Guest post by Professor Michael Burstein. This review is cross-posted on the Concurring-Opinions blog.
In his new book Infrastructure: The Social Value of Shared Resources (OUP 2012), Brett Frischmann explores how infrastructural resources contribute to social welfare. He defines a set of resources — infrastructure — in terms of the manner in which they create value and then examines the conditions under which such resources ought to be managed as a commons. He develops a framework for understanding the demand for infrastructure and the advantages and disadvantages of managing infrastructure in a nondiscriminatory manner. Prof. Frischmann then applies this framework to a variety of infrastructural resources — roads, telecommunications networks, the environment, and, of particular interest to readers of this blog, cultural resources including those which are protected by patent and copyright law.
I'm going to focus my comments on Frischmann's theory of intellectual infrastructure and how it relates to the structure of intellectual property law. Just a few days after the release of Infrastructure, the Supreme Court handed down its decision in Mayo Collaborative Services v. Prometheus Laboratories. That case presented the question whether certain diagnostic claims were within the scope of patentable subject matter under section 101 of the Patent Act. The Court held that they were not, in a manner that is strikingly consistent with Frischmann's theory. Hence the title of my post. But Frischmann's theory may also go a long way toward bringing some order to an area of patent law that has long been confused.
Let's start with the concept of intellectual infrastructure. Frischmann explains that intellectual or cultural resources can be infrastructural in the same manner as physical goods. So long as the resource is a "nonrival input into a wide variety of outputs" (275), it satisfies the characteristics of infrastructure that Frischmann so richly describes. In turn, that suggests that the case for managing the resource as a commons is strong. Frischmann then explains how this concept applies to ideas. Ideas, he writes, often are infrastructure (subject to a number of complications that I'll put to the side). So in his view, intellectual property should protect implementations of ideas but not the ideas themselves (286). To sort one from the other, Frischmann turns to the concept of abstraction in copyright law and argues that patent law should follow a similar path.
Now consider Prometheus. The inventors in that case discovered a correlation between the effectiveness of a drug and the amount of certain metabolites of that drug in a patient's blood. Their patent claimed a method of optimizing the dosage of the drug based on that correlation. The method was simple: (1) administer the drug; (2) determine the amount of metabolites in the patient's blood; (3) make an inference about drug dosage based on the correlation. Doctrinally, the question before the Court was whether this amounted to a claim on a "natural law" – the correlation between drug dosage and metabolism that happens in the human body – which would be unpatentable under a long-standing exception to the scope of patentable subject matter, or a patentable application of that law.
Substitute "idea" for "natural law" and the analogy to Frischmann's analysis becomes clear. Indeed, there is no reason why a "natural law" cannot be an "idea" as Frischmann describes it. A natural law is the articulation of a principle; whether that principle is an infrastructural idea turns on its characteristics, not its origins. In Prometheus, the Court, with Justice Breyer authoring the unanimous decision, held that the patent claimed the natural law itself and not an application of that law. The Court held that the the patent claims did not "add enough to their statements of the correlations . . . to qualify as patent-eligible processes that apply" those correlations (slip op. 8). The "administering" and "determining" steps, in the Court's view, comprised "well-understood, routine, conventional activity already engaged in by the scientific community" and so were "not sufficient to transform unpatentable natural correlations into patentable application of those regularities" (slip op. 11). Or, in Frischmann's terms, the patent claims did not amount to an implementation of an idea; they claimed the idea itself.
The rationale underlying the Court's decision also resonates with Frischmann's argument. Justice Breyer cast the decision in expressly functional terms. The danger, he wrote, is that because natural laws are "the basic tools of scientific and technological work," patents on natural laws "foreclose[] more future invention than the underlying discovery could reasonably justify" (slip op. 17). So too, the rationale for managing infrastructural resources as commons turns on the demand-side benefits: the spillovers and externalities that non-rival consumption of infrastructure resources enables. In this way, Prometheus is quite consistent with Frischmann's injunction against propertizing ideas.
Frischmann's theory also suggests some provocative solutions to problems that have long plagued the doctrine of patentable subject matter. Section 101 of the Patent Act defines as patentable any "new and useful process, machine, manufacture, or composition of matter." But the Supreme Court has long carved out from those categories several broad exceptions. They are usually described by the terms "laws of nature, natural phenomena, and abstract ideas," but at times appear also to encompass "products of nature," "mental processes," "mathematical formulae," "algorithms," and the like. Infrastructure may offer a unifying principle for choosing to exclude these things from the scope of patentable subject matter. Frischmann writes that "[t]he Supreme Court should stop referring to abstract ideas" in its patentable subject matter jurisprudence and should instead "make clear that ideas are not patentable" (300). Viewed through the lens of infrastructure, Prometheus is a step in this direction. The correlations at issue in that case were actually quite narrow. At the very least, they were not "abstract" in the sense that the "concept of hedging risk" found to be unpatentable in Bilski v. Kappos was abstract. Yet the correlations in Prometheus and the concept of hedging in Bilski are both ideas. And they are ideas that have the characteristics of infrastructure — nonrival inputs into a wide range of outputs. The Court's functional analysis suggests that the problem in both cases was that granting exclusive rights to ideas that have the characteristics of infrastructure might foreclose future innovation.
I would go even further. The next big patentable subject matter case is likely going to be the Public Patent Foundation's ongoing challenge to gene patents held by Myriad Genetics. Doctrinally, the question raised in that case — whether the patents claim "products of nature" – is different than the question whether a patent claims an idea. But to the extent that genes can be characterized as infrastructure — and I think there is a reasonable case that they can be — the functional analysis described above should apply. The exclusion of products of nature from the scope of patentable subject matter may therefore be consistent with the exclusion of ideas from the scope of patentable subject matter.
It has also been a matter of debate among academics and practitioners whether and to what extent the inquiry into patentable subject matter serves a function different from other requirements of patentability like novelty or nonobviousness. To the extent that infrastructural resources ought to lie beyond the scope of patent protection for functional reasons, the patentable subject matter screen will capture this insight in a way that other patentability doctrines will not. But this is a topic for further exploration.
Frischmann's book is an important contribution across a wide range of fields. It is a terrific achievement and I think its influence will continue to grow as we grapple with the implications of its analysis.
