The Need for Legislative Reform: The Berkeley Section 101 Workshop

Assessing the Need for Legislative Reform of Patent Eligibility in the Mayo/Alice Era: Final Report of the Berkeley Center for Law & Technology Section 101 Workshop [Read the Full Report]

By Jeffrey A. Lefstin, Peter S. Menell, and David O. Taylor

CurrentStateOver the past five years, the Supreme Court has embarked upon a drastic and far-reaching experiment in patent eligibility standards. Since the founding era, the nation’s patent statutes have afforded patent protection to technological innovations and practical applications of scientific discoveries. However, the Supreme Court’s 2012 decision in Mayo Collaborative Services v. Prometheus Laboratories imposed a new limitation on the scope of the patent system: that a useful application of a scientific discovery is ineligible for patent protection unless the inventor also claims an “inventive” application of the discovery. The following year, the Court ruled that discoveries of the location and sequence of DNA compositions that are useful in diagnosing diseases are ineligible for patent protection. And in its 2014 Alice Corp. v. CLS Bank International decision, the Court ruled that software-related claims are ineligible for patent protection unless the abstract ideas or mathematical formulas disclosed are inventively applied.

These decisions sent shock waves through the research, technology, business, and patent communities. Medical diagnostics companies experienced a dramatic narrowing of eligibility for core scientific discoveries. Reactions within the information technology community have been mixed, with some applauding the tightening of patent eligibility standards on software claims and the opportunity to seek early dismissal of lawsuits, particularly those filed by non-practicing entities, and others criticizing the shift in patent eligibility. Several members of the Federal Circuit bluntly criticized the Supreme Court’s shift in patent eligibility standards on jurisprudential and policy grounds. Additionally, the Patent Office has struggled to apply the Supreme Court’s new and rapidly evolving standards.

As this sea change unfolded, many patent practitioners, scholars, PTO officials, and jurists hoped that the Supreme Court would provide fuller and clearer guidance on patent eligibility standards. In the aftermath of the Supreme Court’s rejection of the certiorari petition in Sequenom, Inc. v. Ariosa Diagnostics, Inc.—a case that many Federal Circuit jurists, scholars, and practitioners thought to be an ideal vehicle for clarifying patent eligibility standards, or for reexamining Mayo—we began planning a roundtable discussion among leading industry representatives, practitioners, scholars, policymakers, and retired jurists to explore the patent eligibility landscape and possible legislative solutions to the problems that have emerged.

We sought participants with significant knowledge and experience in the key industries affected by the shift in patent eligibility standards—principally the bioscience and software/information technology fields. To promote candid discussion among these participants, we established the following ground rules: (1) Participants would be free to use the information received, but neither the identity nor the affiliation of the speaker(s) could be revealed; (2) We would prepare a report describing the results of the workshop—and that report would not attribute statements or views to individuals (other than the co-convenors); and (3) The report would list the participants and be made available to the public through BCLT.

Our Report summarizes the presentations and discussions exploring the legal background and effects bearing on legislative action. Part I contains a lightly edited version of the background document circulated to participants prior to the workshop. Part II summarizes the four workshop sessions leading up to the discussion of legislative proposals: (A) legal background; (B) effects on research and development (R&D); (C) effects on patent prosecution; and (D) effects on patent assertion, litigation, and case management. Part III summarizes the discussion of legislative proposals and sets forth a framework for seeking compromise on reform legislation.

As explicated in the Report, a consensus emerged that the current state of patent eligibility jurisprudence is indefensible as a matter of legal principle and is seriously undercutting incentives in sectors of the biotechnology industry. The workshop revealed broad agreement that the Supreme Court’s patent eligibility jurisprudence has diverged from the Patent Act’s text and legislative history, as well as long-standing jurisprudential standards. The participants also agreed that the Supreme Court’s ostensible rationale for its § 101 jurisprudence lacks a sound foundation, and that its formulation of the inventive application standard is grounded on a profound misapprehension of key historical precedents.

Furthermore, the workshop revealed a consensus that it is unlikely that the Supreme Court will reconsider the patent-eligibility issue in the foreseeable future. Conferees also doubted that the Federal Circuit will confront the core concerns surrounding patent eligibility. The USPTO has tended to be reactive only, or has adopted what some conferees viewed as unduly rigid interpretations of the case law.

Thus, legislative reform will be necessary to effect significant change in patent eligibility standards. Participants largely agreed that legislation would be necessary to address the problems that have emerged for bioscience researchers. Nonetheless, there was disagreement on the need for legislative reform of patentable subject matter relating to software and information technology. Moreover, there was a lack of agreement on the best solution to problems, and none of the current legislative proposals garnered consensus.

While nearly all of the conferees recognized that this state of the law poses serious concerns for bioscience research and development, there existed substantial reluctance on the part of some software industry representatives about pursuing legislative reform that could increase patent assertion activity and raise defense risks and costs in the software field. Some participants also thought that the courts should be given time to develop an appropriate screen for the eligibility of software patents and saw some progress in the developing case law.

This suggests to the workshop convenors and authors of the report (the three of us) that the most fruitful approach to reform legislation would restore the traditional patent eligibility standard at least for bioscience advances—that is, establishing that conventional applications of scientific discoveries are eligible for patent protection—while addressing concerns about cumulative creativity and abusive patent assertion. Such additional provisions could include the following: (1) an expanded experimental use exception at least for doctors and medical researchers; (2) exclusion of non-technological subject matter, notably pure business methods (a technological arts test); (3) a mechanism to encourage courts to consider 12(b)(6) motions directed to § 112 issues (as opposed to § 101 issues) early in patent case management; (4) fee-shifting aimed at discouraging nuisance value patent lawsuits; (5) higher thresholds for enhanced damages in the software field; and/or (6) shorter duration for algorithm-based inventions—i.e., where the point of non-obviousness is a computer-implemented algorithm. We further note that compromise legislation might also address distinctive issues relating to affected industries that lie outside of the patent field, such as reimbursement policies relating to medical diagnostics.

Jeffrey A. Lefstin is Professor of Law and Associate Academic Dean at the University of California Hastings College of Law. Peter S. Menell is Koret Professor of Law and Co-director of the Berkeley Center for Law & Technology at the University of California at Berkeley School of Law. David O. Taylor is Associate Professor of Law and Co-Director of the Tsai Center for Law, Science and Innovation at the SMU Dedman School of Law. The full report is available at: https://papers.ssrn.com/sol3/papers.cfm?abstract_id=3050093

147 thoughts on “The Need for Legislative Reform: The Berkeley Section 101 Workshop

  1. Possibly already said by others, but any solution to 101 juris that treats one tech area differently than another should be rejected outright. Fear of assertion risk is obviously not a valid basis for creating law.

    1. Since different “tech areas” inherently will present different factual issues, one would expect 101 to impact them differently.

      1. Since some cars are Yugos and some are Ferraris one would expect speed limits to effect their drivers differently. What of it?

        1. Actually, I thought this to be some of Malcolm’s finer (more subtle) spin.

          Note how he responded to what Iit stated, but came in at a different angle.

          Iit’s post was more about the front end and how it would be objectionable to create different 101 versions for a fractured body of different arts.

          Malcolm’s reply did not touch that (albeit, his reply was worded such that it appeared that he was touching it).

          Instead, Malcolm merely offered a truism that any one single law will be applied to the facts of each case. Since the facts of cases will (of course) be different based on the different arts, the application of the single law will “look” different.

          The obfuscation here is attempted by focusing on the Ends and not the Means.

        2. Please Pardon Potential (re)Post:

          Actually, I thought this to be some of Malcolm’s finer (more subtle) spin.

          Note how he responded to what Iit stated, but came in at a different angle.

          Iit’s post was more about the front end and how it would be objectionable to create different 101 versions for a fractured body of different arts.

          Malcolm’s reply did not touch that (albeit, his reply was worded such that it appeared that he was touching it).

          Instead, Malcolm merely offered a truism that any one single law will be applied to the facts of each case. Since the facts of cases will (of course) be different based on the different arts, the application of the single law will “look” different.

          The obfuscation here is attempted by focusing on the Ends and not the Means.

          [there is a far cry from “effect” coming from a single law to having a fractured law per each art unit to begin with. The thrust of Itt’s post was spun away from what he was actually saying]

          1. If you’re suggesting that you or iit are making an important point, you need to check yourself. All you’re doing is whining and it’s not even clear what you’re whining about (not from your words anyway).

