Scholarship Cited by the Supreme Court in Mayo v. Prometheus

149 thoughts on “Scholarship Cited by the Supreme Court in Mayo v. Prometheus

  1. It’s a draw.

    For the most part, each of you are talking past the other, not recognizing the issues each has that have merit.

  2. OK, I’m making an exception to my statement that I was don, and after this I’m really done. Of course you are right that software has to be written and compiled for specific hardware. Indeed, the real ingenuity of most software patents is that they attempt to do something that is really difficult given the available hardware at the time of the invention.

    But so what? No patent is written at that level of abstraction. If they were, then the Court would likely not have worried so much. The issue is that patents aren’t for specific implementation of specific solutions on specific hardware. It’s that patents claim general steps to solve general problems (or sometimes specific ones) on general hardware. I think almost all are still patent eligible, of course, though you seem to miss that point.

    It’s funny that you think Deener is a good opinion – it argues almost the exact same thing we argue in our article – a process is patentable when it’s a series of steps to achieve a useful result – that’s exactly what we argue. It’s also funny that you like this opinion, because it involves transformation of matter – indeed, it was relied on in Benson in support of the machine or transformation test. I would say it’s a terrible opinion for that reason.

    As far as “winning” this debate, readers patient enough to get this far will have to decide.

  3. >>2) Heinous. “In software patents, hardware is
    **Plain wrong. And I’ve written software – for different hardware platforms, mind you. I just got done reading some articles at Groklaw that go the exact opposite way – arguing that all software is really math. They are wrong too. The reality is that a process for doing something on a machine can be programmed on a variety of machines. How else do we see Angry Birds on iOS and Android? The inventive part of Angry Birds, if there is one, is not tied to the hardware. For a real example, take the date-picker patent. Bell Labs implemented that on software very different than MS Windows, which was the infringer. The inventive idea (a date picker) was hardware independent.
    <>>< <>><>< All software is a hardware specification. It is true that one can think that something is hardware independent, but this is only true for some problems where the problems generally do not require a significant amount of processing or memory, as well as some other assumptions regarding the architecture. But,software became software by von Neumann, among others, realizing that rather than building new machines, that they could specify a machine in memory and build a machine that would emulate the machine in memory. There is simply no getting around that. Now there are layers and layers of abstractions on top, but all those layers still specify a particular machine. It is true that more than one machine can be used as you illustrate with the date picker example. But software is a hardware specification. You want to pick it apart and only look to those elements to which you deem the novel elements. But, it is still a particular machine that is executing a method. That is Alappat. That should remain good law. The Cybersource and now SCOTUS in Prometheus (in the nutshell of Benson) are trying to take down Alappat. At best, your argument should be directed toward Deener where a method on a machine was held patent eligible. Deener is a great opinion that was made prior to the software/business method/diagnostic wars that are going on now. Software is different from music in that music is not specifying a particular machine. Music is not modifying a memory. Music is not Turing complete.

  4. >>Since you seem to be unwilling to actually engage >>the ideas, I’m done responding to your posts.

    That sure is an easy way out. I guess that makes you right. Or does it mean you lose, but can gain some dignity by claiming the high ground? I guess you can’t go toe to toe with me, can you? And, I guess you aren’t open minded.

    >>What world are you from?
    A world that has read Steven’s dissent in Bilski. A world that has read Cybersource. A world that has listened to Dyk and Moore in oral arguments. A world where the AIA was passed with Section 18, Transitional Program for Covered Business Method Patents, where a standard at the EPO is apparently being imported into our patent statutes based on the finance industry’s lobbying. A world where people on here are paid to express the ideas of lobbying groups. A world where the PTO published in the Federal Register proposed rules that would use Cybersource as an example of a non-technological art. A world where there are people such a Richard Stern that publish articles that attempt to give judges a means to exclude large swaths of patentable subject matter. (Richard’s article on tying technology back to Ben Franklin’s time or it isn’t eligible.)

    What world are you from? You co-author an article that proposes using 101 for a use that it was not intended for. An article that proposes broadening the use of 101. An article that includes a number of false assumptions that strike to the core of Alapat. I see above that you do not agree with this.

    In my world, your article is clearly an attempt to provide justification for judges to exclude large swaths of patentable subject matter using 101. It is setting up a number falsehood regarding software and
    it is proposing using a balancing test for 101.

    I know, you say, post Bilski, what can you do. Maybe you really can’t see the bigger picture.

  5. All good points. I was aiming at analogies. This is all obviously much more complex that simple analogies.

    But your point also shows that there are levels of abstraction. And as you go up the levels you go from score, to specific instruments, to phrases, to individual notes.

  6. This is slightly off track, but as a music lover I have to object to the statement “A musical work is a series of instructions for the reader to do something.” A musical score, or a piece of sheet music, can certainly be regarded as instructions, i.e., a document describing a process. But the musical work it describes is FAR more than the document.

    I submit that a musical score (or a printed play, for that matter) is not patentable subject matter for many of the same reasons that Beauregard claims probably should be avoided. A document that describes a process is not the process itself. Furthermore, when the results from following an instruction sheet are highly dependent on which interpreter is used, it’s not clear what the instruction sheet defines at all. That applies to both musical scores and computer-readable media.

  7. Sure, I’d like to read that. The quote above is out of context – I didn’t argue that all software was just like music. That would be silly, no? The comment was more about why ordered information (like music, books, and simple unapplied processes) might not be patentable.

  8. You are clearly not reading the article I wrote. I don’t know what planet you are on, but the idea that “applied ideas are patentable, but unapplied ideas are unpatentable” is designed to invalidate large swaths of patents is definitely not a concept that plays on earth. Since you seem to be unwilling to actually engage the ideas, I’m done responding to your posts.

  9. **I wrote this part, and I’ve made the argument before, and I’ll make it again. A musical work is a series of instructions for the reader to do something. Like a player piano. More rudimentary than information processing, granted, but a process is a series of instructions.

    Michael,

    You may appreciate a post on this subject that I penned awhile back, wherein I distinguish music and other processes based on Art.

    Then again, you may not. But I think that you are open-minded enough to evaluate it on its own merits.

    I will look for it, but if any of the other 101 minded regulars can find the link, please post it here.

    Thanks,

  10. **Here is a response to your points, without responding to personal attacks.

    OK. I read the Lemley article. This is a typical Lemley article that is almost impossible to get through because it is so filled of misstatements and false premises. A polemic—not scholarship.

    (Michael Risch. I understand that in a couple of places you distance yourself from some of these positions, but your name is on the paper and my comments are directed to the positions held in the paper. I also note from your CV that Lemley apparently lifted you out of your partnership at a contingency based patent litigation firm.)

    1) A false premise is that the article proceeds to analyze SCOTUS and Fed. Cir. cases as if there is some way to combine them into a central truth. Supposedly there is some truth out there to be discovered. So what about the flash of genius how does that fit in? Oh, it doesn’t because that was wrong, but all the other cases about “abstract idea” are right?

    **The article makes no such claim. How could it? Every one of us has said that subject matter jurisprudence is a mess. Remember that it is called Life After Bilski. IF we are living in the world of Bilski, might we find some common threads in the SUBJECT MATTER cases. Cuno is not one of them – and even if it were, it was explicitly overruled by Congress, so we need find no common thread post 1952.

    2) Heinous. “In software patents, hardware is almost never the inventive aspect.” This is a typical Lemley mistruth. ALL software is a specification of hardware. ALL software is run very differently on different hardware and is written for specific hardware platforms. Software is hardware in every sense that matters for patents. Lemley is trying to bring down Alapat.
    **Plain wrong. And I’ve written software – for different hardware platforms, mind you. I just got done reading some articles at Groklaw that go the exact opposite way – arguing that all software is really math. They are wrong too. The reality is that a process for doing something on a machine can be programmed on a variety of machines. How else do we see Angry Birds on iOS and Android? The inventive part of Angry Birds, if there is one, is not tied to the hardware. For a real example, take the date-picker patent. Bell Labs implemented that on software very different than MS Windows, which was the infringer. The inventive idea (a date picker) was hardware independent.

    3) The big picture here is that something has changed. It is that software is a new type of invention that has to do with methods (which are executed as machines.) Prior to the information age, the method was what the machine did. That is the case in Bell and Morse. Now the method is what matters. The method is the invention. The public policy for the “abstract idea” doctrine no longer exists and the use of the “abstract idea” doctrine is judicial activism that the SCOTUS spoke about in Diehr saying that they could use their created exceptions to patentability to exclude software, but that would be wrong because the question was before Congress and Congress should decide. That is exactly right. If Congress decides that software should not be eligible for patentability, then so be it.