Concurring Opinions has been hosting a symposium to discuss Prof. Frischmann's book and includes posts by Marvin Ammori, Adam Thierer, Barbara A. Cherry, Frank Pasquale, Michael Burstein, Timothy B. Lee, Tim Wu, Laura DeNardis, Andrew Odlyzko, Deven Desai, and Brett Frischmann himself.
ANL, just a note, 101 has been in the patent statutes in almost present form since the founding of the Republic. It expressed, clearly, Congress’s then understanding of what subject matter was intended to be protected by the constitutional grant of power to protect inventions and discoveries with patents. We can take this to be Congress’s first definition of Useful Arts.
In two cases, one in 1852 and 1854, the Supreme Court developed two doctrines that stood side-by-side:
1) one could not patent laws of nature or principles in the abstract; and
2) a claim stated broadly to a principle was too abstract and effectively a patent on the law of nature or principle, covering all uses of the law of nature or principle, and including within its scope all inventions to be made in the future that implemented them.
The SC justified, I believe, item 1 on what it perceived was the constitutional grant of power to protect “inventions.” The second it justified on the constitutional purpose for patents: to provide an incentive to invent. Broad scope, not tied to the apparatus or processes actually invented, deter further inventions and defeat the purpose for patents.
Perhaps after Golan, in a proper case, the SC would reconsider point 2. But I doubt that they would reconsider point 1.
You might try actually reading Le Roy v. Tatham and O’Reilly v. Morse. Also read Curtis’ 1858 commentary on patentable subject matter in his Preliminary Observation to his 1867 edition of his treatise. It is well worth a read.
link to books.google.com
SC, “Integration”
Key difference.
I think Malcolm’s formula has to be read
“old steps + new thought without integration.”
However, I know Malcolm has even debated me on the point that adding a mental step to an old process regardless of where it occurs should not be patentable. If that is his position, then he would find the Prometheus claim ineligible even if they required the doctor to adjust the dosage level in response to a too high or two low metabolite test result.
Your answer to read Flook is a non-answer.
If you have some point to make, make it.
Gates, read Flook,
“you first must ask what was the underlying process before one can ask whether the integration into it was sufficient.”
Why? Is not an underlying process not a process?
Words can’t say how much I appreciate what you’ve mentioned here… Thanks a lot for this info.
Court, to begin to understand how Diehr applied to Prometheus, you first must ask what was the underlying process before one can ask whether the integration into it was sufficient.
What was that process court?
“Certainly, if patent ineligible subject matter is integrated into a conventional process as it was in Diehr, the claim as a whole is patent eligible”
Prima facia wrong.
The problem in Prometheus was not a lack of integration. Ned’s comment is both a dodge and a red herring. The problem was that the Court felt like nominal “as a whole” simply was not the right kind or type or degree difference over the natural law involved.
It’s a poorly reasoned and poorly written decision and understanding A New Light’s idea explains why. The Court is addressing its made up patent law and not the legislative law of 101. You cannot square the reasoning because the reasoning cannot be squared. Recognizing this is a critical first step to any effective solution.
A, I think the Supreme's start with the ineligible subject matter and then determines whether enough other material has been added to render the claim as a whole patent eligible. Certainly, if patent ineligible subject matter is integrated into a conventional process as it was in Diehr, the claim as a whole is patent eligible. If it is not, as in Prometheus, then the claim as a whole is not eligible subject matter.
Ned: “Alexander, would you agree that if the invention lies in something other than the law of nature that the law of nature itself is somewhat irrelevant to whether the claim is patentable?”
No Ned, I do not agree, and neither does the Court. As i have pointed out to you many times in this thread the Court said that “the basic mathematical equation, like a law of nature, was not patentable. But it found the overall process patent eligible because of the way the additional steps of the process “integrated” the equation into the process as a whole.” ( emphasis added) .
The concept of integration eliminates the concept of dissection of the claims at 101 and upholds Diehrs ruling that importing novelty into 101 analysis in not allowed.
A point you have repeatedly ducked in this thread that highlights a shameful pattern of intellectual dishonesty and cowardice on your part.
“it is only an activist judicial tool for allowing judges to make additions to the patent law per their philosophical (and not legal) views. ”
And therein lies the heart of Ned Heller, MM, 6, and all the anti patent crowds motives.
This is why MM can’t cite case law and engage in legal discussion and Ned is so dishonest and fallacious that trying to debate law with this character is like talking to a two headed snake with a head at each end of its body.
All they want to do is put forth their own philosophical views and not what the statute actually says and instructs the Courts to do.
How many questions has Ned Heller ducked and left unanswered in this thread alone. 100? 200?
How many times has Ned argued in circles and twisted things after being backed into a corner with the law?
A thousand?
Ten Thousand?
And these stoooges of the anti patent world think they are influencing the judiciary in their GD war?
If that be the case,
Heaven help America.
Heaven helps us all!
Turn off the non physical software geneerated bold signal please.
Illuminated by A New Light, the rub with this dependence of ther 101 question on novelty can be brought out of the dark.
Take this little thought experiment. Same invention for a traffic light, separated in time.
“A” invents the traffic light in 2005 and promptly files a patent application in the US, asking for nonpublication. Three years later he has not seen a first action yet (the Office is debating whether the mere creation of signals that have no function in and of themselves merits a patent).
After much deep thought, the Office relents and decides that “A‘s” traffic light deserves patent recognition as a manufacture overcoming both the abstract and signal rejections.
Prior to actual issue and publication, but after the “A” decision to allow, “B” invents the traffic light in 2010 and promptly files a patent application in the US.
He is rejected as claiming patent ineligible material.
Based on the “novelty” aspect, “B” is not eligible – not even eligible!
Come 2011 and “C invents an improvement to “A‘s” light, adding a set of components to allow a blinking blue light on top of the traffic light to be turned on in cases of emergency to send a new thought to drivers that an emergency vehicle may be coming through the route.
Should “C” get a patent? Assume for the thought experiment that his invnetion satisfies all novelty, obviousness and other non-101 requirements.
Is his invention eligible?
Repeat the ““-to-“A” scenario with an inventor “D” to “C.”
