Printed Matter, Mental Steps, and Functional Relationships: Oh My!

Guest post by Professor Kevin Emerson Collins, Washington University School of Law.

Praxair Distribution, Inc. v. Mallinckrodt Hospital Products IP LTD., 2018 U.S. App. LEXIS 12707 (Fed. Cir. 2018)

In a divided opinion, the Federal Circuit held that all of the claims challenged in an IPR were obvious, upholding the PTAB’s obviousness determination with respect to most of the claims but reversing its nonobviousness determination with respect to a few. Praxair Distribution raises of a number of distinct, yet interrelated, issues concerning the cryptic, yet essential, printed matter doctrine: the opinion addresses the doctrine’s extension to mental steps, its implications for the relationship between sections 101 and 102/103, and the breadth of its functional-relation exception.

U.S. Patent 8,846,112 covers methods of distributing nitric oxide gas cylinders for pharmaceutical applications. Inhaling nitric oxide dilates blood vessels in the lungs and improves blood oxygenation, and it is approved for treating neonates with hypoxic respiratory failure. The prior art taught that inhaled nitric oxide may lead to pulmonary edema, a serious adverse event, in neonates with left ventricular dysfunction. The claims of the ‘112 patent address methods that build on this prior art. Roughly, the claims can be sorted into three groups: the informing claims, the informing-and-evaluating claims, and the informing-and-discontinuing-treatment claims. This commentary addresses each of these three groups of claims in turn.

The Informing Claims: Easy Cases?

In gross, the informing claims recite supplying nitric oxide to a medical provider and providing the medical provider with information relevant to the clinical use of the nitric oxide on neonatal patients. Claim 1, for instance, includes the steps of:

  • “supplying the cylinder containing compressed nitric oxide gas to a medical provider responsible for treating neonates” and
  • “providing to the medical provider (i) information” about the recommended dose for neonates with hypoxic respiratory failure “and (ii) information” about the risk of that dose for neonates with left ventricular dysfunction, wherein “the information of (ii) [is] sufficient to cause a medical provider … to elect to avoid treating one or more” neonates with left ventricular dysfunction in order “to avoid putting [them] at risk of pulmonary edema.”

The PTAB held, and the Federal Circuit affirmed in a majority opinion authored by Judge Lourie and joined by Chief Judge Prost, that the informing claims were unpatentable as obvious under the printed matter doctrine. Under recent Federal Circuit precedent, the informing claims present an easy case of unpatentability. The printed matter doctrine states that “[c]laim limitations directed to printed matter are not entitled to patentable weight unless the printed matter is functionally related to the substrate on which the printed matter is applied.” Opinion at *9. If a limitation is not given patentable weight, it cannot be relied upon to distinguish the claimed invention from the prior art in the novelty or nonobviousness analyses. In claim 1, the limitations apart from the providing-information limitation are obvious in light of the prior art as an ordered combination, and the providing-information limitation cannot be given patentable weight. Federal Circuit precedent clearly establishes that printing information about how to use a product onto that product as a substrate does not create a functional relationship between the printed matter and the substrate. See, e.g., In re Ngai, 367 F.3d 1336 (Fed. Cir. 2004). But see In re Miller, 418 F.2d 1392 (CCPA 1969) (finding a functional relationship between volumetric indicia and the measuring spoons on which they were printed). Importantly, the printed matter doctrine still applies even though the providing-information limitation does not require the information to be in the form of printed matter per se. In King Pharmaceuticals v. Eon Labs and In re Kao, the Federal Circuit had already extended the printed matter doctrine to encompass the conveyance of information in non-printed forms, such as verbal speech or sign language. See, Kevin Emerson Collins, An Initial Comment on King Pharmaceuticals: The Printed Matter Doctrine as a Structural Doctrine and Its Implications for Prometheus Laboratories, 2010 Patently-O Patent L.J. 111.