    **So where do we disagree here? I just wrote an article about historical methods – there was plenty if judicial handwringing about methods back in 1790-1840. But even if that weren’t true, I don’t see the logical leap from “it’s about methods” to “abstract is irrelevant.” Methods are more abstract than things, no?

    4) “Abstraction” and the use of that word in engineering should be front and center in any discussion regarding this phrase “abstract idea” that the SCOTUS has created on its own and which it is used to override laws of the U.S.A. Yes, there is one foot note that references a paper. But, “abstraction” is what engineers are taught to use. I have been trained by two of the top 5 engineering schools in this country and both of those schools taught me that engineering was working at the right level of abstraction and knowing how to go up and down the abstraction level. This was explained in Newman’s dissent in Billski and yet is not even mentioned in this “scholarship.” Footnote 83 does have a reference to this central concept.

    ***Yeah, so also where do we disagree? The key to a claim is finding the right level of abstraction, and at some point the idea hits a level of abstraction that is just too broad to grant a patent on. Take the date picker again. You can have a level that is very detailed: pick dates on a particular software program in particular hardware. Or, you can have a mid-range – which was the patent – fill in information from a “tool” in any software on any hardware. Or, you can have the high-level: fill in data. The highest level is more abstract than the middle than the low.

    5) Short shrift is given to 112 analyses. In ____, the analysis was was is the claim too broad? This is a fairly easy analysis in looking at the accused product. The question is was the accused product enabled by the specification, or was it done in a new way that was not enabled by the specification? If done in a new way, then the claims are held invalid as being too broad. So, this is a good policing mechanism in that there is a danger in claiming too broadly of invalidity. The analysis went something like: is this way that one skilled in the art would know how to do in view of the specification? If not, then the claims are too broad and held invalid. 5 minutes search would unearth the case. This method of analysis which as I understand it was the current method at the Fed. Cir. Is not fairly addressed.

    **You are right, and it’s why the Court said I changed my mind. The reality is that 112 is not applied as rigorously as I would like. If this were another article (which I wrote in Everything is Patentable) I would make your arguments (and I did).

    6) Typical type of cite: “No one but Bilski expected to get a patent….” Then a footnote as if this is a reference to prove this, but the footnote does not support this proposition but merely adds additional information.

    **Bilski was never going to get a patent. Even the most die hard subject matter supporters (like me) thought the claim was non-novel. Don’t like the cite? so it goes – it’s tough to prove a negative.

    7) Specious reasoning. Really? Do Newman and Rader use specious reasoning. I doubt it.

    **Sometimes they do. I forget what we said here.

    8) Comparison of software with a song encoded on a disk. Not directly, but the implication is clear. OK. So, you don’t know the difference between a song and an information processing method. There are papers that have attacked this. Where are the cites? If you understood information processing, you would not be making such statements. (or you would for a price.)

    **I wrote this part, and I’ve made the argument before, and I’ll make it again. A musical work is a series of instructions for the reader to do something. Like a player piano. More rudimentary than information processing, granted, but a process is a series of instructions.

    9) Where is all the criticism against Benson? Benson was heavily criticized as nonsensical at the time and continues to be a discredited opinion by the true academics who care about the law.

    **That’s another paper (like my Forward to the Past, and others). What did you want, a book? Remember this is LIFE AFTER BILSKI. We took the court’s precedent as a given. We made a deliberate choice to live with what the Court had done and try to make sense of it. Did we succeed? Not in your eyes, but this was not intended to say why the Court was wrong. We’d all done that before.

    10) Abstract idea in Morse he said “any” in Haliburton the reason was so that another machine could be built. What other uses are there here? You fail to answer that question. And keep psychotically repeating over and over that precluding all, but what are these? Why NO examples?

    **? I agree that is what he was trying to do – and remember this was central claiming – Morse was trying to protect the central principle of the invention. But the problem is that telegraphy was pretty crowded at the time. Others had figured out ways to print via electromagnetics. The claim was just too broad for what he actually invented.. Indeed, many (like me) see Morse as a 112 case – about claim scope. That’s just what we are arguing.

    11) There is nearly a psychotic repetition of preempt any and all other uses. OK, where and what are they? In Benson it was a method for converting between decimal and BCD notation. What were those other uses? What has been invented since Benson that would not have been invented had Benson’s claims not been invalidated? Why have you not addressed this real issue? And, in Benson is it so bad to allow someone to claim a method for decimal to BCD?

    **OK, here there was a real debate about what to do. I’m not a fan of preemption, but we thought that we should at least address it. I don’t know why you call it psychotic or even repetition. We addressed that in about 2 sentences. Remember this is LIFE AFTER BILSKI. We had to take what the Supreme Court had given us and figure out how to tie it in to a cohesive theme. If you think we failed, so be it, though I’ve not actually seen a real critique of the central premise of the article.

    Michael Risch: You said why don’t I publish paper. The answer is because I don’t want to lose clients. I have been advised against publishing papers on either side of the 101 issue as engagement partners have told me that some in-house attorneys may hold it against us.

    **Seems to work OK for Gene Quinn. Seems to work for Lemley pretty well (maybe not the clients you want, but his firm is doing fine).

    Silicon Valley is about execution, not innovation, in general. Lemley is like Fox News. He is a demagogue for a political view and gets his money from pushing the viewpoints of a particular group of people.
    **If you say so.

    I could go on and on with this “scholarship”, but I have real patent applications to write, appeals to write and office actions to respond to. I won’t sleep well at night knowing that professors are selling out patent law for their own short term profit.

    **Whatever. I realize that we didn’t write the paper you wanted us to write – that the Court got it wrong and we should throw out all these cases. Oh, wait, I did write that paper and the Court slapped it down. So, I wrote another one about how to best apply the court’s rules. And not once in this vitriol did I see you address whether you thought the idea would work – that an application of an idea should be patentable and and that the idea itself should not. And, in fact, even the staunchest subject matter supporters have agreed with that idea.

    **And, I’ll finally note that our idea was not fully accepted by the Court. The court ADDED to our argument by bringing in the “insignificant presolution” idea to say that the idea must be applied ENOUGH. This is NOT what we argued; we explicitly said that point of novelty in Flook was bad and we explicitly said that insignificant pre/postsolution activity is not the way to go. However, you’re so busy nitpicking that you might have missed that particular point.

  11. We had more cites. There was a word limit, so we had to cut a lot. That said, please point me to a specific, well thought out, published article that opposes the view that applied ideas should be patentable but unapplied ideas should not be.

    Sure, we didn’t scour the earth to find someone who opposes the view that software patents are hardware independent, but do you really think that affects our underlying argument?

  12. Finally, (I hope), is the big picture is that this article by Lemley is merely trying to create a justification for a fact finder to invalidate swaths of patents. This is very similar to Richard Stern’s attempt with tying in the technology to a technology that existed at the time of Ben Franklin, but as should be expected, Lemley pulled it off with mirrors and smoke.

    Just disgusting. I guess it is quite a feather in the cap of those that were cited by the SCOTUS in the circles that pad their wallets.

  13. Just to be clear there are principled reasons to say this is not scholarship. For example, it does not fairly represent nor cite opposing views; it does not clearly lay out assumptions that are being made; and, etc. I don’t have the time to explain what scholarship is and I am sure others have done so better than I can. But, this is clearly not scholarship. It illustrates how far down we have sunk that the SCOTUS would cite such an article and that such an article would be published by Stanford. Stanford Law School is likely dirty. But, is that a surprise given what we have seen in medical research?

  14. OK, Risch. I posted my comments on the article you wrote with Lemley. Let’s see you answer my criticisms.

    In summary, not scholarship. Should not have been published. Typical Lemley cr#p where he makes false premises, misrepresents, fails to cite to others opinions, etc. I’d rate the paper as a Rule 11 violation if filed in court. So, I guess it is nice to be an academic where you burn down the house of honesty to feather your own nest.

  15. Prediction,

    Stop with the cherry picking.

    Not only did Ned “revisit this thread,” he put in a link to this thread.

    Someone once posted that he is ridiculous on purpose, that he is trying to be so outrageously anti busines method that business methods will gain favor.

    It’s difficult not to think that there is some truth to that when he posts outlandish lies, and then posts links to the threads with those lies.

    In looking at Ned’s “idea,” I do wonder, as someone noted, where the legal background comes from for the selective application of processes to one of the other enumerated categories. But as appears to be often the case, I doubt that an answer would ever be forthcoming, and the idea must remain belonging to a fantasy land.

  16. NWPA,

    You may be over the top at times and downright incorrect at others, but you speak plainly, directly and without deceit and that ranks high in my book.

  17. OK. I read the Lemley article. This is a typical Lemley article that is almost impossible to get through because it is so filled of misstatements and false premises. A polemic—not scholarship.

    (Michael Risch. I understand that in a couple of places you distance yourself from some of these positions, but your name is on the paper and my comments are directed to the positions held in the paper. I also note from your CV that Lemley apparently lifted you out of your partnership at a contingency based patent litigation firm.)