So how can one thing have a patent and the same thing displaced in time not even be eligible?
The only rational conclusion to this thought experiment is that the injection of “novelty” is at most a smokescreen on the eligibility issue.
Logically, it can serve no purpose for the eligibility question.
It is only an activist judicial tool for allowing judges to make additions to the patent law per their philosophical (and not legal) views. Only by obscuring the light and in the cover of fog and darkness, hiding the signal, can such new law be introduced. This makes for dangerous intersections, not safer streets of innovation.
Ned, you are arguing your opponents points. The quote you provide does not say the software was not new. It actually says the opposite.
I have to wonder if you understand the words that you are quoting and highlighting. For some reason that I cannot figure out, you think it says something completely different. Exactly what do you think the old computer has that makes it novel here? The only novel piece is the controlling software. That’s it. Everything else was there prior.
Even after I quote the decision and highlight the point of novelty, you remain immune to reality?
“If you can actually read, the software was not new.”
I would love to read that – but you haven’t typed that!
If you can actually read, the software was the only thing new to the claimed machine.
The new software was your beloved point of novelty.
It certainly wasn’t “a computer” and it certainly wasn’t the Math. The only thing left is the abstract idea of continuous measuring and calculating – the very product that is realized by the software.
Face it Ned – you cannot win on this but lose.
Svcks to be you!
If you can actually read, the software was not new.
Ned,
Exactly what do you think did this contribution to the art residing in the process of constantly measuring and constantly recalculating ?
That’s right – the new software or programming to the old computer.
Is that why you responded to “Ned Off Base” but not to “Ned’s Closet Software Beliefs” ?
You are now faced with a serious conundrum to your beliefs and agenda. In order to make sense out of Diehr in view of Prometheus, you must accept the full force of Alappat.
Svcks to be you!
Sir, where do you get these ideas about Diehr? Your idea that everything was old, old in combination, and that the only thing new was the math is completely without foundation.
Let me quote:
"Respondents claim that their process ensures the production of molded articles which are properly cured. Achieving the perfect cure depends upon several factors including the thickness of the article to be molded, the temperature of the molding process, and the amount of time that the article is allowed to remain in the press. It is possible using well-known time, temperature, and cure relationships to calculate by means of the Arrhenius equation[2] when to open the press 178*178 and remove the cured product. Nonetheless, according to the respondents, the industry has not been able to obtain uniformly accurate cures because the temperature of the molding press could not be precisely measured, thus making it difficult to do the necessary computations to determine cure time.[3] Because the temperature inside the press has heretofore been viewed as an uncontrollable variable, the conventional industry practice has been to calculate the cure time as the shortest time in which all parts of the product will definitely be cured, assuming a reasonable amount of mold-opening time during loading and unloading. But the shortcoming of this practice is that operating with an uncontrollable variable inevitably led in some instances to overestimating the mold-opening time and overcuring the rubber, and in other instances to underestimating that time and undercuring the product.[4]
Respondents characterize their contribution to the art to reside in the process of constantly measuring the actual temperature inside the mold. These temperature measurements are then automatically fed into a computer which repeatedly recalculates the cure time by use of the Arrhenius equation. 179*179 When the recalculated time equals the actual time that has elapsed since the press was closed, the computer signals a device to open the press. According to the respondents, the continuous measuring of the temperature inside the mold cavity, the feeding of this information to a digital computer which constantly recalculates the cure time, and the signaling by the computer to open the press, are all new in the art."
““Xs are Ys” is a linguistic way of saying X ^ Y”
Logic FAIL
Off Base,
You miss the subtle capitulation inherent in Ned’s post.
Since everything physical in Diehr was indeed old in the art, the saving grace was the newness as presented by the computer programming. Software.
That was the only thing actually novel. Since Ned maintains that Diher was an otherwise patentable process, and the only thing novel was software, then software must be, as a point of novelty, patentable.
Now it you take that away, Ned’s argument does collapse into a meaningless circle of FAIL.
Ned,
Your circular logic is failing fast.
Ned on Diehr: “The claim set forth a process, and a patentable process, regardless of the presence of the Arrhenius equation, or the computer for calculating it.”
– regardless? Not possible. Take away the math and the computer for calculating and you just don’t have the process. At all. All you have are elements old in the art. FAIL.
Ned on Prometheus; “If one were to compare what was being claimed in Diehr with what is being claimed in Prometheus, imagine that the blood TEST of Prometheus was novel and inventive itself. If it was, the whole issue of whether the claim was claiming a law of nature would have been put to one side.”
Diehr is interesting as a section 101 case because of its rationale” (emphasis added)
As mentioned, the Diehr process was admitted old in the art if you take away the ineligible subject matter.
You cannot square the rationale between Diehr and Prometheus. At least not and maintain your intellectual honesty.
“Because you and those with limited intellect are missing a valid point.”
um no, I get the point.
“But since a law of nature or abstract idea is no longer just a law of nature or abstract idea when reduced to a series of steps, that means that ALL processes reduced to a series of steps are patent eligible. ”
You do know that this argument was presented to the USSC some 40 years ago and they decided that nope, they were still going to blow it away? You know that right?
“The Court has no authority to go beyond that. ”
Tell it to the court.
Alexander, I would ask you to review the facts of Diehr one more time. The novelty really was in constantly monitoring the temperature inside the mold and updating the time to open the mold. This produced a more thoroughly cured product in a shorter time. In reality, the ineligible subject matter had nothing to do with the novelty or the invention. The ineligible subject matter, the Arrhenius equation, in fact was old and old in the combination. The claim set forth a process, and a patentable process, regardless of the presence of the Arrhenius equation, or the computer for calculating it.
If one were to compare what was being claimed in Diehr with what is being claimed in Prometheus, imagine that the blood test of Prometheus was novel and inventive itself. If it was, the whole issue of whether the claim was claiming a law of nature would have been put to one side.
Diehr is interesting as a section 101 case because of its rationale. At least we know that the addition of ineligible subject matter to an otherwise patentable process does not present a section 101 problem.
No one was more violative of the spirit than the very one who warned of 101 being a nose of wax: Justice Stevens. I just finished re-reading his mess of a dissent in Bilski yet again.