            The fact is that the logic “arts” are already treated differently (coddled by absurd exceptions). It’s the loss of that exceptionality that makes you soil yourself and we all know why.

            1. You keep on dissembling on that “logic” path there….

              Tell me about copyright on that selfsame “logic” Malcolm. Do you believe that copyright is available for software?

            2. salvaged….

              Your comment is awaiting moderation.
              October 13, 2017 at 11:12 am

              Once again the Accuse Others meme is in play,

              Malcolm, did you have anything to say directed to what I actually posted?

              It appears not. It seems that all you did was take this opportunity to whine yourself and v0 m1t some of your typical script.

              Maybe instead you can clearly identify something that I actually stated that you take issue with.

              In other words, reply with something on point (be responsive).

              Thanks.

    2. Fear of assertion risk is obviously not a valid basis for creating law.

      Why not? Laws are created all the time based on “fear” of what will happen without them. I’ve never heard anyone suggest that wasn’t a valid basis for a law, provided that the “fear” is rational.

      1. …and another spin in effect here.

        By “fear of assertion risk” one who is familiar with patent law can easily recognize that this is nothing more than the (former) strong patent system of using both carrots and sticks. Carrots to entice inventors and sticks to beat infringers (thereby forcing them to not contemplate infringement and to either give the inventors what the inventors ask for to invent something else themselves).

        This “fear” was not only rational, it served this country well, going hand in hand with the era that this country was without a doubt the most innovative country in the world.

        But that rational “fear” was the enemy of the large transnationals who would rather compete on non-innovation terms. Those same larger transnationals are the ones that coined the term “Patent Tr011” and set about with their propaganda to turn what was once considered a rational fear into a purely IRrational fear.

        Note here that Malcolm is NOT addressing the actual point that Iit provides.

        Instead, he has co-opted the words and spun this around such that he wants the now-made-irrational fear to be blindly accepted as rational.

        He assumes that the parade of horribles and all of the propaganda against strong patent systems must be true, and places a truism on top of the false foundation.

        What he states – in and of itself – appears perfectly fine and rational.

        Indeed, laws ARE created all the time based on “fear” of what will happen without them.

        Indeed, I have never heard anyone suggest that wasn’t a valid basis for a law, provided that the “fear” is rational.

        BUT – here in the patent context, those truisms do NOT exist in a vacuum, and one must ALSO understand upon what foundation those truisms are being placed.

        1. Carrots and sticks are used in other areas of law beside patent law. Again, nothing at all objectionable about creating laws based on rational fear.

          It’s fun watching you write your bffs posts for him though. Cute!

          1. I am glad that you are enjoying the clarity that I added. Is there actually anything in my post that you wish to discuss?

        2. [T]he (former)… patent system… us[ed] both carrots… to entice inventors and sticks to beat infringers… This… served this country well, going hand in hand with the era that this country was without a doubt the most innovative country in the world.

          This is a niggling point, which does not really detract from the broader point that anon is trying to make here, but it is strange to insinuate that U.S. patent law somehow made the U.S. the “most innovative” country. Given that U.S. patent law applies equally to (e.g.) German companies as it applies (and applied) to U.S. companies, how could the 1952 act make the U.S. more innovative than Germany?

          For my part, I agree that the U.S. genuinely was more innovative than any other country back in the 1950s and 1960s when the 1952 act came on line. I expect, however, that the coincidence of this rush of innovation had more to do with WWII than with the 1952 act, which, as I said applied just as well to all of those (less innovative) firms outside of the U.S.

          Most of the other nations in a position to give us real competition (e.g., Japan, Germany, France, UK, etc) were still recovering from having been bombed flat during WWII. We, by contrast, still had most of our production infrastructure intact, having sustained only minor damage to our own territories during WWII. We were, in other words, free to keep moving forward with experimentation, while they were busy merely rebuilding what they had lost. Hardly surprising, then, that we would outpace them in innovation during that interval.

          U.S. patent law can achieve a growth or a slowdown in innovation worldwide. It cannot really achieve an increase in U.S. innovation relative to ex-U.S. innovation. It is a category error to think of it that way.

          1. Greg, you have indirectly hit upon a point I have been arguing for some time here and that is that the purpose for the patent system in any country is to promote invention in that country as opposed to protecting the patented inventions of inventors in other countries from use by the citizens and businesses of the country. We only provide access for citizens of other countries to our patent system in order that other countries provide access to citizens. But this right of access ultimately does not benefit America if on balance the foreign companies do all the pioneering. One can see how lesser developed countries view patent systems – they only benefit the advanced industrial societies by preventing in dis-incentivizing local manufacturing and R&D in areas dominated by foreign technology.

            Of course, a counterargument is that if a foreign company wants to expand into a lesser-developed country, not only in terms of markets, but in terms of manufacturing, they will need local patent protection. But the lesser-developed country might legitimately condition continued protection of foreign company patents based upon whether it is manufacturing or not in that lesser-developed country.

            But what made the American patent system so good for so long is that patents were hard to invalidate and strongly enforced with injunctions, combined with the inherent advantages of the first-to-invent system that gave significant advantages only to American inventive activity.

            We can see that thanks to foreign lobbying activity, the American patent system has now been “harmonized” with the rest of the world.

            1. For whatever little my opinion is worth, Ned, I strongly disagree. I want to incentivize invention everywhere—in the U.S. and elsewhere.

              My wife has serious asthma, as have our kids. I have frequent occasion to bless the memory of the British scientists who invented albuterol. I do not much like to contemplate a universe where their research would have gone unfunded or uncommercialized because the U.K. market alone was not sufficiently large or profitable to justify the capital investments necessary to bring albuterol to the market. It is a very good thing—for Americans as well as non-Americans—that our markets are large enough to justify such capital investments (with the concomitant market exclusivity provided by the global incentivizing effect of the U.S. patent system).

                1. You think so? I am never really quite sure what epithets like “anti-American” mean, and it is difficult to contradict as assertion of unclear import. I will just say that I consider myself very pro-American. I want the whole world (Americans and others) to produce innovative goods and services to improve the lives of Americans. That is what our current patent laws encourage, which is why I support them.

                2. Greg, what part of the following suggests that we established patent laws to advance the useful arts in any other place but America?

                  “We the People of the United States, in Order to form a more perfect Union, establish Justice, insure domestic Tranquility, provide for the common defence, promote the general Welfare, and secure the Blessings of Liberty to ourselves and our Posterity, do ordain and establish this Constitution for the United States of America.”

                  We need to advance American R&D and American manufacturing first and foremost. The English established monopoly patents in the first place to bring Artisans to England who had new skills. England wanted to manufacture, not import, goods. The Navigation laws that caused our own revolution were designed such that raw materials flowed to England and manufactured goods flowed back. England became the most powerful country in the world as a result, even though it had a relatively small population.

                  I think we need to all discuss the larger picture sometime so that we might assure that the above objectives are being met. Clearly what has happened to the US patent laws since 1990 has moved us powerfully away from protecting US R&D and US manufacturing in any number of ways.

                  Recently we adjusted the ITC objectives to insist that any exclusion order protect US manufacturing. We should do the same with respect to infringement. US manufacturing should be off limits except to patents based on US R&D, or a non US patent whose owner (or his privy/licensee) also manufactures. Intervening (prior user) rights should be accorded earlier US manufactures if and when the foreign patent owner begins US manufacture.

                  We should also limit the grace period to US inventions. No other country has a grace period. Why should we let a foreigner get a US patent when he has abandoned the right to obtain a patent in is native land?

                3. [W]hat part of [“to… promote the general Welfare… do ordain and establish this Constitution for the United States of America”] suggests that we established patent laws to advance the useful arts in any other place but America?

                  The general welfare of American citizens is promoted when we have medicines to cure our diseases, machines to perform our more tedious chores, consumer electronics to fill our idle moments with delight, etc. The idea that it is somehow contrary to our general welfare if non-Americans invent things for us is simply bizarre.

                4. [W]hat has happened to the US patent laws since 1990 has moved us powerfully away from protecting US R&D and US manufacturing in any number of ways.

                  The conflation of R&D with manufacturing is not helpful. These are very different things, and either can flourish or flounder quite independently from the other. I am sure that you are correct, that patent law could be pressed into the service of encouraging domestic manufacturing, but not without cost.

                  In effect, you are talking about adding a working requirement to the conditions of patent enforcement. This would reduce the economic value of the U.S. patent, making it less of an incentive to innovation (here or elsewhere).