    1) A false premise is that the article proceeds to analyze SCOTUS and Fed. Cir. cases as if there is some way to combine them into a central truth. Supposedly there is some truth out there to be discovered. So what about the flash of genius how does that fit in? Oh, it doesn’t because that was wrong, but all the other cases about “abstract idea” are right?

    2) Heinous. “In software patents, hardware is almost never the inventive aspect.” This is a typical Lemley mistruth. ALL software is a specification of hardware. ALL software is run very differently on different hardware and is written for specific hardware platforms. Software is hardware in every sense that matters for patents. Lemley is trying to bring down Alapat.

    3) The big picture here is that something has changed. It is that software is a new type of invention that has to do with methods (which are executed as machines.) Prior to the information age, the method was what the machine did. That is the case in Bell and Morse. Now the method is what matters. The method is the invention. The public policy for the “abstract idea” doctrine no longer exists and the use of the “abstract idea” doctrine is judicial activism that the SCOTUS spoke about in Diehr saying that they could use their created exceptions to patentability to exclude software, but that would be wrong because the question was before Congress and Congress should decide. That is exactly right. If Congress decides that software should not be eligible for patentability, then so be it.

    4) “Abstraction” and the use of that word in engineering should be front and center in any discussion regarding this phrase “abstract idea” that the SCOTUS has created on its own and which it is used to override laws of the U.S.A. Yes, there is one foot note that references a paper. But, “abstraction” is what engineers are taught to use. I have been trained by two of the top 5 engineering schools in this country and both of those schools taught me that engineering was working at the right level of abstraction and knowing how to go up and down the abstraction level. This was explained in Newman’s dissent in Billski and yet is not even mentioned in this “scholarship.” Footnote 83 does have a reference to this central concept.

    5) Short shrift is given to 112 analyses. In ____, the analysis was was is the claim too broad? This is a fairly easy analysis in looking at the accused product. The question is was the accused product enabled by the specification, or was it done in a new way that was not enabled by the specification? If done in a new way, then the claims are held invalid as being too broad. So, this is a good policing mechanism in that there is a danger in claiming too broadly of invalidity. The analysis went something like: is this way that one skilled in the art would know how to do in view of the specification? If not, then the claims are too broad and held invalid. 5 minutes search would unearth the case. This method of analysis which as I understand it was the current method at the Fed. Cir. Is not fairly addressed.

    6) Typical type of cite: “No one but Bilski expected to get a patent….” Then a footnote as if this is a reference to prove this, but the footnote does not support this proposition but merely adds additional information.

    7) Specious reasoning. Really? Do Newman and Rader use specious reasoning. I doubt it.

    8) Comparison of software with a song encoded on a disk. Not directly, but the implication is clear. OK. So, you don’t know the difference between a song and an information processing method. There are papers that have attacked this. Where are the cites? If you understood information processing, you would not be making such statements. (or you would for a price.)

    9) Where is all the criticism against Benson? Benson was heavily criticized as nonsensical at the time and continues to be a discredited opinion by the true academics who care about the law.

    10) Abstract idea in Morse he said “any” in Haliburton the reason was so that another machine could be built. What other uses are there here? You fail to answer that question. And keep psychotically repeating over and over that precluding all, but what are these? Why NO examples?

    11) There is nearly a psychotic repetition of preempt any and all other uses. OK, where and what are they? In Benson it was a method for converting between decimal and BCD notation. What were those other uses? What has been invented since Benson that would not have been invented had Benson’s claims not been invalidated? Why have you not addressed this real issue? And, in Benson is it so bad to allow someone to claim a method for decimal to BCD?

    Michael Risch: You said why don’t I publish paper. The answer is because I don’t want to lose clients. I have been advised against publishing papers on either side of the 101 issue as engagement partners have told me that some in-house attorneys may hold it against us.

    Silicon Valley is about execution, not innovation, in general. Lemley is like Fox News. He is a demagogue for a political view and gets his money from pushing the viewpoints of a particular group of people.

    I could go on and on with this “scholarship”, but I have real patent applications to write, appeals to write and office actions to respond to. I won’t sleep well at night knowing that professors are selling out patent law for their own short term profit.

  18. Simply our of curiosity, are you aware of anyone who has examined cases dealing with my Big 3 with an eye to ascertaining if the broad claims were an attempt to actually claim an invention back to the Big Bang, or were perhaps instead attempts to try and overcome some of the issues associated with an invention that would be infringed only by a group of unrelated third parties (in some instances all in the US and in others scattered across international boundaries)? Nuijten is one case that comes to mind suggesting that the latter was the motivating factor for attempting to secure protection for its “signal”.

  19. EG, long ago I stripped all explanatory language out of claims. It only complicates life in court, because you have to prove every single limitation in proving infringement. Now this is not always the case with preambles, but like you say it's a crapshoot.

  20. Malcolm, highlight the passage of the opinion that reinforces your view. However, I think that this case is really more about preempting a law of nature than about to an abstract idea. The reinforces point, once you take a quick review of the Funk Brothers case. Funk Brothers would seem to require holding that the claims would be unpatentable even if they included a treatment step.
     
     

  21. Nathanael, I agree with your statement above to the extent that the "discovery" is of something that already exists. If it exists, it is prior art and any patent that might issue must be also fulfill requirements of section 102/section 103 considering that the discovered subject matter is prior art.

    I will note that implicit in the word "discovery" is the notion that what was discovered did in fact exist.  But there are cases, such as the Eibel process case, where the patentable discovery could be the recognition of a problem itself even though the solution to the problem might be obvious. I think it would be inappropriate to suggest that the problem itself, in such cases, must be considered part of prior art simply because one discovered the problem.

    However, when one is considering laws of nature or things of nature or natural phenomena, I think there is a different consideration. Laws of nature, things in nature, and natural phenomena are part of the public domain. The first discoverer of such a law should not be able to obtain a patent on it, or any trivial or obvious implementation that is suggested by the law of nature itself. Thus in Funk Brothers, once one considers the mutual non-inhibition of certain bacteria to be part of prior art, merely claiming that mutual non-inhibition in the form of a process article of manufacture was not patentable.

    I think that is what is going on here in the Prometheus case. The Supreme Court determined that the "correlations" were natural phenomena or laws of nature. Thus under Funk Brothers, these correlations must be considered part of the prior art and there must be invention independent of that discovery for patent issue.

    Thus, the puzzle that is left to us by the Supreme Court in this case as to whether simply adding a treatment step is sufficient to render the claims patentable is answered:  The answer is no.
     
     
     

  22. I’m looking forward to seeing what will happen to software patents after this ruling.

    You will be looking in vain.

  23. and I’m quite happy to see things coming together to put an end to vague patents.

    On the contrary, vague “what-ever” rulings will not put an end to vague patents.

    The crafty will see this as a challenge.

  24. I now generally avoid such preamble language, Ned, and pretty use one word like “method” or “composition” or “article.” The Federal Circuit is all over the place on when such preamable language is relevant to validity. If you want the have the language have some impact on validity (and not also create a potential infringement enforcement issue), put it in the “body” of the claim. Otherwise, you’re playing the patent versions of “Russian Roulette.”

  25. Nothing “foolish” in my question, MM. I thought we were talking about what analytical and diagnostic methods are patent-eligible in your world. An AIDs vaccine would be a very useful invention, but it isn’t an analytical or diagnostic method. Let’s stick to the subject.

    So you say “new methods of measuring the presence of chemicals in a composition” could be patent-eligible Good. Provide a sample claim that you believe will pass muster in view of Breyer’s reasoning in Mayo Collaborative Services.

  26. Because the vast majority of the people know next to nothing about patent law are the most affected by it. That would be a very practical reason for it.

    Just because you’re an expert in patent law doesn’t mean you’re the only stakeholder in it. This is one of the best decisions I’ve seen in years and I’m quite happy to see things coming together to put an end to vague patents. I’m looking forward to seeing what will happen to software patents after this ruling.

  27. Hey, I’m with you on your arguments. As to the “new”, the 1790 act does say that one must have invented it.

    Note also, that part of the ambiguity of a missing “new” in the 1790 statute was whether you could have a patent of importation – this was an open question – See Fessenden (1810) and more recently Walterscheid’s historical look. The addition of “new” might have been to answer that question in the negative.

  28. There is no redrafting which will save a bad patent like Prometheus when Breyer’s looking at it

    There is nothing which will save any patent [] when Douglas‘s looking at it.

    Been here, done that.

  29. The scholarship of 6 has been missed.

    6’s famous “everything preempts” test is reflected in Breyer’s quote:

    For ALL inventions at some level embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, OR ABSTRACT IDEAS.” page 2, emphasis added

    (yes, that is not a complete sentence).