If there ever was reason to not let a single man of the Court run roughshod over what a multitude of legislators have the power and duty to control, his rambling aim to outlaw business method patents is just that reason. Note in particular how he is perfectly fine with a judicial post facto overthrow of Section 273.
It chills to see such power wielded so uncontrollably.
Ned’s silence in view of Malcolm’s crassness speaks volumes.
1) You look for a degree of detail that will not and cannot be forthcoming. You look for this degree merely to suit your agenda. It has been asked, but not answered: why the particular focus on business methods?
2) You seek to redefine what a business method is to bolster a test that has been decimated in back to back Supreme Court decisions. MOT is all but dead, reduced to being a clue that is definitive neither in its affirmative nor its negative results.
3) This violates the majority holding (yes HOLDING) in Bilski. Breyer’s concurrence of two can make no changes to that holding.
Federal Common Law (law created by courts) seems to be expressly forbidden by the Constitution whose grant of power in this area is expressly to Congress.
Another phrase oft cited and oft ignored: to impose limitations on the Patent Act that are inconsistent with the Act’s text (Bilski). Ask yourself: why does the Court care so much to stay within the Act’s text when they otherwise are clearly crafting judicial law? The answer is that if they broach the text, they realize that they transgress the Constitution. Duplicity at its finest to obey the letter and violate the spirit.
Because you and those with limited intellect are missing a valid point.
The Court created judicial exceptions of Laws of Nature and abstract ideas.
But since a law of nature or abstract idea is no longer just a law of nature or abstract idea when reduced to a series of steps, that means that ALL processes reduced to a series of steps are patent eligible. The Court has no authority to go beyond that. Only Congress has such authority. Congress did not make business methods, or software, or medical methods non statutory, and the Court has no power to do so for any processes. Remember it is Congress that has the sole power to legislate and the People that empower Congress.
So that everyone will more firmly understand that one lone lawltard is finally coming to grips with what the USSC is doing in their patent lawl? Why does the whole community need to know that?
How can you educate clerks of the CAFC and Supreme Court when you can’t even cite their case law, or answer legitimate criticisms to your theories?
For example how does your [ old steps + new thought is ineligible theory ] reconcile with prometheus “integration concept” ?
The Court said:
“The Court pointed out that the basic mathematical equation, like a law of nature, was not patentable. But it found the overall process patent eligible because of the way the additional steps of the process “integrated” the
equation into the process as a whole. ( emphasis added) Those steps included:
1. Installing rubber in a press,
2. closing the mold,
3. constantly determining the temperature of the mold,
4. constantly re- calculating the appropriate cure time through the use of the formula and a digital computer, and automatically opening the press at the proper time.” Id., at 187. 2 MAYO COLLABORATIVE SERVICES v. PROMETHEUS LABORATORIES, INC.
Here we have the Court finding claims composed of [old steps + new thought ] patent eligible in Diehr and referenced in Prometheus as the most on point precedent.
In effect the Court has found your [old steps + new thought is ineligible theory ] as legally incongruent and irrelevant.
Thanks for the heads up to the Clerks!
This is an excellent article and needs to be reposted by Dennis. If New Light agrees please post this Dennis so that everyone in the patent community can see it. It deserves to be upfront and not lost in the morass of trash talk from the likes of MM, 6, and Ned.
“Now if we can only get you talking substantively about other points that you ignore in your fairyland [old step] + [new thought] example.”
Yes do come in and play. In Malcoms MM land the Supreme Court just ruled 9-0 that [old step] + [new thought] is non statutory!
Let’s all go watch the parade as MM rides on the shoulders of Ned and all the world throws flowers and shouts 9-0! 9-0! 9-0! 9-0! 9-0!
“If a claim effectively turns practitioners of the prior art (= old or conventional steps) into infringers merely because they think a new thought while practicing the art, the claim is ineligible because it is effectively a claim to the new thought.”
Cite please?
Oh silly me. This is MM and MM don’t do cites.
Furthermore what you say is complete illogical non sense because every process claim requires the practitioner of the steps to think new thoughts while practicing the steps.
To adopt your mental steps test theory as policy or law would in effect invalidate all process claims.
Bad, math cannot be patented, nor the math using tools to calculate: pen and paper, calculators or GP digitals computers. The math must be applied.
Show me an example of unapplied math?
::Silence::
“Prometheus is like Flook…”
Non sense. Prometheus is a Law of Nature and Flook is an Algorithm.
These are the basic facts of the cases. If you can’t even get that much right what credibility do you have to discuss the holdings?
“Diehr applied the math to a particular process to produce a new result.”
What was the new result in Diehr?
Cured rubber is the same old result that everyone has gotten since they started curing rubber.
You don’t know what you are talking about do you?
“Drinking, there may be a million posts that say this, but none from me. No one backed me into any corner about medical methods. You guys are living in some kind of fantasy land.”
Ned, you are a GD l ie. I was there. Saw the whole thing.
I can think of nothing more frightening than Malcolm thinking that he is actually educating anyone, let alone law clerks with his vacuous and insulting swagger.
That is a serious sign of intense psychosis.
suckie: s there any reason why you post?
Yes, to educate people, particularly Federal Circuit and Supreme Court clerks who seem to be paying particular attention.
you add nothing
I would beg to differm, suckie, except that I don’t have to. Now run along and get a life.
“Given that there are certain categories EXPRESSLY INVITED to the race in 101, does anyone deny that anything in these categories are defined as eligible?”
Yeah, your courts and I do.
“(there have been no actual cases and controversies demanding such),”
There are several thousand cases and controversies demanding such every single year and some existed in antiquity as well.
“The only other place (and the slender reed by which the Court might hang its legitimacy) is in the constitutional grant itself. ”
Or in the centuries of caselaw that led up to the 1952 act. Either one.
“Business Methods, which are able to be patented. They are eligibile (as an enumerated category, they are expressly so).”
Who told you that ya crazy old bat?
“But I would put it to you that the trouble, confusion and dilemmas evident in any of the so-called 101 cases arises because the Court has acted above Congress and have written into the law something that Congress simply has not included.”