                  Meanwhile, this would do something to incentivize domestic manufacturing, but not much. There are very few industries where manufacturing is done outside the U.S. because of FTO obstacles. Mostly, it is simply cheaper to manufacture outside the U.S. A working requirement for U.S. patents would not change that. Most manufacturing concerns goods for which any patents have long since expired.

              1. Greg,

                Please do not let your personal benefits color the fact that patent law is first and foremost a sovereign centric law.

                There is no such thing as a “One World Order” in which some universal “desire” controls patent law.

                1. Please do not let your personal benefits color the fact that patent law is first and foremost a sovereign centric law.

                  Two responses:

                  1) The reference to my “personal benefit” is gratuitous nonsense. As if my family were uniquely the only Americans whose lives or health were dependent on technology developed outside the U.S.? Be serious, do.

                  2) There is nothing the leastwise inconsistent between what I am saying and the idea of patent law as a sovereign-centric undertaking. Our sovereign has (wisely) chosen to contrive our patent laws to encourage innovation everywhere, realizing that such a policy best serves to promote the general welfare of Americans. I fully agree that it is our sovereign right to contrive our patent laws differently, to advance other goals. I am pleased, however, that (at least so far) our laws are set to advance America’s enlightened self-interest by incentivizing innovation everywhere.

                2. Your reaction to 1) belies your statements in 2).

                  Sorry Greg – you ARE emotionally compromised on this topic. That’s my third party objective view.

                3. That’s my third party objective view.

                  Whoa there. What “objective” view? Without conceding that my point of view is in any wise “emotionally compromised,” even if I were thusly compromised, that does not imply that your own view is somehow ipso facto “objective.”

                  One does not assume the good faith of people who hide behind a pseudonym. You are presumed to be as compromised by self-interest as anyone here.

                4. Greg – See that? You immediately jumped to the conclusion that I was espousing a view when all that I was doing was pointing out that YOUR view is emotionally compromised.

                  There is NO “my view” on the table as of yet on the topic to which I commented upon (YOUR view).

                  Take a deep breath.

  2. It looks like the Berkeley group wants to take “invent” out of “invention.”

    1. No. Invent is still in 102 and 103. What needs to be done is to take a bunch of made up nonsense out of the evaluation as to whether the thing being claimed is a process, machine, manufacture or composition of matter.

  3. Back to legal basics on any such legislative “101 reform.” First, what is being complained about is not actually IN 101, they are Sup. Ct. created unpatentable subject matter “exceptions” to the full literal scope of 101.
    Secondly, different things are being complained about based on different said exceptions, which would require different changes.
    I have repeatedly cited Chakrabarty on this blog for those exceptions, and the following from Bilski may be even better?
    “The Court’s precedents provide three specific exceptions to § 101’s broad patent-eligibility principles: laws of nature, physical phenomena, and abstract ideas. While these exceptions are not required by the statutory text, they are consistent with the notion that a patentable process must be “new and useful.” And, in any case, these exceptions have defined the reach of the statute as a matter of statutory stare decisis going back 150 years.” Bilski v. Kappos, 561 U.S. 593, 601–02 (2010).

    1. Thank you, Paul, for bringing up an issue that I was literally moments away from posting myself. This is an extremely important point and one that I have been hammering people about for years.

      Like pretty much everything, subject matter eligibility issues arise in contexts that are very different from each other. Down below, Dennis worries about “balkanization” with respect to industries but a far greater concern is the lumping together of the various subject matter eligibility “flavors” into one basket. This is largely a sin of the community of the patent maximalists who simply want to tar with a broad brush every Supreme Court decision that doesn’t expand their patent rights.

      Prometheus v. Mayo’s holding is never going to be “overturned” in any meaningful sense. You can’t have a patent system that allows an eligibility requirement to be overcome by scrivening. Specifically, you can’t have a system where you can protect, e.g., “new” thoughts about the meaning of some data by penciling in the word “process” or “collect the data using data collection technology”. And that’s Mayo was about. [the endless focus on “natural laws’ is a sideshow created by the maximalists in a failing effort to minimize the holding; if you actually read the case, the issue is not “natural laws” but protecting correlations and other ineligible subject matter by limiting the ineligible subject matter to a prior art context; the CAFC knows this and so do all competent practitioners].

      Alice is likewise a straightforward case but relatively poorly written. You can’t protect otherwise ineligible information processing subject matter by reciting “on a computer.” That’s the holding. It’s a good holding. It’s reasonable. Makes sense. But it makes the software patent crowd sad and so we have to listen to them whine and cry. Readers will note that they offer absolutely nothing else except for their tears. And that’s been the case for years. They feel entitled because that’s the kind of people they are.

      Bilski is pretty much incomprehensible, although it reached the right result. Bilski deals with methods in which abstract concepts (“prices”) are processed using logic. These sorts of methods (most often related to business and legal transactions) do not belong anywhere near a sane patent system.

      Myriad is a true outlier because it’s the most obtuse case of them all (even more than Bilski) and it is simulteously the most limited (expressly) and the most pernicious because it concerns compositions that were, at least arguably, structurally distinguished from prior art and natural compositions.

      Bottom line: huge mistake to lump these cases together and pretend that they represent a singular issue. The facts are very different in each case, as are legal ramifications and policy ramifications.

      1. “Specifically, you can’t have a system where you can protect, e.g., “new” thoughts about the meaning of some data by penciling in the word “process” or “collect the data using data collection technology””

        Why not?

        No one on the planet new that the speed of light was a factor in the conversion of matter to energy. That was discovered by someone. Why can’t we have a patent system that gives the guy that figured that out the power to control the application of that discovery for 20 years or so? Especially since DISCOVERIES are already patentable according to the Constitution and the Statute.

      2. but a far greater concern is the lumping together of the various subject matter eligibility “flavors” into one basket. This is largely a sin of the community of the patent maximalists

        What utter balderdash.

        The clear difference Malcolm is understanding the difference between Ends and Means.

        Further, the only “one basket”‘ approach is the PROPER approach of viewing the single law of 101 from the front perspective.

        This is hardly a “patent maximalist” thing.
        This is a way-to-properly-look-at-law thing.

    2. Excellent point, Paul. At least JL has provided some historical research on the Nielsen case (but not so much on Boulton v. Bull) to argue why Mayo and Alice are wrongly decided — the historical cases, argues JL, have been misconstrued.

      But have they? JL and I debated that point below.

      1. Ned, et al: Convincing the Sup. Ct. that they cannot read their own prior case law, or, that they should reverse their own recent decisions even if they are so recent that the same justices would have to change their minds, is not likely. Furthermore, there is not much evidence of the Sup. Ct. reversing UN-patentability decisions of the Fed. Cir. So, it does seem that only legislation could remove any of the “exceptions” to patentability.

        1. , it does seem that only legislation could remove any of the “exceptions” to patentability.

          The Constitution will stand in the way of any attempt to legislate the expansion of “patent rights” to permit the monopolization of facts and information, or thought processes.

          It already reasonably makes ownership of logic impossible but good luck convincing the glibertarians of that. They’re too busy worrying about the “freederm” to threaten the public with their junk patents, and denying the public access to the agency which “granted” that junk illegally.

          1. permit the monopolization of facts and information, or thought processes.

            Great.

            No one is chasing that strawman.

            Except you.

            1. No one is chasing that strawman. [ the monopolization of facts and information, or thought processes.]

              It’s not a “strawman”.

              That’s exactly what Prometheus tried to do and it’s exactly what Bob Sachs’ stillb0rn proposed “amendment” to 101 would permit (limiting claims to prior art contexts doesn’t avoid the problem — I know that’s too “nuanced” for you but others will understand immediately).

              1. It is a strawman as ONLY you ever trot it out to knock it down.

                Do you need me to post the definition of a strawman and hold your hand (again)?

                1. ONLY you ever trot it out

                  Ahh, now we are going to some very interesting meta-discussion indeed.

                  Dennis, would you care to comment on this?

                  Am I really the only one who ever “trots out” the incontrovertible facts of Prometheus v. Mayo and Prometheus’ theory of infringement? Am the only one “out there” who discusses the implications of claims that recite only a prior art context and a “new” (ineligible) step of thinking about the meaning of data obtained in that context?

                  Let everyone know. Please. You could actually make a real difference, Dennis. Probably more important than this Rule 36 silliness. Go for it.

        2. The EGO of the Supreme Court is indeed Supreme…

          It is a good thing then that MOST states*** include in their state oaths for attorneys the notion that allegiance is NOT first to the Court, and is instead to the Constitution.

