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
Over 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
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.
Since different “tech areas” inherently will present different factual issues, one would expect 101 to impact them differently.
Since some cars are Yugos and some are Ferraris one would expect speed limits to effect their drivers differently. What of it?
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.
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]
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.
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?
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.
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.
…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.
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!
I am glad that you are enjoying the clarity that I added. Is there actually anything in my post that you wish to discuss?
[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.
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.
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).
Greg, you really are, at the bottom, strongly anti-American.
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.
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?
[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.
[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.
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.
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.
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.
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.
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.
It looks like the Berkeley group wants to take “invent” out of “invention.”
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.
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).
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.
“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.
“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.
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.
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.
, 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.
“permit the monopolization of facts and information, or thought processes.”
Great.
No one is chasing that strawman.
Except you.
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).
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)?
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.
Move the goalposts back.
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.
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.
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.
“principle” not “principal.” I tried to correct Dragon about 5 times, but it still got me. My bad.
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).
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.
There’s the old familiar canard of treating process as a sub-category….
Chakrabarty:
?
There is NO “ or whether it was a principal in the abstract” in Chakrabarty.
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.
“No doubt. But…”
But nothing.
Your statement is in error.
comment stuck in moderation….
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.’
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).
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.
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.
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.
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.
The “underlying” structural solution is never claimed by software applicants.
This is a huge and fundamental difference.
Yet again, Malcolm is impliedly trying to make an optional claim format into somehow being not an option….
scripts indeed.
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.
“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.
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.
That Accuse Others meme in action…
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.”
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.
😉
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.
I was clearly referencing something else Greg.
I was clearly
And close curtain.