Technically true, the courts acted in ages past and the congress neglected to overrule them in their 1952 act. So, what you say, while technically true, is irrelevant.
in sum for the above: y you so delusional NAL?
” This is a matter above 101.”
Sure, you can think of it that way if it helps you understand. Although, we in the field simply call the whole kit kat and kabodle “patent eligibility”.
” It is not the Court.”
Tell it to the court.
I legitimately would LOVE to hear you tell all this to the court in person. I literally may disturb the proceedings and be held in contempt though because of outrageous loling.
“Alas, who plays the watchdog over the Court when it oversteps its bounds?”
Congress silly.
In light of A New Light’s post up top, I should amend my post to emphasize the broader reach of US patent law and my consistency across the Useful Arts, and not just across “technologies,” as I apply my view across the entire patent spectrum, unlike those that display their clear agendas by focusing on certain areas or methods to the near exclusion of others.
More of Malcolm’s swagger up top Ned. That you consider his views worthwhile is beyond me.
You are completely out of line Malcom.
Is there any reason why you post? I mean really – you add nothing.
suckie There is a reason why the patent clause ranks a constitutional place, and one higher than many other things (including the Amendments e.g., free speech)
Is there a reason why the Constitution describes patents merely as an option that Congress is free to decline?
You really are a dissembling p.o.s., suckie.
Be forewarned: this post is long.
As I wonder about the war of words and philosophies evident not just her on Patently-O, but in the courts (and Court), my mind keeps returning to one word: eligible.
I think it comes down to an understanding of patent eligible versus patentable.
From Merriam’s:
Eligible: (adj) 1a: qualified to participate or be chosen
To make matters less clear, eligible means “able” to participate in the patent process. But do not confuse “able” and “patentable.”
What started me down this path is when I realized that the use of the word “categorically” by Ned Heller is such a strong word, while the word “eligible” by Anon is not definitive of obtaining a patent. I was thinking that if something is ineligible it is indeed categorically outside of the ability to obtain a patent. But if something IS eligible, it may still be outside the possibility of getting a patent.
Thus, ineligible = categorically out is NOT the same as eligible = categorically in.
Being eligible only gets you so far. It only means that you are qualified to participate.
This does not mean a patent will ensue. There are many reasons why a patent may not ensue.
But what, or who in the following example, gets to participate? Who is invited?
Let’s say that patenting is like a track race (an analogy I think works well). The invitation to the race is meant to be wide open. It is a passé clause included by the Court in every decision, no matter if the Court is limiting patents or strengthening them. Indeed, at times the Court appears to use the phrase as a throw-away, saying it but ignoring it. The more runners in the race the better. The more participation, the better. Thus in this sense, “eligible” should be a very large set and “ineligible” should be a very small set.
Given that there are certain categories EXPRESSLY INVITED to the race in 101, does anyone deny that anything in these categories are defined as eligible?
Let’s take a closer look at the definition of “eligible.” There are two different factors at work: qualified and participate.
PARTICIPATE
There is (or rather, there should be) no doubt that participation in the patent system is a good and highly desired thing. There is a reason why the patent clause ranks a constitutional place, and one higher than many other things (including the Amendments e.g., free speech). Participation is the ground floor for promotion, as there can be no promotion by the patent system without participation. This distinguishes the argument (a false one) by many anti-patentists that advances and promotion can happen without the patent system. Such is a false argument, a literal non-sequitur because the true argument has a ground floor the fact that we do have a patent system, and it is the rules of playing within that patent system that we are concerned about.
So to be clear, the law and policy is to have as broad a participation base as possible.
QUALIFIED
This is where the real issue is. The rule of law laid out in the Constitution is for Congress to set out the patent system. And only Congress. Yet we have the Court making judicial law by choosing to “interpret” 101 where not only such interpretation is not required (there have been no actual cases and controversies demanding such), but that the result of such “interpretation” is actually the creation of controversy, ambiguity, and uncertainty.
But if the Golan v. Holder case is any indication (and that case too dealt with the constitutional IP clause), the Court recognizes that Congress, not itself, is the arbiter of rules, the setter of boundaries. If, as in Golan, Congress determines that it can take things out of the public domain (long a critical no-no per the Court for patent matters), and the Court has blessed this power of Congress, then the Court cannot have an interpretation issue with the rules of Congress (the actual as written law of 101).
So why the dichotomy?
What the Court is doing with its treatment of 101 is actually setting up a gate before the gate. It is not enough to be eligible by being in one of the enunciated categories as explicitly provided for by Congress. There is a seemingly (if not literal) ultra vires eligibility that the Court has written above 101, because, as the Court notes, there is no legislative foundation for this judicial distinction of eligibility (see Bilski). This is why the Court’s writings on 101 leave such a bitter distaste in so many people’s mouths. The Court is not actually writing about 101. Congress gets to write 101. Congress has written 101. Rather, the Court has nowhere to peg its writing of patent law and merely chooses 101. An argument could be made that 100 would actually be a better place, defining, rather than applying law.
The only other place (and the slender reed by which the Court might hang its legitimacy) is in the constitutional grant itself.
Herein then, is what the Court is actually deciding, and specifically NOT deciding, that is, the Court is specifically NOT deciding 101 issues. A lazy Court calling such by the wrong name is one reason why matters remain unsettled when the law of 101 remains (largely) constant.
So let us ask, what is eligible from a constitutional standpoint? IS eligibility a constitutional question?
I have posted my thoughts on this on previous occasions. I cannot find the link and fear that it is a post on one of the longer threads with broken “See More Comments” javascripts.
But to be brief (as I fear I have been too long already, and thanks to all those still reading) much of the argument turns on “useful arts.” I am unabashed as to applying a modern meaning to this term, as I feel that the subject matter itself (innovation) demands no less. But what are “useful arts’? Must they be synonymous with “technical arts?” Music, for example, is not able to be patented. It is not eligible. Contrast (especially for the immediate discussion) Business Methods, which are able to be patented. They are eligibile (as an enumerated category, they are expressly so). Consider too that the courts have ruled on the technical arts question and have determined that useful arts is broader than technical arts.