          Otherwise, attorneys may feel that the Court is their client and seek to “vouch” for actions by the Court that should not only be NOT vouched for, but should be actively challenged.

          *** I was indeed surprised to recently learn that the Commonwealth of Massachusetts has a distinctly different oath for its attorneys.

        3. Please Pardon Potential re(P)ost:

          The EGO of the Supreme Court is indeed Supreme…

          It is a good thing then that MOST states*** include in their state oaths for attorneys the notion that allegiance is NOT first to the Court, and is instead to the Constitution.

          Otherwise, attorneys may feel that the Court is their client and seek to “vouch” for actions by the Court that should not only be NOT vouched for, but should be actively challenged.

          *** I was indeed surprised to recently learn that the Commonwealth of Massachusetts has a distinctly different oath for its attorneys.

    3. You know, Paul, Chakrabarty told us how the Supreme Court interpreted Funk Brothers. As opposed to the bacteria in Chakrabarty, the bacteria in Funk Brothers were unmodified in their structure and therefore did not provide a new composition or manufacture within 101.

      Surprisingly, or not surprisingly, this was the very same question on the table for the Court of Appeals (Exchequer Chamber) in England in the case of Nielson v. Harford. The question was whether the claimed invention was a new or improved manufacture or whether it was a principal in the abstract because the claim is so broad as to suggest that any means for heating the blast air would be covered by the claim. In the end, the court held that the claims were directed to a new manufacture because it told those skilled in the art to put some kind of heating apparatus between the bellows and the furnace that heats the air before it went into the furnace. The Supreme Court in Tillman b. Proctor viewed the claim in Nielson to be directed to a process because the specific means for carrying out the heating was not deemed important.

      The authors of the current tome have tried to change the topic by focusing on whether the heated box proposed by Nielson was new. But that was not the issue in Nielson. Clearly, no one had ever, prior to Nielson, put any kind of heating apparatus between the bellows and the furnace. There was simply not no issue in the case that that combination was not novel. The issue was that the scope of the claim was so broad as to effectively claim a principle. But in the end, the British court held that the claim was directed to a new manufacture.

      1. “principle” not “principal.” I tried to correct Dragon about 5 times, but it still got me. My bad.

      2. Ned – your post here makes no sense. You are conflating things (no doubt, because it fits how you would have liked things to have been said).

        1. No I am not given how Chakrabarty construed Funk Bros.

          The “inventive” application must define a new or improved manufacture, and that includes machines, compositions, and processes for making them.

          Moreover, all, ALL Federal Circuit cases are in accord on what an inventive application is. It must be a new or improved manufacture per Chakrabarty — something made by man that either is new or improved.

          1. There’s the old familiar canard of treating process as a sub-category….

        2. Chakrabarty:

          Judged in this light, respondent’s micro-organism plainly qualifies as patentable subject matter. His claim is not to a hitherto unknown natural phenomenon, but to a nonnaturally occurring manufacture or composition of matter—a product of human ingenuity “having a distinctive name, character [and] 310*310 use.” Hartranft v. Wiegmann, 121 U. S. 609, 615 (1887). The point is underscored dramatically by comparison of the invention here with that in Funk. There, the patentee had discovered that there existed in nature certain species of root-nodule bacteria which did not exert a mutually inhibitive effect on each other. He used that discovery to produce a mixed culture capable of inoculating the seeds of leguminous plants. Concluding that the patentee had discovered “only some of the handiwork of nature,” the Court ruled the product nonpatentable:

          “Each of the species of root-nodule bacteria contained in the package infects the same group of leguminous plants which it always infected. No species acquires a different use. The combination of species produces no new bacteria, no change in the six species of bacteria, and no enlargement of the range of their utility. Each species has the same effect it always had. The bacteria perform in their natural way. Their use in combination does not improve in any way their natural functioning. They serve the ends nature originally provided and act quite independently of any effort of the patentee.” 333 U. S., at 131.

          Here, by contrast, the patentee has produced a new bacterium with markedly different characteristics from any found in nature and one having the potential for significant utility. His discovery is not nature’s handiwork, but his own; accordingly it is patentable subject matter under § 101.

          ?

          1. There is NO “ or whether it was a principal in the abstract” in Chakrabarty.

            1. Anon, no doubt. But the point is how Chakrabarty interpreted Funk Brothers which did involve “inventive application.” The court effectively held that because there was no modification whatsoever in the structure of the Funk Brothers bacteria or functionality of the bacteria in actual application that there was no new or improved manufacture. The question of what is an inventive application is involved in both Mayo and Alice.

            1. It is difficult enough as it is to hold Ned to being on point in his Windmill Chases. Here, the “don’t have a dialogue” “count” filter stopped that in its tracks.

              There is zero chance that Ned will revisit this thread and amend/update his position given the fact that he was absolutely incorrect in his view of Chakrabarty and this ‘principal in the abstract.’

    4. Interestingly enough Paul, that very quote from Bilski shows that the Court has not listened to Congress on this matter and failed to grasp an important part of the Act of 1952 wherein Congress removed the prior ability of the Court to use the tool of common law evolution with the meaning of the word “invent.”

      The actual STATUTORY stare decisis available to the Court was NOT 150 years. Instead it was 58 years. A court – even (and especially) the Supreme Court – acting beyond its authority needs to be challenged.

      This is part and parcel of the oath of attorneys for nearly every state (as we have seen recently, this aspect is missing from the Commonwealth of Massachusetts).

  4. Kudos to the practitioners working to clean up the trail of ** that the S. Court established while leading Alice through a Myriad of Mayo.

    Kudos also to the judges in CellzDirect. They give us hope that some judges are capable of arriving at a correct decision based upon proper reasoning and upon sound well-established precedential jurisprudence.

    1. Kudos also to the judges in CellzDirect.

      That was a fine decision.

      So, too, was Sequenom.

      And so too was Mayo v. Prometheus, a case whose fundamental holding is never ever going to be overturned.

  5. One thing that I have said for many years is that claiming mechanical inventions is no different than claiming information processing inventions. For example, we use claim terms that are functional that describe a solution where we know of 100’s of solutions that have been come up with. The actually invention may be a combination of these functional claims.

    I will challenge anyone again to try to distinguish mechanical claims from information processing claims.

    1. The only difference is the underlying solution. In a mechanical system, the underlying solution may be a type of valve and in the information processing system the fundamental unit is some arrangement of electronic components which may be simulated with computer software.

      1. The “underlying” structural solution is never claimed by software applicants.

        This is a huge and fundamental difference.

        1. Yet again, Malcolm is impliedly trying to make an optional claim format into somehow being not an option….

          scripts indeed.

      2. The only difference is the underlying solution.

        That’s not the “only difference” between the physical world and the abstract world.

        But it’s a humungous difference nevertheless.

        As I noted below, it’s the type of difference that makes ALL the difference in every aspect of our legal system, including the patent system.

        1. “That’s not the ‘only difference’ between the physical world and the abstract world.”

          The abstract world? What world would that be? Do you think that information processing machines are in a different world? Goodness. Guess what? Computer are physical. Software is physical. Arrangements of electronic components are physical.

          1. Do you think that information processing machines are in a different world?

            Well, they plainly are in a different world because no other type of machine is allowed to be claimed and distinguished from the prior art solely on the basis of the “new” functionality imparted by the machine by some unclaimed “instructions” written (almost invariably) by someone other than the “inventor”.

            Please try to elevate your thinking here. You’re not swapping kisses with someone at Big Jeans place.

            Pretending that information and logic are “no different” from novel physical structures is an absurd proposition that will get you nowhere. Others may tire of your dust-kicking. I thrive on kicking that dust right back into your mealy mouth. Hence the “trends” which disturb you and cohorts so much.

            Boo hoo hoo. Get a better script.

            1. Aren’t you all about different arts having different effects way above….(post 13.1)?

              Are you also forgetting the patent doctrine of inherency?

              Or do you really believe that a machine -with ZERO change – can somehow magically come to have a different capability?

              Your Accuse Others of “Get a better script” reverberates just as much as your “boo hoo ing.”

    2. Let’s not forget that even chemical (and thus, biochemical) claims ALSO employ tactics that yield a lack of actual singular “physical structures.”

      For the obvious reasons, this little tidbit is never acknowledged by certain sAme ones here.

      😉

      1. Sometimes, yes. Those chemical claims that claim the molecule by what it does rather than what it is are just as fatally compromised as the mechanical or electrical claims that try to do the same. The written description requirement is the same for all technologies.