Not only is the lack of patentable weight for “informing”-type limitations settled law, but it is good policy, as well. As I have repeatedly argued elsewhere, the core of the printed matter doctrine, as well as its expansion to information conveyed through speech and other non-print media, is necessary to ensure that the knowledge disclosed in patent specifications remains free for all to use qua knowledge during the term of the patent. Kevin Emerson Collins, The Structural Implications of Inventors’ Disclosure Obligations, 69 Vand. L. Rev. 1785 (2016); Kevin Emerson Collins, The Knowledge/Embodiment Dichotomy, 47 U.C. Davis L. Rev. 1279 (2014). Claim limitations that read on communicative acts can restrain the diffusion of the teachings contained in patent disclosures, so a broad interpretation of the printed matter doctrine is necessary to ensure that patentee’s exclusive rights to claimed inventions cannot interfere with the free dissemination of the informational content of patent specifications.

The Informing-and-Evaluating Claims: Mental Steps and Patent Eligibility

The informing-and-evaluating claims depend from the informing claims, adding a number of steps to be performed, presumptively, by medical providers who use nitric oxide. (Bracket the divided infringement issue afoot here.) For example, claim 3 adds inter alia the following limitations to claim 1:

  • identifying a neonate with hypoxic respiratory failure,
  • determining whether the neonate has left ventricular dysfunction, and
  • “evaluating the potential benefit of treating” that neonate with nitric oxide “vs. the potential risk” of doing so.

The PTAB and the Federal Circuit both identify the evaluating limitation as a mental step performed in a medical provider’s mind. They then both extend the printed matter doctrine to preclude giving patentable weight to mental steps and, as a result, hold the informing-and-evaluating claims obvious. The Federal Circuit breaks new ground by extending the printed matter doctrine to mental activity in this manner, and Judge Newman’s concurrence argues that the extension is not proper. Simply put, “[m]ental steps are mental, not printed.” Concurrence at *1. (The concurrence may also be read more broadly to suggest that even the extension of the printed matter doctrine to spoken information in King Pharmaceuticals, discussed in the previous section addressing the informing claims, is legal error.)

Given the policy concerns discussed above for extending the printed matter doctrine to speech, however, I believe that its extension to at least some mental steps is a logical and justifiable move. As Judge Louie correctly notes, the evaluating limitation:

requires a medical provider to think about the information claimed in the providing information limitation of claim 1. But adding an ineligible mental process to ineligible information still leaves the claim limitation directed to printed matter. To hold otherwise would make the printed matter doctrine a dead letter, requiring no more than a “think about it” step to give patentable weight to a claim limitation directed to information content. There is no meaningful distinction between claim limitations directed to written information … verbal information … and mentally-processed information.

Opinion at *13. In brief, the extension of the printed matter doctrine to encompass “mentally-processed information” prevents form from trumping substance.

Although Praxair Distribution does not expressly make this point, it seems to revive some variant of the historical mental steps doctrine. In the mid-twentieth century, the mental steps doctrine did for mental steps what the printed matter does today for printed matter: it invalidated claims that relied on the content of mental processes to establish a distinction from the prior art. See, e.g., In re Abrams, 188 F.2d 165, 165 (C.C.P.A. 1951). The PTAB cited to some of these mid-century mental steps cases to support its extension of the printed matter doctrine to mental steps. 2016 WL 3648375 at *10 (2016). The Federal Circuit, however, did not, most likely because the CCPA abandoned the mental steps doctrine decades ago in the course of grappling with the patent eligibility of software, In re Musgrave, 431 F.2d 882, 889 (C.C.P.A. 1970), and the Federal Circuit has refused to reinstate it, Prometheus Labs. v. Mayo Collaborative Servs., 628 F.3d 1347, 1358–59 (Fed. Cir. 2010). Nonetheless, in practice, if not in name, Praxair Distribution plainly reinvigorates some variant of the mental steps doctrine. Technically, the opinion could be read narrowly so that the printed matter doctrine only extends to mental steps when claims recite both a printed matter limitation with certain informational content and a think-about-it limitation to the same informational content. However, the argument that the informational content of an evaluating, think-about-it limitation should be given patentable weight if the informing limitation is removed from the claim is difficult to fathom.