At least that is, according to how Congress has written the law. But I would put it to you that the trouble, confusion and dilemmas evident in any of the so-called 101 cases arises because the Court has acted above Congress and have written into the law something that Congress simply has not included. The Court has basically written an asterisk into 101 to exclude some (theoretically uncertain and on a case by case non-brightline basis) items that otherwise are permitted by Congress. The Court states this as a 101 matter, but that is false. If a 101 matter, it would be a patentable matter. It is clear, however, that this is a patent eligible matter. This is a matter above 101. It is a matter of who even gets to show up at the track race. If a patentable matter, eligibility would not, could not be questioned. But since eligibility is questioned, and 101 is unambiguous (ruling out the NEED for the Court to provide an interpretation, it is clear that the Court has breached the Constitution and taken power from Congress in order to write patent law.
It comes down to this: who sets the rules, any rules, all rules, for the patent game? The Constitution is clear on that. It is not the Court. By setting law of eligibility, the Court plays a dangerous game. Alas, who plays the watchdog over the Court when it oversteps its bounds?
“Truly, there is much to fear about locking any notion of property – land, intellectual, or otherwise – into an 18th century mode,”
Although there is even more to fear NOT about locking any notion of property – land, iiip, or otherwise – into an 18th century mode. Indeed, one might find themselves with airplanes flying across their property generating all sorts of ruckus. One might find abstract ideas patented ostensibly as “methods” through new drafters arts. These are but a few of the things that might happen in a situation where the old law comes into conflict with the new realities.
Ned,
These are just re-treads of your old and failed arguments.
They have never carried the day. Do you really expect them to now?
Sorry Ned, but it is you with the agenda, as my treatment of subject matter is consistent across technologies (as the law is written). For someone to be INconsistent, that is the sign that an agenda is at work.
So ask yourself, who is consistent, me or you?
anon, it does appear to the casual observe that you have an agenda regarding business methods and software patents. It may have something to do with your clients, no doubt.
anon,
"Xs are Ys" is a linguistic way of saying X ^ Y.
By saying Business Methods ARE patent eligible instead of what the court held, that they were not categorically excluded, you and others of your ilk show every intention of muddying the waters, and perhaps selling your clients a bill of goods. Such linguistice slight of hand is basically dishonest.
Regarding history of our conversations, I suggested many times
1) One of the reasons the SC would not hold BMs categorically excluded was because there was no good definition of a BM. (I agree with this.)
2) I think that any definition of BM would have to include the idea that the claimed subject matter fails the MOT; otherwise the claim is to the underlying technology, and not to any business method.
3) I futher think that any claim that does not pass the MOT is presumptively ineligibe. Bilski did not go so far, but Bilski did come close to making that statement. See, Breyer's concurrence.
“ Every claim is subject to the exceptions. Every”
Nice to see you accept my viewpoint.
Now if we could only get you to treat every claim with the same respect and have you stop singling out business methods and software claims.
What are the odds, Ned, of that happening?
Ned,
You are the only person ever to phrase the implication:
“implies that they are categorically eligible”
Ever.
It is a fallacious strawman. It is simply not the logical or ordinary meaning of “is.” That premise has been rejected repeatedly and rejected harshly.
Further, the issue you wish to obfuscate is the particular category of method patents that you have overwhelmingly posted about.
I have chastised you repeatedly for your posts, subtle and not so subtle, aiming particularly at the category of business methods apart from any other category of method patents. Are you denying that you do not treat all categories of method patents equally? Are you claiming that you feel the same towards all categories? If I had a summer intern catalogue your posts across the many, many multi-hundred threads, do you really think that your bias would not be plainly evident?
It is disingenuous to even attempt to frame my position as anything but what it so clearly has always been. My posts on this have been consistent throughout. Why do you need to say “put to rest” when I have always been consistent in my views?
Need I dig through the posts to present your own quotes to you?
There was a thread that Actual Inventor had done just so. Do we really need to do that again? Wasn’t that embarrassing enough for you?
anon, let's put the issue of the holding of Bilksi to rest right now.
Do you agree that the Court held that business methods were not categorically excluded from eligibility?
Do you agree that a statement that Bilski held that business methods were eligible for patenting is not the same thing, at least insofar as it implies that they are categorically eligible, as that is the ordinary mean of "is" (and are, were, etc.) in logic?
Anon, it appears that you are in a state of denial concerning the Supreme Court. Your statement that Le Roy v. Tatham was about obviousness being one. Another that you deny the Benson court thought the recitation of the computer being simply one means for implementing the method. Observe, that the Federal Circuit is today holding ineligible method claims that recite apparatus for carrying out the individual steps. This is right out of Benson.
Again Le Roy v. Tatham and O'Reilly v. Morse, decided in back to back terms, laid down the fundamentals. Laws of nature and principles in the abstract cannot be claimed. Applications can, and per Morse, this means that the inventive apparatus or process must be claimed, not the principle in the abstract, i.e., all ways of achieving the result using the discovered principle.
Simply reciting well know apparatus or mean for carrying out the steps is not sufficient. The algorithm must be applied to an end use. Clearly this is the holding of Benson. (They repeated the same thought numbers of times in the opinion.)
Flook expanded by holding that claiming the algorithm at a very high level of generality, no specificity on inputs and outputs was also not sufficient (significant).
Diehr's claim process was specific and complete. It produced a new result as modified by the math.
Prometheus was somewhat specific, but in the end, the non inventive nature of the "test" coupled with the general recommendation to use the correlations in the treatment of the specific disease using the specific drug was not enough.
All this is fairly simple and easy to understand. It is a wonder that you do not get it.
He ll just pull up a chair and have a cold one!
The Ned show is just about to start on the big screen.
Taking bets now on what BS excuse/ fallacy he will use to try and escaped from his own words.
anon: “Plain wrong Ned. I backed you into that corner.”
Well, Ned?
What ya got to say now?
Accusing others of what you do is in itself a fallacy.
I do not have a personal view of what integration means. The Court explained it quite clearly in Prometheus.
I posted that explanation up thread.
Now, if you dont understand how to read a case then you should not call yourself an attorney.
“they are not really interested in serious discussion.”
Please Ned, not more of these games from you. I tried more than anyone has ever tried to hold a seriosu discussion with you on the software thread, and even managed to get you to take one of the three necessary steps.