  30. This Nathanael cannot be for real, as no one can screw up so many different aspects of law in such a short time.

    It is a bit funny. Perhaps it is the Return of Ping.

  31. he reasoning of Breyer depended in large measure upon the kind of information here being a law of nature. If it were any information, regardless of its nature, then he should have said that, but he did not.

    That’s because the issue wasn’t properly briefed from the beginning, Ned. The question certified was the wrong question. That’s the only reason.

    He seems to suggest that the problem is the kind of information

    No, he doesn’t. Read the case carefully. I can highlight the important passages for you … again.

  32. Hell yes. Do you have any clue as to how law works, “Back to TechDirt”?

    The fact is courts pften behave one way while the law says something else. This can be good or bad.

  33. I’m afraid many of the people who think they know something about patents actually know nothing about patents. I explained Supreme Court patent analysis in another comment, since so many patent lawyers apparently don’t understand it. I suggest you learn it.

  34. and can’t really be considered separately. (Once you realize this, the Supreme Court rulings start to be very clear…)

    Translation: I too have stuck my head into a blender.

  35. Historically this is because patent law predates the United States.

    Do you have any clue as to how law works Nathanael?

    A nasty side effect is that US patent law is not really constitutionally based

    Not really Article 1 Clause 8?

    Why are you even here?

  36. I’m interested to know how you can more rigorously apply 102/103/101util/112

    Try by beginning to?

  37. Breyer’s opinion is crystal clear

    No one who knows anything about patents can agree with that statement.

  38. It is far above the level I usually see from the “let’s patent mathematics” crowd

    As opposed to the usual even lower level of the anti-patent crowd, right?

  39. Novelty, obviousness, and subject matter go hand in hand and can’t really be considered separately. (Once you realize this, the Supreme Court rulings start to be very clear…)

    There must be *novelty* and *non-obviousness* in the part of the invention which is *valid subject matter* — the invented part, rather than the discovered part.

    A novel, non-obvious discovery is unpatentable. Even if you make an device or procedure based on it, that’s also unpatentable, unless there’s something novel and non-obvious *beyond* the discovery.

  40. Breyer is a practical man and focuses on the practical effect of the case. (Look at his scathing dissent in Lessig.)

    There is no redrafting which will save a bad patent like Prometheus when Breyer’s looking at it. Your patent actually has to be on a new, physical invention, and he pretty much said this.

  41. But if you want to look for a constitutional basis for 101 subject matter tests, look no further than the US Constitution — it restricts patents to “inventions” made by “inventors”, which is a subject matter restriction. The concept of “inventor” was actually *narrower* in 1789 than it is now.

  42. Historically this is because patent law predates the United States. Look to UK history for the reason so much of patent law is common law.

    A nasty side effect is that US patent law is not really constitutionally based. It routinely violates the requirement in the US Constitution that the patents “promote the progress of Science and the Useful Arts”. Why? Because the ex-English judges just kept ruling the way they ruled on patents when they were colonies, and England had no such limitation.

  43. Breyer’s opinion is crystal clear. If you don’t see that, you’ve been drinking “patent everything” kool-aid.

    Anyway, Breyer is, as usual, right about the importance of the law-of-nature subject matter exclusion. He’s by far the smartest man on the Supreme Court (and that’s a judgement I make based on cases entirely outside the realm of patent law). Why? Because unlike some, Breyer looks at the practical results of a law — he takes a scientific approach.

    Hopefully in a few years the few cases over which the Supreme Court was confused and approved patents they shouldn’t have approved will be fixed and *all* patents on mental processes, business processes, mathematical algorithms, software, laws of nature, naturally occurring substances, etc., will be simultaneously thrown out.

    I think the Federal Circuit, a disastrous example of regulatory capture by the patent bar, will have to be abolished, though.

  44. Mr Heller and Mr Risch, thank you for your edifying discussion. It is far above the level I usually see from the “let’s patent mathematics” crowd of patent lawyers who usually comment here. It’s actually highly informative and interesting.

    It seems we all agree that the Federal Circuit has been an unmitigated disaster.

  45. Malcolm,

    Again the problem with Flook was that it had no real inputs or outputs. Diehr had both. This case had real inputs, but they were old.

    It just strikes me that the problem with this case without the tie-in to natural phenomena, is not 101, but lack of novelty. The only way this became a 101 case is that the kind of information that was produced was a produced by a natural phenomena. Funk Brothers, more than any other recent SC case, is the critical case here. There the SC said the discovery that bacteria could coexist and not inhibit each other was a discovery of a law of nature and any application of that discovery had to be more than trivial as, in essence, the law of nature itself could not be claimed.

    This kind of thinking pervades Flook as well.

  46. “”Thus, I argued that we should jettison this historic exclusions such as abstract ideas and natural laws, and instead more rigorously apply rules such as novelty, obviousness, utility, and enablement. This, I argue, would result in the same outcomes but with much more predictable results based on well defined case law.”

    I’m interested to know how you can more rigorously apply 102/103/101util/112 enab? I’m pretty fin rigorous as it is, just how can we accomplish more rigorosity?

  47. The Patent Act of 1790, in describing patentable subject matter, provided “…useful art, manufacture, engine, machine, or device…”

    The Patent Act of 1793, in describing patentable subject matter, provided “…new and useful art, machine, manufacture or composition of matter…”

    The Patent Act of 1836, in describing patentable subject matter, provided “…new and useful art, machine, manufacture, or composition of matter…”

    The Patent Act of 1870, in describing patentable subject matter, provided “…new and useful art, machine, manufacture, or composition of matter…”

    The Patent Act of 1952, in describing patentable subject matter, provided “…new and useful process, machine, manufacture, or composition of matter…” (“process being defined [apparently this was the first act to include a “definitions” section] to include “art”).

    Now, why this trip down memory lane? A couple of points.

    In the very first act the only requirement for the delininated subject matter was that it be useful.

    In the second act “new” was added for reasons that elude me since “not known or used” immediately followed, and “not known” certainly suggests to me “new”, which seems to be a redundancy that has been carried forward to this day.

    Despite these quite broad provisions, federal common law was crafted to add non-obviousness as an additional condition to new and useful, which, of course, eventually found its way into the statutory scheme in 1952.

    Like non-obviousness, subject matter exclusions (i.e., my “Big 3”) are likewise creatures of federal common law. Unlike non-obviousness, they remain solely creatures of federal common law.

    Thus, under the present act we have four requirements associated with patentable subject matter; “new (a redundancy) and useful”, novelty, and non-obviousness. To these, of course, we add the present 112. My “Big 3” remain outside the realm of the act itself, and continue to plod along as federal common law.

    What has always troubled me about this vestige of federal common law is that past and present acts make not even a whisper about them. Perhaps Congress simply went along with the common law exclusions. Then again, perhaps Congress was clueless they even existed. After all, it is not as if Congress lives and breathes patent law.

    I say all of the above because it seems clear to me that what could and could not be patented was and is described by statute in the broadest of terms. Nowhere has Congress ever said “Patentable subject matter is intended to be broad, but slipping in abstract ideas, laws of nature, and natural phenomenon to limit breadth is just fine with us. Good going Supreme Court.”

    Why then the jurisprudential morass revolving around 101 and its operative effect of closing a door that Congress has left virtually wide open since 1790? Frankly, I at a complete loss to explain it since the substantive provisions provided in Sections 102, 103, and 112 seem quite capable all by their lonesome to handle the common law limitations that the Supreme Court seems inclined to wax poetic about. Never mind that the waxing is wordsmithing and philosophical meanderings of the highest order.

    Yes, 101 jurisprudence is a mess, but I most certainly do not lay the blame at the feet of Congress. It has crafted a fairly straightforward system, with much of the “tension” being bandied about having come as a result of the judiciary meddling with Congress’ work product.

    While we may, perhaps, disagree on some of the finer points of law, it seems we largely agree that the standards set out by Congress (102, 103 and 112) should be the focus, and not the seemingly intense preoccupation with 101 crafted from whole cloth by the Supreme Court as common law. The former has the distinct benefit of being ameanable to the proffer of evidence, i.e., “proof”. The latter? Sounds more like subjective guess work to me that neatly avoids this little thing we call “proof”.

  48. Malcolm, I agree with you in principle, but the reasoning of Breyer depended in large measure upon the kind of information here being a law of nature.  If it were any information, regardless of its nature, then he should have said that, but he did not.  

    That is what troubles me about his opinion.  He seems to suggest that the problem is the kind of information, not the structure of the claim, the novelty or lack thereof of the transformations, or the fact that the claim ends in an abstraction.

    This also disturbs EG, and perhaps others here.  It is not that you are wrong; it is just that Breyer's reasoning is very limited.