        Without wishing to put words in MM’s mouth, I doubt that he has ever meant to say that all chemical claims are well written and legally supportable. As an empirical matter of statistical likelihoods, however, it seems scarcely controversial to acknowledge that chem & bio claims are more likely to be sound and legally supportable than are software claims.

        1. I was clearly referencing something else Greg.

        2. I doubt that he has ever meant to say that all chemical claims are well written and legally supportable.

          Right. On the contrary, I’ve been discussing an important and “legally” (i.e., “logically”) unsupportable exception to the typical chemical claim format for years, i.e., the so-called “antibody exception” … which was recognized by everybody as … an exception to the law that is (supposedly) applied to everything else.

          Once again in case anyone missed: —>I<—- have been pointing that exception — and the problems with it — to people here for years. Typically I brought it up in this very context (the claiming of functionality, and the ineligibility of "function" as protectable subject matter).

      2. Except the exact opposite is true. I’ve discussed those exceptions for years — in this context — and we just discussed them again last week when the CaFC affirmed my views in the subject.

        Please Dennis this is where you need to step in and put anon to sleep like you’d do for any other pitiful creature that has no hope for rehabilitation.

          1. “anon”: “You always [insert f@ lsehood here]!

            Me: No, I don’t. In fact, [points out example proving the opposite is true]. Now stop behaving like a l y in g s@ ck of cr @p.

            “anon”: “Accuse others of what you do!”

            My goodness, can you not see what a incredibly ridiculous schl u b you are? Of course you can.

        1. Like with Greg, you too Malcolm got the reference wrong.

          The reference is to YOUR notion of “singular objective structure.”

          Chem (and biochem) claims that use “comprising” and ranges of items within the “conprising” have NO “single objective physical structure.”

          But hey – jump to a conclusion and start up your rants like you usually do.

          1. I can easily recall a dozen posts where MM has called for “objective physical structure” in claims. I cannot recall a single post where he has called for a “single objective physical structure.” If he really has, then he is wrong to insist on the “single” part. He is correct about the rest, however.

            1. What is “objective physical structure” if that structure is not a single objective physical structure?

              He is NOT correct when he attempts to make an optional claim format to be something that is not optional.

              1. And to think how often you charge me with being willfully obtuse! Ah well, chacun à son goût, as they say.

                1. There is nothing willfully obtuse in my statements on this subject.

                  If you have more than one structure, then you either have more than one invention (in which case Malcolm’s pet phrase does not apply or you do NOT have AN objective physical structure – in which case Malcolm’s pet phrase does not apply.

                  What he wants is just not there.

                2. There is nothing willfully obtuse in my statements on this subject.

                  I expect that if you repeat that assertion often and vehemently enough, there will probably be more than one naïve reader who will not find the claim facially absurd.

  6. Here’s how quickly and easily these “serious” papers go off the rails:

    The following year, the Court ruled that discoveries of the location and sequence of DNA compositions that are useful in diagnosing diseases are ineligible for patent protection.

    Look, Leftsin: every naturally occurring sequence can be given some kind of “meaning” if you want it to have one.

    The same is true of the paint color on your house. And the clothes you wear. And the pimples on your face. And the shaving cuts. And the length and smell of your hair.

    And yes all that info and more will be collected and used and in nearly every instance you will not benefit from the collection or use. You may also find yourself infringing when you change that information, or when you infer some meaning for yourself. Why on earth would you (or anyone) want to hand out patents on that kind of thing to rich manipulators who care about one thing only? Why? Is there nothing more productive we can focus our patent system on? Maybe some societal infrastructure improvements that benefit everyone? Or maybe that specifically benefit people who aren’t rich? Gosh, such revolutionary thoughts.

  7. There is another problem with an acceptable legislative change to 101 and the Sup. Ct. exceptions to patentable subject matter is demonstrated by the only draft proposal I have seen so far. Its wording would have inadvertently [undoubtedly unintended] rendered patentable some things that no one would rationally consider patentable subject matter. Any such legislation should take a long time for extensive public consideration. The AIA took more than six years to enact and by no means eliminated all ambiguities.

    1. Its wording would have inadvertently [undoubtedly unintended] rendered patentable some things that no one would rationally consider patentable subject matter.

      That bit in brackets is snark, right?

      Of course the language was intended. You’re negotiating with patent attorneys who are waaaaaaaaaaay out there and who believe, fundamentally, that if they think some idea is “neat” or “important” than it simply must be eligible for patenting. Talk to them sometimes. They literally take it personally if something they are impressed by can’t be protected by their beloved precious patents. It’s very odd but entitlement and wealth do that to some people.

    2. I agree Paul. There are some excellent comments about this issue (on behalf of all sides) on this thread: link to patentlyo.com

      Both the AIPLA and IPO proposals leave the door open to patenting things like golf swings, chess openings, etc. The AIPLA and IPO had tons of time to come up with something workable, and instead they came up with their superficial amendments which have virtually no chance of passing.

      1. Hm, I cannot agree that the IPO and AIPLA proposals were so unworkable or superficial. I can happily agree, however, that they have no chance of passing (at least not any time soon).

        1. I cannot agree that the IPO and AIPLA proposals were so unworkable or superficial.

          But you also couldn’t articulate a coherent argument as to why they are not so plainly superficial and unworkable. Nobody could.

          The “best” anyone could come up with is that some other magical judge made “doctrine” that mysteriously survives the proposed amendment was going to do solve all the transparent problems. And everyone would love the solution! Just trust them. You can trust them. Sure, we all can. They’re “experts”.

          1. But you also couldn’t articulate a coherent argument as to why they are not so plainly superficial and unworkable.

            This is, no doubt, one of my many failures. It ranks right alongside my chronic and embarrassing inability to articulate a convincing argument disproving the thesis that there is an invisible flying elephant living in the corner of your office.

            1. Don’t be glib, Greg. Those proposals were deeply flawed and it was explained why. pleather just explained why again and he didn’t even give the worst examples. The reason you don’t have a rebuttal has nothing to do with invisible elephants. You either are in favor of a 101 gate that is wider than god or you aren’t. You can’t have it both ways .

              1. Don’t be glib,

                Says the person that is most glib on this site…

                glib: adjective
                (of words or the person speaking them) fluent and voluble but insincere and shallow.

              2. Don’t be glib, Greg.

                Well, cheek meets cheek. I see I must buckle my breastplate.

                If you make a snide sally, you should expect a snide rejoinder.

                Go back and look at that thread that Patent Leather cited. You will see that I offered several points in response to his (perfectly reasonable) critique of the IPO and AIPLA proposals. If you think those responses “incoherent,” we will simply have to agree to disagree on that point. I do not wish to be rude, and therefore have nothing more to say on that point.

                1. Again, patent leathers examples are a subset of the parade of horribles Greg. I’ll repost the text of the legislation and give you another chance to respond.

      2. To state the obvious question:

        “Why not patent golf swings and chess openings (at least when those openings are new, in the sense they are preceded by some other phenomenon not previously described and claimed in a way that is evident to the Examiner)? Do you have something against innovative golf swings and chess moves? Why do you want to deny a plainly eligible reward to the innovators who come up with these new processes? Are you anti-patent? Are you some kind of socialist? If some harm comes from patenting these things, then Congress should rewrite the law to make it more clear otherwise every useful process is eligible, per the statute. Maybe you just don’t understand the Constitution?”

        That’s how the “civilized” conversation goes. Go ahead and answer the questions. This is very serious stuff! Golf players make lots of money, after all.

      3. I agree patent leather. I was shocked at how bad the AIPLA and IPO proposals were.

        You have to ask why?

  8. Just a reality check for everyone. This is fresh news:

    [LeBron] James will headline a broadcast and digital ad campaign aimed at building trust in autonomous vehicles. The campaign, which features a trepidatious James getting in the backseat of a driverless sedan, will lead up to the NBA season opener between the Cleveland Cavaliers and the Boston Celtics on October 17th. It’s the first time self-driving cars have been marketed to the general public, and it’s airing before this technology is even commercially available.

    Got that? One of the highest paid athletes in sports is being paid (presumably a TON of money) to con the public into buying cars that don’t even exist (for good reasons — they’re never going to work until we outlaw human-controlled cars and rebuild the entire transportation infrastructure).