BTW, referencing back to Stern is a surefire way to eliminate any credibility that you are attempting to foster.
Malcolm,
So you finally admit what was put to you so long ago:
“Likewise, if none of the limitations in a claim are “novel”, that does not meant the claim is ineligible under 101.”
Thank the Lord above for small favors. Things would go so much better if you just admitted when others make valid points.
Now if we can only get you talking substantively about other points that you ignore in your fairyland [old step] + [new thought] example.
” I have long, long advocated the position that the ineligible subject matter must integrated into the eligible subject so that it produces a new (and useful) result. ”
First a little remedial house keeping.
There is no parsing of eligible and ineligible subject matter, period.
At May 14, at 11:37AM, your point of novelty analysis is without citation and merit as well. Nor am I interested in what you have long long advocated.
You advocacy for your agenda and beliefs are not law and do not appear to becoming law anytime soon.
Now on to the actual law:
The application of a concept is the integration.
A concept that is generally stated in the specification becomes an application of an applied process when reduced to a series of steps that require physical acts.
It’s applied and integrated and statutory. Period. Leave it alone and move on.
“The Court pointed out that the basic mathematical equation, like a law of nature, was not patentable. But it found the overall process patent eligible because of the way the additional steps of the process integrated the equation into the process as a whole. Those steps included “installing rubber in a press, closing the mold, constantly determining the temperature of the mold, constantly re- calculating the appropriate cure time through the use of the formula and a digital computer, and automatically opening the press at the proper time.” Id., at 187. It nowhere suggested that all these steps, or at least the combination of those steps, were in context obvious, al ready in use, or purely conventional. And so the patentees did not “seek to pre-empt the use of [the] equation,” but sought “only to foreclose from others the use of that equa tion in conjunction with all of the other steps in their claimed process.” Ibid. These other steps apparently added to the formula something that in terms of patent law’s objectives had significance—they transformed the process into an inventive application of the formula. Prometheus.” (12 MAYO COLLABORATIVE SERVICES v. PROMETHEUS LABORATORIES, INC.)
Oh and just so your know,
Benson is bad law in that math is an applied process which is statutory subject matter.
Morse is a 112 issue not 101. Stop conflating.
Prometheus was also 101 statutory though it may have had problems at 112, 102, and 103.
Bad decisions don’t change the law.
Integration is the key to 101.
Deal with it.
Your own words Ned: “Business method cannot be eligible for patenting (under 101) without more because Bilski held the business methods in that case to be ineligible under 101.” – emphasis added to show where you are too loose with the truth.
You are again trying to apply the “specific” to the “as a category.”
This is fallacious.
As a category, business methods are eligible for patenting.
Just like any other type of method.
Every type of method must, though, still survive the other tests. At least you are now saying this part of the equation correctly. Thank the Lord above for small favors.
This is not to say that ANY type of method is categorically not eligible based on a single Supreme Court case taking a specific type of claim from a given category.
You are conveniently leaving out your “categorically” verbiage.
“No one backed me into any corner about medical methods”
Plain wrong Ned. I backed you into that corner.
“Drinking with NAL, AI, and Ping”
Ping gets invited to the party and I am left out?
Talk about feeling slighted…
No Ned, it is you that has the bad memory, as I was the one who explicitly held you to your failed argument, part of which was the purposeful misuse of terminology from “as a category” to your blatently ill-used “categorically“.
As simple questions seem to point out, the common vernacular, and that meaning meant by anyone (else) discussing the subject is of the form “as a category” as opposed to your “categorically” – which by the way, you refused to acknowledge as noted here when the example was switched from business methods to medical methods. It is most defintely not a “bald statement” from anyone else. It was you and you were nailed for it. SUre you ackowledge it now, but that is most defintely not what your position was.
“From the very beginning of the Supreme Court’s analysis of this topic, Le Roy v. Tatham, this has been the law”
Repeat a fallacy often enough and you begin to believe it to be true.
Ned, you are aware that Le Roy v. Tatham was about what in today’s law is 103?
“But I don’t this this entirely explains the reasoning of the Prometheus court”
Ned, there is nothing that entirely explains the reasoning of the Prometheus court. That is precisely why many of those that understand patent law are upset with the decision. I have stated previously, the furor is not because Prometheus did nto get a patent, it is precisley because the Court’s reasoning is so bad.
“but the the claim could not claim particular apparatus for computing a numbers, giving examples such as pen and paper, a calculator or general purpose digital computer.”
Now you are clearly just making things up. The pen and paper simply was not used in the same meaning of argument as a calculator or a general purpose digital computer. You are misquoting the case, and doing so severely – the claim rejected was a process (notwithstanding the inclusion in claim 8 of a component, it was still a method claim). Remember: “It is said that the decision precludes a patent for any program servicing a computer. We do not so hold.” And forget about the pure crrp dicta about how difficult it would be for the Office to examine. Such is of no legal merit either to the decision, nor to the reality of why we have a patent office. It is not only dicta, but weak dicta, as Judge Rich so aptly showed following the Benson decision.
You would have Benson be raised supreme, and yet Imust point out to you – as others have done – that Benson was not cited in Prometheus as the case most on point, nor was Flook, but rather, it was Diehr.
The fact that Breyer then violated what Diehr actually says returns us full circle to why those who know and understand the law are so upset with the decision.
Your attempt here to make Diehr fit Benson is simply, to quote Robert R. Sachs quoting Wolgang Pauli: “Not even wrong.”
Malcolm, you are right, they are not really interested in serious discussion.
BTW, Stern is writing an article on Prometheus. His take on the case got me thinking about how the SC approaches the issue. I think they do the following:
1. Identify the ineligible subject matter.
2. Ask whether the eligible subject matter confines the ineligible subject matter to a specific machine, specific process (or article or composition), or whether the added material is so generalized that the ineligible subject matter is essentially preempted. (Morse is the big case here.)
– integration into a specific process is sufficient (Diehr). Integration produces a new and useful result.
– Flook failed because the process inputs and outputs were generalized such that all uses of the algorithm in the field were preempted.