  49. the stated problem with Prometheus is that the information was a particular KIND of information.

    Information is not eligible subject matter. It doesn’t matter what kind of “information” is being pre-empted by the claim, i.e., the information could be a natural law, it could be a fact, it could be a poem, it could be completely useless information. The bottom line is that if the claim has the effect of removing the information itself from the public domain (i.e., by preventing otherwise non-infringing actors from thinking about the information), then the claim is ineligible under 101.

    I have no idea why this is difficult to understand or why people are concerned about it, unless they were invested in the ridiculous alternate reality where information itself could be protected with patents. If so, I have no pity for you.

  50. Had Rader and crew place a lot more emphasis on this preamble rather than on the old transformations, I think he would have had something.

    Uh, no. Because no optimization necessarily occurred if one practiced each of the recited steps in the claim. All that “happens” when compared to the prior art is that one has a new thought in one’s head. Breyer expressly noted this fact about the claims. It is not the only important fact, but it shouldn’t be ignored.

  51. EG, what about adding a preamble along the lines of

      “A method of optimizing therapeutic efficacy for treatment of an immune-mediated gastrointestinal disorder, “

    such that the treatment adjustment is stated in the preamble. That is the kind of preamble that saved the broader construction of the Alappat claims, i.e, that the claimed rasterizer was part of a larger graphics processing unit for a display.

    Er, on second thought, this is the preamble in this case. Had Rader and crew place a lot more emphasis on this preamble rather than on the old transformations, I think he would have had something.

  52. EG, I don't know if you are right that most claims are at risk after Prometheus, but the fact that the Court did not clearly state that any process claims involving real, physical data gathering steps, albeit old, that ends in an information bulletin without any actual use required of that information and where the information in the bulletin is the point of novelty, we are left to wonder whether the SC would have had any problems with such claims under 101.

    Flook did not have any real world inputs at all.  Diehr had both real inputs and outputs.  The Court had never given us a clear message where the claim has only real inputs.  And the stated problem with Prometheus is that the information was a particular KIND of information.  

    Ugh.

  53. What I proposed as ways to rephrase the Prometheus claim may or may not work

    What you propose is a claim that is virtually identical to Prometheus’ claim, which was destroyed by the Supreme Court in a nine-zero decision.

    Let’s see what the Federal Circuit does with claims like I proposed

    Great idea. I can also predict what your reaction will be when such a claim is destroyed by the court for the exact reasons I’ve provided. Are your clients aware of your proposal? Is this the sort of “risk” that you’re counseling them to take? Substituting a step of “thinking” with a step of “indicating”? Does “indicating” include “winking twice” if the dose needs to increased and “winking once” if the does needs to be decreased?

  54. EG Now tell me how an AIDs vaccine is an “analytical or diagnositic method.”

    Keep making a fool out of yourself, EG. I’m laughing my axx off.

  55. “an AIDS vaccine would be awesome.”

    It would be, MM, a true blessing. Now tell me how an AIDs vaccine is an “analytical or diagnositic method.”

  56. Contrary to what you believe, I did read the opinion, MM, from beginning to end. But you obviously didn’t bother to quote my “qualifying” statement that what I proposed isn’t certainty in light of certain statements in Breyer’s opinion.

    What I proposed as ways to rephrase the Prometheus claim may or may not work, and also were not before SCOTUS. Let’s see what the Federal Circuit does with claims like I proposed before you go calling everyone who disagrees with you “dense.”

  57. EG if Breyer’s opinion is taken to itspotential extreme, the patent-ineligibility “exception” may ultimately swallow up most, if not all, analytical and diagnostic methods.

    It certainly won’t swallow the analytical and diagnostic methods that rely on novel, non-obvious transformative steps, however, which are the methods which truly represent “progress in the useful arts” and which are most valuable to the public. You know, new methods of sequencing DNA and proteins, new methods of measuring the presence of chemicals in a composition. That sort of thing. The useful arts.

    For example, an AIDS vaccine would be awesome. Investment in the development of such a vaccine should be encouraged and patents are great for that purpose. The inventors of such a vaccine should be rewarded. But the skimmers who come after claiming methods of thinking about who should get the vaccine, and how much they should get, and how it should be advertised? Screw them, and their patent attorneys. Patents are not necessary for that, nor are they helpful. That’s just exploiting an opportunity to make $$$ and the non-patent incentives are already in place for that.

  58. In the instance of Prometheus’ method, what I would do is first drop the “administering step” completely: it doesn’t help and it simply creates a potentially more difficult enforcement issue.

    Instead, I would start with the “determining step” (or something similar, like provding the numerical ranges described in the “wherein clauses” which describe when the drug dosage is too great or too low) …

    A more agressive but potentially more risky alternative is to phrase the subsequent step as “…indicating the one administering the drug to adjust the drug dosage appropriately” based on the ranges described in the “wherein clauses.”

    More “potentially more risky”? Try “ineligible under 101.” Try “doesn’t get out of the starting gate.”

    For the love of cripes, EG, are you really that dense? Did you even read the decision? Do you still have no idea what the case is about?

  59. Sure. Where Prometheus’ claimed method needs to be “transformative” to survive “patent-eligibility” under 35 U.S.C. § 101 is after the “determining step.” That’s the conclusion I and others have come to in trying to sort out cases like this one, Bilski, and others. In other words, what the claimed method must do is either convert physical (e.g., compounds, reactants, etc.) or tangible (e.g., data) elements into something different, or cause that “conversion” to achieve a useful result (e.g., adjust the drug dosage, or at least an “active” instruction to adjust the drug dosage). That “transformative” step also has to be at least partially at the crux of why the claimed method is unique. The “wherein clauses” in Prometheus’ claimed method that simply inform you that the drug dosage is too low or too high are too “passive” to make this “transformative” jump to patent-eligibility under 35 U.S.C. § 101

    In the instance of Prometheus’ method, what I would do is first drop the “administering step” completely: it doesn’t help and it simply creates a potentially more difficult enforcement issue. Instead, I would start with the “determining step” (or something similar, like provding the numerical ranges described in the “wherein clauses” which describe when the drug dosage is too great or too low), and then add an “adjust the drug dosage appropriately that is given to the patient” step (or something similar) based on the ranges described in the “wherein clauses.”

    A more agressive but potentially more risky alternative is to phrase the subsequent step as “indicating/instructing the one administering the drug to adjust the drug dosage appropriately” based on the ranges described in the “wherein clauses.” That would make the enforcement issue much easier (e.g., avoiding a joint infringement situation), but such “indicating/instructing” steps are still problematical in view of the reasoning in Breyer’s opinion that suggests “routine, conventional activity” isn’t enough.

    Frankly, with Breyer’s opinion seeming to prohibit consideration of such potentially “transformative” steps if they’re judged to be “routine, conventional activity,” we’re going to have difficulty making that “transformative” jump with most analytical and diagnostic methods. Many analytical and diagnostic methods use a combination standard techniques or steps but in a unique way. But if Breyer’s opinion is taken to itspotential extreme, the patent-ineligibility “exception” may ultimately swallow up most, if not all, analytical and diagnostic methods.

  60. please accept that we simply differ on how we view this case,

    LOL. Spoken like a true fundamentalist. We just have different “worldviews”, right? Nice try, EG.

    Let’s start with the basics. Do you know what a claim is? Do you want infringement is? Do you know what the term “think” means? Let me know if your definitions for those terms are unusual in any way. If they aren’t unusual, then we can proceed to determine exactly where your confusion and/or dishonesty lies (no pun intended).

    Assuming your definitions of those terms aren’t unusual, EG, let me know if you believe that a patent claim can be eligible under 101 if someone becomes an infringer of that claim merely because they think about a new, patent-ineligible fact.

  61. Seeing as I generally give SCOTUS very little credence in our nook of the law (they’re “patent hostile”), that they ruled 9-0 based on legally and logically flawed reasoning has very little credibility with me. I’m also not “deluded” or “dishonest” in my views on Breyer’s reasoning in this case; that’s YOUR “spin,” not mine. I’m not alone in my views that Breyer’s reasoning is flawed; go canvass the patent bar. And please accept that we simply differ on how we view this case, instead of resorting to unnecessary “ad hominem” attacks on my sanity or my competence. Peace.

  62. IANAE The only real difference between the Prometheus claim and the Flook claim is that Flook used a computer.

    Indeed. And that’s why adding re-writing Prometheus’ claim to recite a final step of putting the data into a computer “wherein said computer indicates a need to change the dosage if X is greater than Y” is not likely to rescue the claim from 101 ineligibility.

  63. Prometheus claimed method also isn’t “effectively claiming a new thought.”

    You’re wrong. Shall I explain to you why you’re wrong, EG? And then you can l-i-e or run away, or you can admit that I’m right. Are you ready, EG?