    And the supposed problem with 101 is that there isn’t enough money out there. Try to believe it, folks. You are being played by some of the richest and greediest people in the world. And sure, most of you are educated white guys in white collar jobs so maybe a couple of you will get a little big of money dropped in your lap. But the vast majority of us are just going to get s c r e w ed paying more for junky “tech” that doesn’t improve anything except the lifestyles of the already rich.

    Kinda bizarre that this even has to be explained to supposedly educated people but there you are.

  9. Someone downthread is worried about “balkanization”? That’s funny stuff right there.

    Funnier still: it’s Dennis.

    Look, brother, you’ve had years to come up with or support some kind of sensible tests for the examination of computer-implemented logic and you’ve failed miserably. Now, there’s probably good reasons for that failure. It’s probably not your fault that you find it difficult to shoehorn logic into the patent system (oh but wait — this is logic carried out by an old device that was designed to carry out logic which changes everything because …. why? You tell everyone, Dennis. There must be a reason. Right?).

    But now you’re going to complain about “balkanization” when a huge field that is properly within the system tries to extricate itself from the disaster that was created when logic was clumsily and disastrously shoe-horned into the system? Please.

    All that said, Prometheus v. Mayo is never ever going to be overturned for the same reasons that the outcome of the case was never in doubt. And I can tell you most assuredly that any attempt to hand over patent rights (?!?!) to diagnostic information to big pharma (or little pharma) is going to fail for those same simple reasons.

    As for this “consensus” : “[T]he Supreme Court’s ostensible rationale for its § 101 jurisprudence lacks a sound foundation

    The rationale is that knowledge itself is not eligible for patenting, nor is the logical application of that knowledge to information. Those are the fundamental building blocks of science and progress, along with thought processes and access to natural phenomena. What on earth is “unsound” about that foundation??

    Here’s everyone’s chance to have a civilized discussion about 101. Let’s start with Prometheus. What were the basic facts in the case? What was recited in the claims? What is in the prior art? What was Prometheus’ infringement theory? Who remembers? I do.

    Note also: I’m in the field. I’ve got work coming out of my ears. There is no shortage of money and very little uncertainty for quality innovation describing objective physical reality in structural terms or in terms that necessarily require a novel transformation of matter. Some rich guys want more money? Gee, what a surprise. Guess we all need to get on our knees and give them some satisfaction because … rich! Yum yum.

    1. MM – Are you in favor of a legislative statement overruling Mayo and Sequenom?

      1. Are you in favor of a legislative statement overruling Mayo and Sequenom?

        Of course not. I’m in favor a legislative statement affirming those decisions because they were the right decisions not only for everyone closely associated with the system and (more importantly) for the general public and to support basic principles of free expression and scientific progress.

        And remember: I was a chem/bio researcher for years (a successful one) and I’ve been an attorney for years. I know what I’m talking about.

        Pretty much any scientist who isn’t poisoned by the “patent everything” kool-aid will be on my side once they understand the issues and the players. This is basic, easy-to-understand stuff.

        1. Does anyone else think that the people who really know what they are talking about never say “I know what I’m talking about”? It’s like Tr ump saying “This tax plan does not benefit me, Trust me.”

          1. I don’t know, PatentBob, when MM talks in detail about the bio field (and he has done so, many times), it certainly seems to me that he knows what he’s talking about.

            1. Ask him about his Nobel Prize and Fields Medal sometime.

            2. DanH,

              When Malcolm talks to (and only to) the science of the bio field, he may know what he is talking about.

              Once past that though – and into the legal aspects (and quite sadly, NON-legal aspects of quite often NON-patent law topics) – your view of him just does not reach. Quite in fact, your comment reaches to what I would estimate as around 1% tops of Malcolm’s comments.

              Of course, under the DISQUS (with normal security settings) this observation of mine was quite easily verified.

              But your comment comes as no surprise, as if I recall correctly, you are one that wanted the wrong people to “just sh ut up.”

              Like MaxDrei and Ned, there are certain regulars (and semi-regulars) that only too eagerly look past Malcolm’s blight (purportedly, this is because of a certain alignment with the narrative that Malcolm espouses). You, DanH, are certainly in that camp, so your counter to PatentBob needs to come with a rather larger grain of salt.

              And another slight “carryover from the recent “let’s make a better ecosystem” theme, here on this thread Malcolm has 15 posts in less than half a day.

              NONE of those posts say anything new.
              MANY of those posts include the same old tired script and his usual doses of ad hominem.

              And yet, others – that actually engage in back and forth discussion – have different and much lower “count” restrictions.

              One set of rules – published – AND enforced equally and consistently would be a good start, a necessary start to e better ecosystem (as opposed to an echosystem – and we both know Malcolm’s number one meme of Accuse Others kicks in with echosystems and certain other blogs).

            3. [W]hen MM talks in detail about the bio field…, it certainly seems to me that he knows what he’s talking about.

              It is not for me to gainsay what MM purports to know about “[p]retty much any scientist who isn’t poisoned by the ‘patent everything’ kool-aid… .” If he says that he has talked to such people, we must take him at his word. I have no idea whether his interlocutors represent a representative or an unrepresentative sample of the larger scientific community. I will simply say that my own experience (and once again, who can say how representative that is?) is entirely the opposite of MM’s. Like MM, I was also a researcher until (relatively recently), and I am still in contact with many of my former colleagues who still work at the bench.

              I will offer one further comment on the disparity between my own perception of scientific opinion and MM’s perception of the same: most scientists really have no idea what is going on in patent law until you tell them about it. I would not be surprised, then, if MM’s interlocutors are responding favorably to recent trends in patent law based on that which MM tells them about those recent trends, just as my interlocutors are reacting to recent trends based on what I tell them about those same trends. Given that I disapprove of recent trends in §101 law, while MM heartily approves, perhaps it is not surprising that the folks who learn of these trends from MM have a very different response than do those who learn of them from me. I dare say that each set of interlocutors is coming to the issue having been educated on the most relevant points with a very different set of “spin”s.

              1. Yes.

                Which quite naturally draws attention to the person doing the “spinning” and their feelings on the topic.

                Malcolm’s feelings are rather well known (as is the lack of connection of those feelings with the guiding principles of patent law).

                He is more than welcome to have whatever feelings that he wants to. He is NOT more than welcome to have his spin misrepresent the guiding principles of patent law.

              2. most scientists really have no idea what is going on in patent law until you tell them about it.

                And what do you tell them about Prometheus v. Mayo, Greg?

                Tell everyone the facts of the case, what was at issue, and Prometheus’ theory of infringement.

                Go ahead. And tell your researcher friends and ask them what they think.

              3. Greg: I dare say that each set of interlocutors is coming to the issue having been educated

                The odds that you are educating your researcher friends about the issue raised by “determine and infer” claims is close to zero since you’ve never demonstrated any ability to educate anyone here about the subject.

                Look at the post that started this thread. Is there any discussion of the issue in Mayo? It’s not a difficult issue to describe or explain. But there’s no discussion of it. I’m happy to discuss it, of course, with anyone.

                But you plainly aren’t. Why is that? [rhetorical question]

              4. I disapprove of recent trends in §101 law

                Which “trends” are you referring to, Greg?

                The “trend” that protects people’s thoughts from turning into infringing acts depending on the prior art context?

                You “heartily” disapprove of that, Greg?

                Speak up and be specific and clear. You know how to do that, at least, unlike some other people here. Stop hiding the ball and playing the maximalist game.

                1. Which “trends” are you referring to, Greg?

                  I see two recent trends in §101 law that have a pernicious effect on patent law. Worse yet, they interact in such a way that their deleterious effects are greater in combination than the sum of their individual deleterious effects.

                  (1) The recent tendency to expand that judicial exceptions is bad. It is perfectly possible to read the Court’s historical exceptions as nothing more than an outgrowth of the §101 requirements that an invention be “new” and “useful” to be patentable. Bilski, however, cut off this understanding of the exceptions by asserting (130 S. Ct. 3218, 3225) that “these exceptions are not required by the statutory text.” In other words, the Court arrogated to itself the sole authority for defining the extent of these exceptions, and has been gradually ratcheting them wider each time that they touch the question. As you acknowledge elsewhere on this same thread (#11.1), the Court did not have to hold isolated gDNA unpatentable in Myriad. Nothing in the statute compels that outcome, nor anything in the Court’s prior precedent. Rather, the only reason that the case had to come down this way is that the Court wanted the extent of the exception to be wider. This is clear from the fact that the Court GVRed the original CAFC Myriad decision after Mayo, despite the fact that the facts of Mayo were so wholly different from the facts of Myriad as to make the relevance of the one to the other infinitesimally minimal. It is simply that the Court wanted an outcome, based on no authority. There is not even really a policy reason to want the outcome that the Court demanded in Myriad. The Court simply wanted to put the world on notice that they want the §101 exceptions to be broader in application.