– Prometheus failed because the test (the determination step) was non specific and because the rest of the claim simply said measure the metabolites and consider the law of nature in your treatment. Very non specific and therefor overly preemptive.
– Benson failed because the no use for the algorithm was claimed at all. Limiting the means for calculating to a specific machine was not limiting in any meaningful sense.
Drinking, there may be a million posts that say this, but none from me. No one backed me into any corner about medical methods. You guys are living in some kind of fantasy land.
That whole conversation started with AI and a few others saying that Bilski held that BMs were patent eligible. The rejoinder I made was a simple one: how could that be if the SC held the claims in Bilski to be ineligible?
simple, why don’t you guy just stop this c r a p? One cannot say that any kind of methods are eligible subject matter without determining whether they are in fact claiming abstract ideas or laws of nature or natural phenomena. Every claim is subject to the exceptions. Every.
Not even close, Ned. Especially when Malcolm is adamant. All he has to do is to engage in a conversation with some semblance of legal substance. He does not. Especially when he is adamant.
Further, the point under discussion above is his “swagger,” a term you coined to describe your so-called side of the GD war’s deplorable behavior. You urged readers to “enjoy it.” I think those that respond to you have been “enjoying it” more.
Alexander, bull and you know it. Why don’t you explain to us your view of integration instead of setting some strawman version of my posts and knocking them down.
What do you think “integration means?” And do you accept the basic idea that a LoN or principle must be applied to produce a new and useful result?
“Malcolm, Diehr did say that novelty was not part of 101 analysis.
It remains absolutely true that if a particular limitation in a claim is “novel”, that does not mean that the claim is ineligible 101. Likewise, if none of the limitations in a claim are “novel”, that does not meant the claim is ineligible under 101.
If a claim effectively turns practitioners of the prior art (= old or conventional steps) into infringers merely because they think a new thought while practicing the art, the claim is ineligible because it is effectively a claim to the new thought.
Like it or not, this is the holding of Prometheus and none of it is inconsistent with the holding in Diehr. To the extent any of the above is deemed inconsistent with the holding in Diehr, it means only that Diehr was illogical and wrong.
More importantly, why are you feeding these —hole trolls, Ned?
Bad, math cannot be patented, nor the math using tools to calculate: pen and paper, calculators or GP digitals computers. The math must be applied, as in Diehr, to a process that produces a new and useful result.
Flook’s claims did not do that. They were much too abstract, much like the claims in Morse. They had generalized inputs and a number output that recommended that a alarm limit had been reached, but required no further action.
Prometheus is like Flook in this.
Diehr applied the math to a particular process to produce a new result.
From your post, it appears you either do not understand the Supreme Court cases, or you refuse to accept them. Why, pray tell, if the latter?
Alexander:
“Ned will not broach the concept of integration as it smashes all of their deeply held fundamentalist beliefs”
I suspect you did not actually read my post of May 14, at 11:37AM. I have long, long advocated the position that the ineligible subject matter must integrated into the eligible subject so that it produces a new (and useful) result. From the very beginning of the Supreme Court’s analysis of this topic, Le Roy v. Tatham, this has been the law. It is not new at all.
But I don’t this this entirely explains the reasoning of the Prometheus court. One can have integration, but integrated into what? The what itself can be abstract, i.e., so generally stated as in Morse as to be a mere statement of the principle or law of nature itself.
Thus consider Benson for a moment. There the Supreme Court held that mathematics, like a law of nature, was not eligible for patenting. They opined that not only could the claim not claim the mathematics per se, but the the claim could not claim particular apparatus for computing a numbers, giving examples such as pen and paper, a calculator or general purpose digital computer. In order to confine the ineligible subject matter, there the math, to a patentable application, the math had to be integrated into a conventional process that because of the mathematics produced a new and useful result.
Prometheus does nothing more than follow the analysis of Benson, and further harmonize Flook and Diehr to the extent that their analysis was inconsistent.
Well, you kow you are fo o o lish when even IANAE does not agree with your inane logic.
MM has left you in the dust and you run around the thread like achicken with it’s head cut off making trollish comments.
Are you getting paid by the word count or thread count?
Ned the demise of your online reputation started with your year long rant based on your fallacious reasoning of
Bilski was a business method.
Bilski was ruled patent ineligible.
Therefore, all business methods have been ruled patent ineligible.
There are numerous 300 post threads dedicated to it.
Do we really need to start googling????
In fact it was when one commenter backed you into corner with you own logic and showed you it would not work with medical methods, that you suddenly played d u u mb and pretended you did not know what a medical method was.
Remember that???
Everyone else does.
No, I say that MM is usually right and one should carefully listen to his views when he is adamant about them.
Is it fallacious to say that medical methods are eligible for patenting?
Is it fallacious to say that _____ methods are eligible for patenting?
Since “methods” is a category (process), can one chose another process and ask the same question?
Is it fallacious to say that _____ manufactures are eligible for patenting?
MM, or Ned will not broach the concept of integration as it smashes all of their deeply held fundamentalist beliefs, theories and dogma they argue for so fervidly.
However the Court in Prometheus has set the tone and put in place the integration of concept 9-0, particularly by referencing it back to Diehr.
That means MOT, mental steps tests, point of novelty analysis, and even pre-emption as a means to invalidate process claims now must give way to concept of integration, the new lens thru which we all must view 101 statutory subject matter.
Dear Ned:
You have completely ignored the substantive point of the concept of Integration used by the Court.
As already pointed out by other commenters you have instead taken the intellectual low road to erecting strawman and arguing point of novelty analysis, and abstraction, and other red herring issues when it is integration of the concept that is on point here.
It never ends does it?
The folks who were making the bald statements were you and not me. No matter how much you try to put those words (that Bilski held that BM were categorically ineligible) in my mouth, the truth is that they are your words and not mine. I have many times made the point, in fact, that the holding in Bilski is that business methods are not categorically excluded. I have rather used the holding in Bilski to point out just how fallacious is your own argument — that "business method patents are eligible for patenting" — without ever attempting to qualify that bald statement in any way. Business method cannot be eligible for patenting (under 101) without more because Bilski held the business methods in that case to be ineligible under 101.
Stop putting works in people's mouths. Hew a little close to the truth, please.