    , I suggest you “go pound salt.”

    How deeply deluded are you, EG? You just got your axx handed to you by the Supreme Court. NINE-ZERO, not even a concurrence. You’re telling me to “pound sand”? Maybe you should go and read what your holy book says about dishonesty, EG. Then come back here and I’ll explain to you again why Prometheus’ claims are effectively claims to the new thought. Hint: consider the effect of the claim on those who are practicing the (old, unpatentable) prior art.

  64. EG: “Prometheus claimed method also isn’t “effectively claiming a new thought.” It’s simply a poorly crafted drug dosage calibration method claim for reasons I’ve stated.”

    It’s poorly crafted as a drug dosage calibration method claim, if that’s what was intended. Like all poorly crafted claims, it does not have the intended scope.

    This one is poorly crafted in the invalidity direction. What it actually covers, as drafted, is people doing something old and being aware that the result of a measurement has a particular meaning. Regardless of whether Prometheus intended the claim to have that scope, it does, and that’s precisely the act they accused as an infringement.

    The only real difference between the Prometheus claim and the Flook claim is that Flook used a computer.

  65. Please stow the sarcasm, MM. The only thing I’m going to say to you is that, besides not being a “law of nature” issue, Prometheus claimed method also isn’t “effectively claiming a new thought.” It’s simply a poorly crafted drug dosage calibration method claim for reasons I’ve stated. If you can’t accept that answer, I suggest you “go pound salt.”

  66. Dredged up from the other thread, which is too long:

    IBP Notably, the court COULD have used this case as a vehicle to describe with more particularity what it actually means by “law of nature”, rather than with less particularity as it seems to have done. The opinion could have encompassed both “law of nature” and “abstract”

    As I noted eons before this decision and have noted several times after, you would be a fool to focus on the “law of nature” language in this decision as if that were somehow the key to avoiding 101 shortcomings. Claims in form [oldstep]+[newthought] are ineligible under 101 (we need no longer worry about the 102 issue) *regardless* of how one chooses to categorize the [newthought]. The newthought could be thinking about a law of nature, it could be thinking about a fact (e.g., “my neighbor’s dog smells like popcorn on Tuesday”), or it could be thinking about an abstraction (e.g., “purple clowns in an orange sky”).

    I’m not sure why this is difficult to understand. It shouldn’t be. 9-0, folks. If you are having difficulty with this decision, then maybe you need to get out of the business. There’s more coming. You can “Bank” on that.

  67. EG What has finally dawned on me, Ned, is that … is that Prometheus’ claimed method isn’t a “law of nature” issue

    NO SHXT, SHERLOCK.

    And it’s not Breyer’s fault that it’s taken you so long to figure that out, EG. It’s your own fault.

    the crux of the issue here is whether or not Prometheus’ claimed method is “crafted” correctly to be more than a mere “abstract idea” and thus a proper method claim under 35 U.S.C. § 101.

    Yup. Claims in the form [oldstep]+[newthought] are ineligible under 101 because they are effectively claims to the new thought. It doesn’t matter what the new thought is.

    I’ve been explaining this to you for years, EG. Can you at least admit that much?

  68. EG, would you please write out in full how you think the claim should have been written (per your par. 2 in this posting). So that we can get the full benefit of your point.

  69. What has finally dawned on me, Ned, is that (and is a huge fundamental flaw in Breyer’s reasoning), is that Prometheus’ claimed method isn’t a “law of nature” issue. Instead, it’s really an abstraction/abstract idea problem more analogous to what happened in Bilski. We may disagree on when the “transformative” step occurs in Prometheus’ claimed method, but the crux of the issue here is whether or not Prometheus’ claimed method is “crafted” correctly to be more than a mere “abstract idea” and thus a proper method claim under 35 U.S.C. § 101. In fact, with Breyer’s nonsensical logical, it’s hard to envision how any analytical or diagnostic method could survive a patent-eligibility challenge under 35 U.S.C. § 101.

  70. OK, Morse is always included in discussion. There is that Story ice machine case as well.

    Why? Because in the beginning, claiming all ways of accomplishing a result without tethering the claim to a disclosed means was the pith and essence of claiming a principle in the abstract.
    So it is there, in the list, is it not?

  71. but I was given pause by Breyer’s heavy disparagement of the government position.

    Political Writing 101.

    If you are going to stray from applying the law as it should be applied, you need to disparage that path in order to bolster the “legitimacy” of your more activist path.

  72. Ok, Michael, fair enough. But, how about you wait until I have some time to make my arguments. You are making a lot of assumptions without me having a chance to defend myself. I am traveling and under a heavy work load. I will get to this over the weekend. So, before you declare victory how about waiting until I suit up.

  73. EG, Malcolm sees law of nature in every fact; but I would be surprised that that is what the SC meant. I hope, though, that they did not mean that the Prometheus claims could be patentable under any or all of 101/102/103/112 if everything in the claim were old but the recognition of some new property in the prior art and the claim ended with a suggestion to do something with the new information.

    For example, if I found that an assembly line process could be speeded up by doing X rather than doing Y at a certain point, but the claim ended only with a suggestion that when a cetain state was reached that one do should do X and not do Y, is such a claim patentable because it does not preempt a law of nature?

  74. The very last sentence of Everything is Patentable reads: “Therefore, the PTO and courts should focus on answering specific questions about how to best apply rigorous standards of novelty, nonobviousness, utility, and specification with a scalpel rather than simply eliminating broad swaths of innovation with a machete.”

    So, I guess if you want to take me on you should:
    a) read what I’ve written, and
    b) make sure that I actually disagree with you.

    Just a thought. Sure, you may not like that we took the abstract idea exception as a given in Life After Bilski, but given that the Court had just upheld it, I don’t think it was an absurd thing to do.

  75. Malcolm, I think the SC rested this case on law of nature because the correlations were that. However, I think they would agree that if a law of nature were not involved, but a suggestion, based upon a measurement, to do something or not do something, they would then agree with the government brief to handle the matter under 102.

    I think this is right, but I was given pause by Breyer’s heavy disparagement of the government position.

  76. Yeah, protected environments like the Supreme Court…I’ll take that trade, though I’m happy to debate toe to toe. Reveal yourself, make an argument, and maybe Dennis will publish it.

  77. Prediction:

    Yet another thread that Ned Heller will forget to see or choose not to comment upon or both.

  78. Two wrongs don’t make a right.

    No, but nine wrongs and black robes apparently do.

  79. Ned,

    You have “misrepresented” the trilogy.

    See MPEP 2106 Patent Subject Matter Eligibility IV DETERMINE WHETHER THE CLAIMED INVENTION COMPLIES WITH 35 U.S.C. 101

    C. Determine Whether the Claimed Invention Falls Within 35 U.S.C. 101 Judicial Exceptions – Laws of Nature, Natural Phenomena and Abstract Ideas

    1) Laws of Nature
    2) Natural Phenomena
    3) Abstract Ideas

    “Claiming a result,” strictly speaking and without more, is not one of these three.

  80. Morse was not a true 101 case. It was an enablement case miswrapped in 101.

    Repeating an error doesn’t change the fact that the action is an error.

    Or as often put: Two wrongs don’t make a right.

  81. Michael,

    Your expose on how far off Stevens was in Bilski (and thus the entire chain of 101 subject matter back to and including Flook) should be required reading of anyone who wishes to contribute to a 101 discussion (including, especially including those Justices on the bench).

    Intellectual honesty demands that such political and philosophical gamesmanship be dragged into the light.

    This is not to say that the debate should not have a philosphical component. It is to say that that component should not be allowed to subvert reality. Far too frequently posters are all too willing to engage in chicanery in order to advance their brand of philosophy. True accountability means that misrepresentations, such as the ones you point out, must end.

  82. The big picture is that a judicial exception was used to exclude a large swath of patent eligibility. It was a justification for doing so. Congress should have decided not the SCOTUS. These so called academic papers were used as nothing more than a justification, which means that the premise that these are unbiased scholarly works should be challenged.

  83. Michael, I am too busy the rest of the week to engage you in this. But, I will read the rest of the article over the weekend. I read several page (I skipped ahead to the 112 vs. abstract idea) and it was enough to convince me that their are major problems with this paper.

    Academics do not engage in blogs, in general, because they prefer their protected environments where they do not have to be accountable for their statements.

  84. From another post, but fits perfectly here:

    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.

  85. but still exclude claims to… business methods.

    But noooo, Ned treats all methods the same….

    If so Ned, why in the face of the most recent decision did you fall back to your crusade mode instead of use medical method?

    How do you expect anyone to take you seriously when you lie all the time?

  86. From the Risch link:

    1)
    Thus, I argued that we should jettison this historic exclusions such as abstract ideas and natural laws, and instead more rigorously apply rules such as novelty, obviousness, utility, and enablement. This, I argue, would result in the same outcomes but with much more predictable results based on well defined case law.