                  (2) The other recent deleterious trend is to insist that cases be decided on §101 grounds. The law used to be exactly the opposite. Courts would only ground invalidity on §101 if there were no other basis for invalidity. Mayo rather aggressively insisted that the law should go the other way, and address §101 in preference to other grounds of invalidity.

                  The functional interaction between these two trends is not only to turn §101 into a one-way ratchet that only ever expands the class of “non-statutory” (sneer quotes very much intended) subject matter, but also serves to ensure that the subject is litigated more frequently, so that there can be an ever growing body of precedent to trace the expanding contours of the ever-enlarging exceptions.

                  The Supreme Court has, in effect, dumped a bucket of acid on the floor of the patent system. The puddle is gradually spreading out, dissolving everything it touches as it spreads. As yet it has not totally destroyed the patent system, but that is its natural tendency if it is left alone. That is why Congress needs to step in and change the statute. To mop up the acid and contain its spread (perhaps even to restore some of the floor that has already been destroyed).

    2. “The rationale is that knowledge itself is not eligible for patenting, nor is the logical application of that knowledge to information. Those are the fundamental building blocks of science and progress, along with thought processes and access to natural phenomena. What on earth is “unsound” about that foundation??”

      “DISCOVERIES”

      1. nor is the logical application of that knowledge to ___

        is otherwise known as the fruits of engineering.

        The statement then (by Malcolm) – taken at its face value – is cry against ALL patenting.

        with thought processes

        NO ONE – not even Congress – is talking about any such things that are totally in the mind. Move the goalposts back please.

  10. How big a percentage of all pharma-biotech R&D is the kind of medical Diagnostics being affected?

    1. PM How big a percentage of all pharma-biotech R&D is the kind of medical Diagnostics being affected?

      The answer doesn’t really matter because if the gates are opened to “determine and infer” junk then the gates will be rushed just as hard as “do it on the Internet” junk was rushed. That’s because it’s relatively trivial to come up with a “correlation” that flows from an observable fact obtained using prior art technology. The trick is enforcement but, as everyone knows, actually winning a trial is not where the money is made. The money is made from accumulation and threats, and the most accumulation and the most threats are made by people who have money and lawyers backing them.

      And examining diagnostic algorithms is another area where the PTO is just incredibly behind the curve, both in terms of thinking about the legal issues generally and in terms of the practical issues of manpower / algorithm database creation / searching. That’s just another reason why the wealthy players are attracted to the game. It’s a free for all. Chaos. And we all know who benefits from that and we all know who loses.

      Dennis knows. Don’t you, Dennis? Step up, man. I know you live in Missouri but you can’t be that frightened for your life. Just speak the truth for a change.

  11. Understatement of the Century: “[T]he Supreme Court’s ostensible rationale for its § 101 jurisprudence lacks a sound foundation, and that its formulation of the inventive application standard is grounded on a profound misapprehension of key historical precedents.”

    [L]egislative reform will be necessary to… address the problems that have emerged for bioscience researchers.

    Yes, that is correct. Unfortunately, such legislative reform will not happen any time in the next three years, and maybe more than that. In the meantime, we will simply have to take the losses that come with poor policy choices. Thanks, Supreme Court!

    1. [L]egislative reform will be necessary to… address the problems that have emerged for bioscience researchers.

      What “problems” are these?

      Every bioscience researcher I’ve discussed the issues with recognizes that expanding subject matter eligibility to include inferences about the “meaning” of facts obtained using prior art technology is A HUGE PROBLEM FOR EVERYBODY.

      Of course, I’m not telling them some b0 gu s story about how billions of children are going to d i e unless we grant millions more patents. Why am I not telling that story? Because it’s not true and telling that story just to please some wealthy “investors” (who are otherwise despicable human beings in many cases) is downright e v i l. But I understand that in certain corners of the universe that sort of game-playing is just the way things are. Super civilized! Your mileage may vary and most of us are just passing through.

  12. Mayo was “new?” Really? The discovery of a new property in matter has never been sufficient to re-patent the prior art.

    1. Over in another thread, one of the posters linked in unpublished draft paper by Prof. Mossoff wherein he argued that Justice Taney, based upon political bias, mischaracterized the invention claimed in Morse’s claim eight, contending that it actually claimed an inventive application of a principal. However, what Prof. Mossoff actually proved was that Morse invented nothing other than perhaps his code and the repeater, described in the article as a relay, which everybody seemed to acknowledge was a major engineering invention. It appears that in the early 1830s Morse only had an idea of communicating information using electricity. Because he was only a professor of Art, he had no idea on how to build anything regarding electricity. He got that from others. Thus at every step, others invented the various parts and pieces that together made the telegraph possible except for one thing: the relay/repeater. That was the invention of Morse himself.

      An idea with no practical means for carrying into reality is not an invention. There are cases that say the inventor is not the person who has an idea, but the person who invents the means for carrying into practical reality. Thus I might have the idea of the transporter but I am not the inventor of the transporter. The inventor the transporter is person who makes a transporter.

      Ultimately, what Prof. Mossoff is arguing is the Supreme Court was wrong in cases like Le Roy v. Tatham and Morse in denying the ability to claim principles in the abstract, clearly siding with the dissents in both cases. What Prof. Mossoff does not discuss is famous case of Boulton & Watt v. Bull, where the King’s Bench, sitting en banc, split 2-2 on the issue of Watt’s invention, where Watt provided no examples of his idea of communicating hot steam into a secondary vessel for the purpose of cooling it. The argument was that once anybody was made aware of the principal, any one of ordinary skill could make it. Thus the specification was not really needed to communicate the invention, and the patent should cover all implementations.

      In the later case, the Nielsen case, Neilson was limited to his heated box for implementing his idea of the hot air blast furnace. As the Supreme Court noted in Tatham, the question of infringement of the Nielsen patent was whether the infringer use the box or its equivalents. Neilson was not allowed a patent for the principal.

      What Morse wanted to patent as his invention was any way of communicating information using electricity, but he confined himself to the use of electro-motive power, which Mossoff contends was sufficient. But, Morse not invent electro-motive power. That was known, and others actually provided Morse the means for carrying out his idea. Moreover the claim contained none of his “inventive” apparatus or means but only claimed the result. Such a claim covers the principal in the abstract – and that is exactly what Prof. Mossoff is arguing that the patent law allow.

      Methinks that the good professors here are arguing for a change in law in the direction of allowing the patenting of abstract principles.

      1. Methinks that the good professors here are arguing for a change in law in the direction of allowing the patenting of abstract principles.

        That’s exactly what they’re doing and it’s perfectly transparent. What’s impressive (i.e.,”impressively thoughtless”) is that in spite of all their hand-wringing about a “lack of foundation” rest assured that they’ll find some very special “foundation” that protects their own activities (e.g., making legal inferences based on facts obtained using old technology) from becoming mired in a swamp of junk patents.

        1. MM, I am coming around to you manner of thinking about these folks wanting to expand 101.

          1. The “6-is-a-genius-because-he-agrees-with-me” malady is not thwarted by the political swagger that Ned “enjoys” from Malcolm….

      2. Ned, you can find an extensive discussion of the 19th century precedent in my article available at link to papers.ssrn.com

        Neilson was not allowed a patent for the principle of the hot blast in the abstract, but the hot-blast cases became the standard authority for the proposition that conventional applications of newly discovered principles were patent-eligible – provided, of course, that the disclosure was enabling.

        1. Looking at these old cases for insights into contemporary issues that are relatively easy to analyze using common sense is truly a f 0 0 l’s game.

        2. JL, thanks, I’ll read your paper. But Nielson’s heated box was at least new. The problem with Mayo is that the “conventional” steps were not even new.

        3. JL,

          I actually independently ran across your article recently when I was trying to trace through some of the same history and was so happy to find it. You did an amazing job reviewing the history and found some things I definitely never would have found. It was clearly very thoroughly researched and was very well written.

          Ever since Mayo and Alice, I have been puzzled by the fact that although eligibility exceptions are professed to be justified by pre-emption concerns, lower courts and the PTO frequently seem to disregard any pre-emption analysis. Looking at Morse, I was trying to figure out whether the fact that the pre-emption issues in older cases such as Morse are grounded in written description and enablement concerns could be leveraged into any sort of consistent theory or argument.

