods had extra requirements for patenting that other inventions do not have.
You lost!!!!
And now you can GTH.
It’s strange that someone that went through the effort to cut and paste the statute and also make a section boldface would not have also read the statute, but obviously so.
Les, you seem to have missed the word NEW. E=mc2 wasn’t new when Einstein “discover” it, the law of nature has existed since time began.
+1
The What-Evs have their day.
MOT is just a clue.
Let it die.
(btw, here is a case that passes MOT and yet still fails patent eligibility)
Nice strawman. Now please give the straw back to Malcolm.