Another interesting aspect of Praxair Distribution is that it opens a new front in the ongoing debate concerning the intermixing of sections 102 and 103, on the one hand, and section 101, on the other hand. The Supreme Court’s opinions on patent eligibility in Mayo and Alice are highly controversial, in part, because their “inventive concept” analysis—i.e., what is now known as Mayo/Alice “step 2″—requires consideration of the advance over the prior art, a factual issue that is usually addressed in the novelty and nonobviousness analyses. Mixing the patentability requirements in the other direction—that is, using 101 concerns to inform 102/103 doctrine—has to date not received much attention. However, the printed matter doctrine has long mixed in this other direction, and Praxair Distribution brings this other-direction mixing into the spotlight:

Claim limitations directed to the content of information and lacking a requisite functional relationship are not entitled to patentable weight because such information is not patent eligible subject matter under 35 U.S.C. § 101. Cf. Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 90 (2012). While the doctrine’s underlying rationale is in subject matter eligibility, its application has been in analyzing other patentability requirements, including novelty … and nonobviousness.

Opinion at *10. (Interestingly, the European Union, too, mixes patent-eligibility concerns into the inventive step analysis with its requirement that that the inventive step reside in a technical effect. European Patent Office, Guidelines for Examination, Part G, Chapter VII.5.2.) The printed matter doctrine reveals that, at least under limited circumstances, what are often conceived of as the rigid statutory silos of patent law must break down. As Judge Newman notes in her concurrence, the printed matter doctrine started out as a prohibition on patenting business forms that was administered as part of the doctrine of patent eligibility. Concurrence at 2–3. However, over time, as patent applicants attempted to claim printed matter in combination with otherwise patent-eligible subject matter, the doctrine developed the two statutory branches that it has today: it is administered via section 101 in cases that involve claims to printed matter per se and via sections 102 and 103 in cases that involve claims to printed matter in combination with statutory processes, machines, manufactures, or compositions of matter. The extension of the printed matter doctrine to mental steps merely further highlights the mixing that is already occurring because mental processes are today, understood, well-understood to be the basis of patent-eligibility rejections. The mental steps doctrine, that the printed matter doctrine now resembles, was administered entirely as a section 101 doctrine, employing the equivalent of a patentable-weight analysis as part of patent eligibility. It never partially migrated from section 101 into sections 102 and 103 like the printed matter doctrine did.

Finally, the dispute underlying the Praxair Distribution opinion also reveals an overlap between sections 102 and 103 and section 101 in yet another way. The parallel district court proceeding invalidated all claims of the ‘112 patent that were at issue for lack of patent eligibility under Mayo, although the representative claim was a more conventional diagnostic claim from a different patent. 2017 WL 387649, *14–*20. The PTAB, of course, could consider this section 101 ground because it is limited in IPRs to 102 and 103 grounds.

The Informing-and-Discontinuing-Treatment Claims: An Expansive Functional-Relation Exception

Like the informing-and-evaluating claims, the final group of claims also depends from an informing claim. Technically, however, these claims depend from a claim that requires slightly different information to be provided to the medical provider with the nitric oxide cylinders, namely information in the form of a “recommendation that, if pulmonary edema occurs in a [neonate] who has pre-existing left ventricular dysfunction … the treatment with … nitric oxide should be discontinued.” Again like the informing-and-evaluating claims, they add further steps presumptively performed by medical providers to the steps performed by nitric oxide distributors. The representative claim here is claim 9. After reciting the limitations of identifying a neonate with hypoxic respiratory failure and determining whether the neonate has left ventricular dysfunction, it adds treatment and treatment-cessation steps:

  • “treating the neonatal patient with left ventricular dysfunction with … nitric oxide, whereupon the [neonate] experiences pulmonary edema; and
  • in accordance with [the information provided], discontinuing the … nitric oxide due to the neonatal patient’s pulmonary edema.”