          Your article does an amazing job tracing through the history and subsequent developments. You make an incredibly persuasive case that Funk Brothers should have been decided on the basis of the concurrence, and that Flook reached an erroneous result based on a misunderstanding of Neilson.

          JCD

          1. JL, I am reading through the report and once again have to observe that the conventionality of the heated box had nothing to do with the decision by the Ex. Chamber. The court decided that the inventor was not claiming a principle because the specification disclosed a heated box (whose form was declared to be immaterial — and this was in fact, not true) between the bellows and furnace that had never been there before, and because the application of heated air to the furnace improved its efficiency greatly.

            The major point of the case was the whether the description of the heated box combined with the statement that the form was immaterial was enabling, as it was demonstrated by the defendant that a heated box would not work and that only by independent discovery could workers figure out how to make it work ( such as by moving the air along numbers of pipe and heating them). Baron Parke, against ajury verdict to the contrary, had held the patent invalid for false suggestion. On appeal, that verdict was overturned.

            Neilson requires that an inventive application be new (not before used or invented by others) and produce an improved manufacture. I am sure US courts view this requirement the same way. Thus, simply using the prior art without any modifications does not produce a new or improved manufacture (process) — which was the case in Mayo.

        4. JL, Good job — but let me point out that the interposition of a heating apparatus regardless of form between the bellows and the furnace was new, even if it was known that heat applied to boxes would heat its contents (oven). The application was NOT conventional at all.

          At the time, the English did not have a conception of “invention” that eventually developed in the US. All that was required was that the manufacture be new or improved, and not before used or invented by others. As in Boulton & Watt, where the courts eventually found that Watt was claiming an improved steam engine, the courts in Nielson found that the furnace was (greatly) improved by the use of hot, as opposed to cold, air.

          Thus, when the modern US courts read Nielson and impose an “invention” requirement, that does not (or at least, should not) mean that the implementation be a non obvious improvement over the prior art in addition to being new. It just has to be new, considered as a whole and not in isolation; and describe a new or improved manufacture (which of course, includes machines). In Nielson, there was little doubt that the furnace was greatly improved. That is why the courts gave broad scope to the form of the “box,” to include a bundle of tubes as in some accused devices.

          But, when, absent the newly discovered principle, the invention only claims completely known and conventional machinery or processes as in Mayo or Funk Bros., one is really attempting to patent the prior art by the discovery of some inherent property not previously known, or by adding completely conventional steps that do nothing but what they always did and where no new result different in kind is obtained.

          1. No disagreement with that, Ned – although it seems the rubber hits the road when we try to determine when a result is different in kind.

      3. Ned, did Morse’s invention include the Columbian Telegraph? It applied the electric field to the moving armature rather than the stationary pedestal. Claims 1-7 did not literally read on it, but Claim 8 did.

        1. IR, I believe the courts held claim 5, directed to the system of marks and spaces, infringed even thought the code itself was different.

  13. Although I recognize that there is substantial consensus in the biotech area, the approach here would seemingly move us substantially further down the road of Balkanizing the patent laws – A result that I see as problematic.

    1. Begins to mind the adage: Divide and conquer.

      1. Exactly. When prohibition was gaining steam, the beer and liquor industries each tried to throw the other under the bus, in the hopes that the prohibitionists would focus on the one and leave the other alone. If they had maintained a united front, they might well have been able to stop the legislative maneuverings of the organized prohibition groups (after all, at all times during the XIX and XX centuries, a majority of voters objected to prohibition). Instead, because beer and liquor spent as much time fighting each other as they spent fighting prohibition, the prohibitionists were able to carry the day and outlaw both beer and liquor.

        It will end the same way if bio and software each try to throw the other under the bus.

        1. It will end the same way if bio and software each try to throw the other under the bus.

          Depends on what “bio” is after.

          Beer and liquor are the same for prohibition purposes. All that differs is the concentration of alcohol which can be accounted for (very easily — you really should get out more if you aren’t aware of this) by higher consumption.

          In contrast, the difference between logic, on one hand, and objective physical reality is something that pretty much everyone recognizes is a fundamental difference. They are the kinds of fundamental differences that we see embodied throughout our legal system. You have to dive extremely deep into philosophy and physics before those differences begin to blur and for what purpose? Make rich people richer? Geez, what a country.

          1. the difference between logic, on one hand, and objective physical reality is something that pretty much everyone recognizes is a fundamental difference.

            You keep on dissembling on that “logic” path there….

            Tell me about copyright on that selfsame “logic” Malcolm. Do you believe that copyright is available for software?

    2. Dennis, thanks for posting this. I’m not sure when I’ll get to reading the whole paper, but seeing the list of participants I’m sure it will be informative reading.

      Regarding your comment, am I correct in understanding that by “Balkanizing” you mean moving away from a one-size-fits all approach in patent law, instead differentiating between different areas of technology (for purposes of eligibility, duration of protection, and other ways in which the authors propose to differentiate)?

      Assuming that’s the case, do you find such an idea problematic in principle, problematic in practice (implementation), problematic from a get-it-through-Congress perspective, or problematic from some other angle? (I have my own thoughts on the subject, but since you raised the issue I’m curious what you have to say.)

      1. Thanks Dan – There is a lot to say here, but I believe that the universality of U.S. patent laws have helped us to avoid some amount of regulatory and legislative capture that persists in other areas of law – one example being copyright. Once we have the market divided, then it is much easier for industry players to lobby congress for technical amendments that benefit industry insiders at the expense of entrants and the public at large. As these proposals become more and more technical (as they would if the law is divisible by technology), they would also move outside of the capability of Congress to directly regulate. That, in turn, would push Congress to grant more administrative control to the USPTO. However, that agency is not well equipped to make major policy decisions, and is very much subject to potential capture by its clients.

        A second problem but interrelated is the recognition that we’re writing laws to deal with future technologies – and that makes the line-drawing quite difficult. This issue would again push congress toward giving USPTO authority in deciding which levers to pull — leaving us further open to the whims and friends of whomever is the current president.

        1. As caveats, I’ll note here that (1) those outside of IP see the area as already divided up with copyright, designs, patents, tm, rights of publicity, etc.; and (2) there currently exist many de jure and de facto divisions even within utility patent law. Thus, we’re not starting with “unity of law,” and it is unclear to me at what point we would get to the problematic tipping point that I raise above.

          1. Splitting up patent law by technology areas would be a lobbyist’s dream and a legal and administrative nightmare. Consider my invention of a new combination electrical/mechanical sensor that uses a computer implementing a new algorithm to interpret the data from the sensor in order to diagnose skin cancer. Is that technology electrical, mechanical, computer, biotech? Who makes that decision?

            How many different types of technology will be split out? 5? 10? 50? 500? Once you start splitting them up, there will be no stopping it because every area of technology will have its own lobbyists trying to strengthen/weaken patent protection.

            Imagine how the case law is going to have to evolve for all of these different types of technology. 103 will certain be technology specific as will 101.

            Imagine the gaming of the administrative system to get your claims pigeon holed into the right hole.

            If you think the tax code is complicated, wait until lobbyists get a chance to legislate patent laws on a technology-by-technology basis.

            It is a disaster in the making if patent law was divided by technology — a reason why certain (anti) patent people would love to enact something like this.

            1. The nature of innovation itself makes even the thought of attempting to pigeon hole inventions problematic.

              1. …which is why 101 is meant to be a rather wide open gate, and certainly NOT the thing that the Supreme Court has turned it into.

    3. Yes. Standards that relate to creativity should be universal. It’s about what people do with their minds, not the palette they happen to work in.

      And any time you draw a new line in the law, it raises new issues. What is “biotech”, for instance. Does it include analysis tools for processing the massive data from micro-arrays?

      1. Agreed. The standard should be universal. But, this has more to do with lobbying by big tech. Google doesn’t have an interest in pharma or biotech. They do in software. Hence, the proposed double standard. Google does fund similar studies.

        1. Google doesn’t have an interest in pharma or biotech. They do in software.

          Google is interested in acquiring and owning information and using that information to make money by any means necessary.

          If Google sees an easy way for it to get in on the ground floor and own or control vast amounts of diagnostic medical information (by creating it or collecting it) then rest assured they will go for it.

        2. You might be surprised (I know I was) about how much honest-to-goodness biology research Google is doing.

          1. I wouldn’t be suprised by anything Google is doing. It’s an incredibly huge and incredibly wealthy company.

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