    An anti-Malcolm and the What-Ever stand in favor of appropriate application of particular laws.

    2)
    the Court rejects the Federal Circuit’s application of the machine or transformation test (again) as to this case. As I’ve written elsewhere, the test is ridiculous, and its application to this case is especially ridiculous. I’m publishing a paper that shows that the test is not even based on historical patenting practices.

    An anti-Ned Heller MOT-is-all-but-required stand in favor of truth and reason.

    3)
    cites to an old British case called Neilson in support of a limitation on process patents. As I argue in a forthcoming article called America’s First Patents, this reliance is unjustified now and was unjustified in 1850. At the time of Neilson, British law did not allow for process patents at all.

    An anti-non US snooty stand in favor of real US jurisprudence.

    For an academic, Michael is actually pretty keen.

    Must be that dose of real world experience.

  87. Michael, I read your article and see your point about the MOT not truly being applicable to low arts, as you called them. Still, I think the “test” I laid out 3:42 will accommodate every example you discussed in your paper but still exclude claims to abstract methods and business methods. For example, you describe methods of making boats or molds or cast iron or tin coated pipes. Each of these is included in the proposal as a method of making an article of manufacture.

    Note also that I modify the MOT to include a modified function. This would accommodate both programmed looms and programmed machines, and even the O-ring invention your discussed, because of the tarred rope in a groove would perform novel sealing function.

    Food for thought.

  88. Although I have not conducted a study, have no data, and have not performed testable statistical analyses, I will use my impressive (albeit sadly misapplied) intelligence to make a compelling argument using logic and language excised from various precedent that the vast majority of legal scholarship is intellectually bankrupt and should be ignored.1

    1 Don’t worry, I will include a footnote after every sentence in my paper so that you know it must be true.

  89. I’m not a big fan of the point of novelty stuff, but I recognize the problems with Beuregard type claims. In my latest article, America’s First Patents, I look at this and early development of method patenting by reading every available patent from 1790-1839. I specifically discuss software v. machine issues in the context of Jacquard loom patents.
    Here’s the article if you are interested: link to papers.ssrn.com

  90. Your pragmatism is, of course, easily understood. My comment was not in any way intended as a personal criticism, but merely an expression of my personal preference.

  91. or directed to a result

    Funny, I don’t remember seeing that as part of the trilogy from us.

  92. I agree. It is a RARE instance indeed when an appellate court says it was wrong, and then reverses course completely.

    Only Judge Dyk stuck to his guns…which are still shooting blanks.

  93. Malcolm, you are right on the tb'ers.  They were counting on the good possibility that the claim limitations could not be ignored.  I think the dicta in Prometheus about 102/103 claim as a whole largely killed off 102/103 as a possible vehicle. Add to that that the Supreme last year denied cert. where the challenge was under 112, p. 2, where the claim was to a result.  We have no choice now.  We need to use 101 where the point of novelty is abstract, directed to a law of nature or directed to a result.

  94. if they were to follow Diehr to it letter

    Why would they start doing following the imaginary Diehr absolutist prohibition now? They never followed that line before. Nor did the Federal Circuit, even in their own erroneous Prometheus decision.

    And what difference would it make anyway? I’m still waiting for someone to answer that question. Other than the fact that the Supreme Court would need to make shxt up on the fly, what difference would it make to anyone if mental steps
    (or any other steps reciting ineligible subject matter) were necessarily ignored for 102/103 purposes?

    It’s always been obvious that those who wanted the claims to be analyzed under 102/103 were banking on the fact that the steps could NOT be ignored. They just refused to admit it, because that would prove they were nothing but patent txxbxgger stooges.

  95. it breathes new life into such old canards as point of novelty (the claim is the point of novelty)

    The term “point of novelty” is not a canard but rather a very convenient expression for describing what the inventor’s contribution was relative to the prior art. It’s too bad that some people view patent law in absolutist Biblical terms. But some people view everything that way. And, as everyone knows, those people tend to be wrong about everything and toxic to just about every discussion they insert themselves into.

  96. Step, if you have been following the Mayo thread, I there expressed surprise that the Supremes seem to abandon Diehr admonition not to ignore the old elements.  They did that here, but explained why.  I had thought that if they were to follow Diehr to it letter they would have had to resort to invalidating the claims, if at all, under 102 as recommended by the government.

    Regarding printed matter, is a book with a different cover a new book where the cover varies from old covers only in its words or colors or the like?    I suppose in a vague sense yes.  But in a patentable sense?  Observe that the cover has a functional relationship to the book, but that functional relationship is old and is otherwise unrelated to the new words.

  97. I think the worst part of the Prometheous opinion is that it breathes new life into such old canards as point of novelty (the claim is the point of novelty) and the ultra vires treating of processes as if that enumerated class is different than the other classes.

    Not to mention the barbarism rendered here by Ned to the Printed Matter Doctrine (and all its exceptions). Again with the “automatic?” Yet another ultra vires insertion.

  98. And so you see my quandary. It can do the job, it should do the job, but it’s not doing the job, and we have this 101 exclusion. So we proposed a potential gap filler.

  99. Pro se, I see you mention Zoltek. I have asked several times now why Dennis has posted on that case. It vacated, not just overruled, after all, a prior panel decision. Now that at least deserves some discussion.

  100. Legal scholarship cited by the Supreme Court in Prometheus should include the brief of amicus curiae Association Internationale pour la Protection de la Propriété Intellectuelle (AIPPI), cited at page 23 of the slip opinion, for the fact that methods of medical treatment are not patentable in most of Western Europe.

  101. What damage?

    Only a person who neither knows nor cares about how real law works (and should work) would venture forth with such a statement.

    Oh wait, it’s that MM character.

    Never mind.

  102. Michael,

    On the main point,

    I could agree that a claim nominally directed to machines, articles of manufacture, or compositions of matter, and methods of making and using the same, could be considered patentable subject matter without more provided that

    1. The point of novelty in a claim has to be functionally related to an otherwise patent eligible element or step such that that element or step is modified in structure or function; and

    2. The claim cannot be abstract or functional at the point of novelty such that the claim effectively claims a result.

    Thus for example, a Beauregard claim would fail #1. A Prometheus style claim would also fail #1.

    In contrast, a programmed computer would be patentable subject matter provided that the claims made clear that the program was part of the machine and was automatically executed by the machine when needed. This would contrast a claim whereby the computer was merely being used to perform an otherwise unpatentable method.

  103. Michael, “112 is not currently working.”

    That, my friend, is an understatement. I would argue that by not following such cases as Morse, Incandescent, Perkins Glue, Wabash and Halliburton, the Federal Circuit is doing the nation a disservice. Yet, in a recent cert. petition (I don’t recall the name of the case, but I will look it up if you would like), where the issue for which cert. was sought was that a claim was indefinite under 112, p. 2 for claiming a result, the government filed an amicus where it supported the current Federal Circuit interpretation of 112, p. 2., that if a claim can be construed, it was not indefinite, ignoring that the claim was to a result, and thereby seemed to be in violation of a host of Supreme Court cases to the effect that such claims were indefinite.

  104. At some point, though, you have to accept that your views are not going to be adopted and figure out what else can be done to minimize the damage.

    What damage? The “damage” was being done by the USPTO granting claims reciting methods of thinking about new, patent-ineligible facts accompanied by trivial “transforming” steps that were already being carried out by others in the field years before the patent ineligible fact was discovered.

    That was the damage being done to our patent system, Michael. Could that damage be prevented by ignoring mental steps when performing an analysis under 102/103? Sure. But it can also be prevented by recognizing that the real underlying issue is a 101 issue: turning practitioners into the prior art into infringers merely because they are thinking about some new fact that was published and dedicated to the public.

    I suppose I could sit back and complain that my purist views are getting rejected, but that’s pretty useless in my view.

    Agreed. Of course, you could do even worse things like engage in endless sockpuppetry here and pretend that the sky is falling and billions of children will die because Mr. Moneybags won’t be throwing his cash at some “personalized medicine” data processing scammers.

  105. ? I stand behind my views about the way the law should work. I just wrote a blog post standing behind them, and my colleagues who know me were surprised to read the Court’s version of things. At some point, though, you have to accept that your views are not going to be adopted and figure out what else can be done to minimize the damage. I suppose I could sit back and complain that my purist views are getting rejected, but that’s pretty useless in my view.

  106. Ned says: “But isn’t that really a 112 problem, claiming all ways of accomplishing a result while disclosing only one way?”

    Yes, and this was the point about how the Court thought I changed my mind. In Everything is Patentable, I argue that 112 could do this work. In Life After Bilski, we accept the fact that 112 is not doing this work currently, and say that if there is going to be a 101 exclusion, it can do this work. This, of course, is why the Court says I recanted.