The PTAB held claim 9 not unpatentable as obvious. It construed the “in accordance with” language to mean that the discontinuation of the treatment was performed “based on, or as a result of” the information/recommendation provided with the nitric oxide cylinders. It then concluded that the fact that the information was the reason or motivation for the medical provider to discontinue treatment created a functional relationship between the information and the discontinuing-treatment step. Opinion at *6. In turn, the PTAB held that the functional-relation exception to the printed matter doctrine applied, that the information provided could be given patentable weight, and that claim 9 was not obvious.

The Federal Circuit approved of the PTAB’s interpretation of the functional-relation exception to the printed matter doctrine as well as its application to claim 9. Opinion at *17. However, the Federal Circuit reversed the PTAB’s ultimate nonobviousness determination, concluding that, even when the content of the information is given patentable weight, the claim is obvious in light of the prior art. The prior art taught that nitric oxide may be given to patients with left ventricular dysfunction as long as those patients are monitored during treatment. The information provided—namely that nitric oxide should be discontinued for patients with left ventricular dysfunction upon pulmonary edema—was too small of an advance over the prior art to render the claim patentable.

The point of agreement between the PTAB and the Federal Circuit on the expansive interpretation of the functional-relation exception raises an interesting—and possibly troubling—precedent for future cases. The logical reason for a real-world, extra-mental action can now distinguish a claim reciting the action from the prior art. That is, the “invention” of a nonobvious mental motivation for a human actor to perform an already-known, real-world (i.e., non-mental) action, like discontinuing treatment, can give rise to a patentable method claim.

Consider a simple hypothetical. Assume that doctors routinely decrease the dosage of a drug when a metabolite of the drug in a patient’s bloodstream exceeds a certain threshold because of a known potential for a serious adverse event, namely liver problems. Now assume that a researcher discovers that, unexpectedly, the same metabolite in a patient’s bloodstream exceeding the same threshold also raises the risk of a different, serious adverse event, namely heart problems. The researcher claims a method of a medical provider: (a) administering a dose of a drug to a patient from a package with a printed indication that a metabolite level exceeding a threshold creates a medically unacceptable risk of heart problems, (b) determining the level of the drug’s metabolite in the patient’s bloodstream, and (c) reducing the dosage of the drug “in accordance with” the printed indication (i.e., due to the risk of heart problems) if the threshold is exceeded. Even though the medical provider infringing the claim performs conduct that, to an external observer, cannot be differentiated from the prior art (except for the printed indication on the drug package), the claim is patentable. The functional-relation exception to the printed matter doctrine allows the content of the printed matter be given patentable weight because the information conveyed motivates the medical provider’s conduct, and the unexpected nature of the connection between high metabolite levels and heart problems strongly supports nonobviousness.

To be clear, even if one finds the patentability of this hypothetical claim to be problematic—and reasonable minds may differ on whether it is problematic—there is no reason to question the Federal Circuit’s actual holding concerning claim 9 in Praxair Distribution. The Federal Circuit held the claim unpatentable for obviousness even when it gave the content of the printed (or spoken or thought) matter patentable weight. By necessity, it therefore would have reached the same holding if it had refused to give that content patentable weight. The expansiveness of the functional-relation exception in Praxair Distribution will only become outcome-determinative in future cases when a claim recites information that provides an unexpected reason or motivation for a real-world, extra-mental action that, standing alone, is known or is merely an obvious departure from the prior art.

Inversely, a narrow interpretation of the functional-relation exception—one that does not label the content of information as functionally related to an action recited as a limitation when the action is performed because of the information—would not widely undermine patentability. In particular, it would not invalidate most claims to actions that are motivated by newly discovered information. For example, consider a researcher who discovers that, unexpectedly, a particular genetic mutation means that a patient should be taking a lower dosage of a drug. The researcher may claim a method of a medical provider: (a) testing a patient for the mutation and (b) administering the lower drug dosage to the patient if the mutation is present. The printed matter doctrine is irrelevant to the nonobviousness of this claim because the claim does not recite the content of printed information (or a mental state of a doctor who thinks about the information) as a limitation. Such an information limitation is not required for validity, and would thus be unnecessary drafting surplusage, because the real-world (non-mental) conduct of testing and administering under the specified conditions is sufficient to distinguish the claim from the prior art. Although it is not recited as a claim limitation, the newly discovered information still provides an explanation for why the claimed invention is useful and why it produces unexpected results. (Further highlighting the interconnection of the printed matter doctrine and patent eligibility, compare the outcome in this hypothetical to the Federal Circuit’s recent holding in Vanda Pharmaceuticals Inc. v. West-Ward Pharms Int’l Ltd., 887 F.3d 1117 (Fed. Cir. 2018), which upheld the patent eligibility of a hybrid diagnostic/treatment claim under Mayo.)