  107. EG Breyer’s opinion fails (again) to tell us not just what is a patent-ineligible “law of nature

    All laws of nature and all facts and all correlations are patent-ineligible, EG.

    Is that really that hard to understand? This was crystal clear before Prometheus and it’s crystal clear after.

    The patent txxbxggers allowed themselves to be deluded (I’m being kind here) into thinking that one could render a law of nature, a fact, or a correlation patent eligible merely be reciting a step of thinking about the law/fact/correlation in addition to some step that was conventional and well-known in the prior art. For very straightforward reasons that I explained here in these comments probably 200 or 300 times over the past several years, that approach CAN NOT WORK.

    The Supreme Court figured this out but I’m pretty sure they didn’t figure it out from the shxtty briefs that were presented to them.

  108. I’m well aware of the problematic nature of the Prometheus claims, MM,

    Really? Because when we attempted to discuss the claims previously you seemed really really confused about the problem, EG. Like you simply were unable to discuss it reasonably without going off on a tangent.

    they never make it their responsibility to give us “mere mortals” understandable guidance on how to “do it right” in their eyes.

    Sounds like you need a new job, EG.

    no one (including Breyer and his 8 cohorts) can determine with any degree of predictability (or objectivity) when a claimed method/process reaches the “patent-eligible zone.”

    That’s funny because I was 100% certain that Prometheus’ claims and any claim like them had to be ineligible or invalid. And I explained exactly why that had to be the case in terms that a fxxxing two year old could understand. And now we have a 9-0 decision completely validating what I was saying.

    By the way: there’s more to come. The Supreme Court isn’t finished applying the 101 hammer. Take it to the “Bank.” LOL.

  109. I’m well aware of the problematic nature of the Prometheus claims, MM, so please “cease and desist” with you ad hominem attacks When you resort to words like “pathetic” you simply lose credibility.

    After Bilski, I was already concerned that the Prometheus claims were in danger because of the final data-gathering “determining step” with “wherein clauses” to define what metabolite levels were too low or too high. If it were up to me, I would have dropped the “administering step,” started with the “determining step” (or a step which simply says what was provided by the “wherein clauses” in terms of when the metabolite levels being too high or too low), and follow with a final “indicating step” (or something similar) that suggests how the drug dosage should be appropriately adjusted (depending upon whether the metabolite level suggests the drug dosage is too high or too low) when being administered to the patient. But given Breyer’s muddled reasoning and conflicting statements in his opinion, I’m not sure even such an “indicating step” would make it to the “patent-eligible zone. You are free disagree, but that’s my view.

    If you think that Breyer’s opinion is anything but muddled, nonsensical reasoning, you’ve been drinking too much of the “Kool Aid” supplied by those amici supporting Mayo. Like the Bilski decision before it, Breyer’s opinion fails (again) to tell us not just what is a patent-ineligible “law of nature,” but also how to make an application of that “law” patent-eligible. One of my biggest beefs with SCOTUS is that when they upset our patent law “applecart” like they’ve done here, they never make it their responsibility to give us “mere mortals” understandable guidance on how to “do it right” in their eyes. In view of muddled reasoning and conflicting statements in Breyer’s opinion, no one (including Breyer and his 8 cohorts) can determine with any degree of predictability (or objectivity) when a claimed method/process reaches the “patent-eligible zone.” And how the USPTO and 6000+ patent examiners will apply this muddled reasoning already gives me an Excedrin headache.

    Peace.

  110. The academics and the justices got it wrong. The United States in its Amicus Curiae brief got it right.

  111. I am certain I am in the distinct minority, but I would rather have seen Mr. Risch stand behind his personal views than to join a paper reflecting otherwise. It seems to me it is fundamentally better to say “What is being done is wrong and here is how to make it right”, as opposed to “What is being done is wrong and here is how to make it less wrong”.

    Zoltek, at least as it now stands, is a good example of the former.

  112. That’s why Breyer’s opinion is such a muddle of nonsensical and conflicting logic that never provides guidance on how to reach the “patent-eligible zone” with such methods/processes

    So says a commenter who refused to even discuss the problems with Prometheus’ claims.

    You’re pathetic, EG. You and Noonan both blew it.

  113. Keep your chin up, Michael. I know where you really stand and it’s the approach presented in your 2008 article which, unfortunately, Breyer’s opinion rejects (even though the Government endorsed this approach) for reasons (“it would make the ‘law of nature’ exception dead letter”) that don’t stand up under scrutiny. That’s why Breyer’s opinion is such a muddle of nonsensical and conflicting logic that never provides guidance on how to reach the “patent-eligible zone” with such methods/processes

  114. Michael, I am in the process of reading your article co-written with Lemley. I tend to agree that overbreath of claim is a problem. But isn’t that really a 112 problem,

    Yes, until the breadth is such that the claim effectively precludes otherwise non-infringing actors from thinking about a natural law or abstraction or any other ineligible subject matters, or similarly prevents otherwise non-infringing actors from attempting a design-around. In those circumstances, you have a 101 problem (in addition to other problems, usually).

  115. Michael, I am in the process of reading your article co-written with Lemley. I tend to agree that overbreath of claim is a problem. But isn’t that really a 112 problem, claiming all ways of accomplishing a result while disclosing only one way? (Cf., Morse, Incadesent Lamp, Perkins Glue, Wabash Appliance, Halliburton v. Walker)

    I think the reason we keep having the same overbreath problem recurring in patent law is that there were and are judges on the Federal Circuit who do not see the problem. Their current jurisprudence states that if a claim can be construed, it is not indefinite. What this means, is that very broadly stated and indefinite claims will be limited by the courts during claim construction to the disclosed embodiments and equivalents.

    So, if this is in fact the case, that claim constrution will or at least can solve the problem of overbreadth, should 101 analysis not be reserved for those cases where a limiting claim construction cannot solve the overbreath problem.

    But the way I see it, the courts should do something about incredibly broad and abstract claims that attempt to claim every future equivalent using indefinite terms and functionally expressed limitations. I just think that 101 is not the proper place for this. Section 112 is the proper place and is consistent with Supreme Court case law, abeit, we still have to deal with 112, p.6, the patent bar’s attempt to overturn Halliburton.

  116. Michael,

    So what do you thinnk about Breyer’s characterization of your “capitulation” as you changing your mind?

  117. The best argument for denying claims like Prometheus’ claims wasn’t made by an academic, at least not originally.

  118. Wow, vicious. No wonder I’m about the only academic that ever engages with commentors here. I don’t mind if you think my work is crappy, but you could at least read the articles before bashing them.

    Yes, I worked with inventors, and I still do. Yes, I worked with our patent prosecutors to figure out strategy and claiming.

    What do I think of this whole line of subject matter rules? I’m not a fan. My Everything is Patentable article says that the non-statutory exclusions should be thrown out in favor of the other patentability criteria – the exact argument that the court just rejected (and the reason why it was cited). Life After Bilski says that IF we are going to have such a rule, what factors should we apply. You don’t like the factors? Fine. But I don’t see any better ones given that the Court isn’t going my way on the underlying issue.

  119. But, then you wouldn’t have it out with me. I’ll read your article and make you look like the fool that you and Lemley are.

  120. So, Risch, you litigated. Did you ever work with inventors and write patent applications?

    So, Risch, what do you think of Newman’s dissent in Bilski where she describes what the meaning of abstract should have in patent law? Your article appears to me at first glance to be really bad in that there is no way to apply “abstract idea” in any systematic way. It is nothing more than a place holder for anyone in judgement to invalidate a patent or deny a patent.

  121. Ummm, I litigated patents for many years before going into academia, and I currently do a lot of prior art research work. And for the record, I didn’t exactly change my mind.

  122. We need to do background checks of these people. The journals need to force poeple like Lemley to disclose his sources of income. Before this is done, we should not refer to this as “scholarship”, but rather opinions that may or may not be paid for by clients.

    So, in other words, briefs.

  123. This has been stated more times than any of us can even begin to count, but why is it that persons having no experience with patent law other than having read Title 35 are the ones who for all practical purposes articulate the “tests” that are to be applied throughout the entire eco-system, from start to finish, we call “patent law”? But for a very, very, very few academic articles I have read, it seems to me that the existence of 37 CFR, the MPEP, and internal policy guidance is unknown and/or unappreciated as to their significance.

    Tongue-in-cheek, of course, perhaps academics inclined to declare what the law “is or should be” should be required to take the bar exam, deal with clients, get a few cases under their belt, etc. So much of the time academic articles come off, to draw an analogy, as non-engineers telling Boeing how to build aircraft.

    Importantly, I am not against academia. I am, however, against self-styled experts totally lacking in any real world experience other than waxing poetic after reviewing each other’s work.

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