The Federal Circuit’s expansive interpretation of the functional-relation exception to the printed matter doctrine in Praxair Distribution can be traced to a recent shift how the Federal Circuit articulates that exception. Traditionally, the functional-relation exception was applied only when there was a functional relationship between the content of the printed matter “the substrate on which the printed matter is applied.” Opinion at *9 (emphasis added). For example, in one of the few non-software cases in which the Federal Circuit actually held that the functional-relation exception allowed the content of printed matter to receive patentable weight, the content of a series of numbers printed on a loop of paper was held to be functionally related to the substrate/paper because the numbers themselves were a looping series. In re Gulack, 703 F.2d 1381 (Fed. Cir. 1983). In contrast, the PTAB and the Federal Circuit in Praxair Distribution looked for, and found, a functional relationship between the content of the printed matter and a different limitation in the claim other than the printed-matter limitation, namely the discontinuing-treatment limitation. From my quick research, Praxair Distribution appears to be the first case in which the functional-relation exception has been found to apply based on a functional relationship between printed matter and a claim limitation directed to something other than the printed matter’s substrate. Both King Pharms. and Kao use language that suggest the possibility of such a non-substrate relationship satisfying the functional-relation exception, but neither finds that it exists on the facts presented. If the functional-relation exception were limited to claims in which there is a functional relationship between the printed matter and the substrate in particular, then claims to new motivations for already-performed conduct would not be patentable under the printed matter doctrine.

108 thoughts on “Printed Matter, Mental Steps, and Functional Relationships: Oh My!

    1. 22.1

      It’s clear that your “modest proposal” is going nowhere. This opinion explains exactly why, btw, to anyone with a mind willing to understand.

      1. 22.1.1

        to anyone with a mind willing to understand.

        Stultifying.

        …and I am pretty sure (well, more than sure), that the opinion has zero to do with the modest proposal (as you would put it).

    2. 22.2

      The term “invention” appears in this proposed section… that opens the door to the Supreme Court to legislate (via interpretation) what “invention” means and what it “never” meant… so much for the “subject only to the exceptions” and the “if and only if” qualifiers.

      Somehow the ladder of abstraction needs to be cut down in an attempt to prevent judges clambering up to interpret/legislate broad terms as already including the exceptions they would argue are simply inherent ab initio in their very conceptual existence… regardless of any qualifications…

      That said, my conjecture is that any Supreme Court hell bent on limiting subject matter would be able to use (abuse?) statutory interpretation to smuggle exceptions in, no matter how the statute were written… so long as it is written, however written it can be twisted.

      1. 22.2.1

        Hmmm, good point.

        Of course, my long-standing advice remains as a positive action that Congress could take to be effective in enforcing its word as the last word…

        (jurisdiction stripping accompanied with an appropriate NEW Article III court for the non-original jurisdiction of patent appeals)

  1. 21

    First of all, kudos to Professor Collins for an excellent post, one of the best posts here on any topic in a long time. It’s clearly written and Collins goes the extra mile by presenting easy-to-understand examples which highlight the policy considerations and pitfalls of the various “options” at play here.

    Second, let’s just stop for a while and expressly acknowledge what should be plain to anyone and everyone who has been following eligibility jurisprudence for the past fifteen or so years: Collins is a major thought leader in this area of patent law. I don’t agree with all of the positions he has taken along the way but the guy “gets it”. Most importantly, he understands that there is no getting around the issues. The rubber is going to meet the road eventually. And this case is an example of that happening right under our noses. Of course the CAFC is going to manage to muck it up a bit (and they definitely did so here). That’s because (1) they are still learning and (2) their minds are, as a whole, still constrained by their mistaken belief that we (the public) need patents that protect information in certain contexts. In fact, we don’t need them. Nobody does except for the tiny tiny tiny handful of people who exploit the opportunities presented by the granting of such patents (at the expense of everybody else).

    Let’s turn to the most interesting aspects of the article:

    [T]he core of the printed matter doctrine, as well as its expansion to information conveyed through speech and other non-print media, is necessary to ensure that the knowledge disclosed in patent specifications remains free for all to use qua knowledge during the term of the patent.

    Read it, people. Read it and understand. You can’t patent facts. You can’t patent information. That’s the fundamental point here. That’s the “core” of the so-called PMD and it’s a major part of the “core” of 101 (and it’s why the PMD and 101 are necessarily related to each other).

    Another interesting aspect of Praxair Distribution is that it opens a new front in the ongoing debate concerning the intermixing of sections 102 and 103, on the one hand, and section 101, on the other hand.

    Collins is being cheeky here because he’s recognized this “intermixing” (or perhaps we should call it “conflating” – LOL) for many years and I’ve been pointing it out longer than I can remember. From a purely logical standpoint, you can’t have a working subject matter eligibility screen without this “intermixing” unless you believe that subject matter eligibility is nothing more than a technical drafting hurdle (i.e., “you must begin your claim by reciting the term composition, apparatus, or process”). Since nobody seriously believes that (or can coherently depend that position), we’re left with the task of taking subject matter eligibility seriously. And that’s why Lourie’s statement (quoted above and requoted immediately below) is so important:

    There is no meaningful distinction between claim limitations directed to written information … verbal information … and mentally-processed information.

    In other words: data is data is data, at least from the perspective of a utility patent system. You can’t protect information with a patent. It doesn’t matter how important the information is. It doesn’t matter how much the information is “worth”. It doesn’t matter what form the information takes. It doesn’t matter if you describe the information using apparatus terms, compositions terms or process terms. And it certainly doesn’t matter if “it’s impossible to know” what sort of incredibly useful information we might never obtain if we don’t grant patents on information (<– aka "Newman's Lament", an absurdist's excuse for granting patents on everything).

    the dispute underlying the Praxair Distribution opinion also reveals an overlap between sections 102 and 103 and section 101 in yet another way. The parallel district court proceeding invalidated all claims of the ‘112 patent that were at issue for lack of patent eligibility under Mayo, although the representative claim was a more conventional diagnostic claim from a different patent. 2017 WL 387649, *14–*20. The PTAB, of course, could consider this section 101 ground because it is limited in IPRs to 102 and 103 grounds.

    What’s interesting to me is that the patentee did not — unless I missed something — challenge the PTAB’s decision on the grounds that it is, in fact, performing a statutorily barred 101 analysis and just using different words. If the patentee here has not made that argument, it should be considered waived. There are good reasons to read patent blogs and understanding the relationship between 101 and the PMD is one of them.

    Collins: consider a researcher who discovers that, unexpectedly, a particular genetic mutation means that a patient should be taking a lower dosage of a drug. The researcher may claim a method of a medical provider: (a) testing a patient for the mutation and (b) administering the lower drug dosage to the patient if the mutation is present. The printed matter doctrine is irrelevant to the nonobviousness of this claim because the claim does not recite the content of printed information (or a mental state of a doctor who thinks about the information) as a limitation. Such an information limitation is not required for validity, and would thus be unnecessary drafting surplusage, because the real-world (non-mental) conduct of testing and administering under the specified conditions is sufficient to distinguish the claim from the prior art.

    I couldn’t have said it better myself. Actually I take that back. I have said it myself better probably a hundred times. ;) The cleanest way to draft the claims is to claim the method using the least number of steps and without any “logic” (i.e., “if – then” statements). In other words, claim the non-obvious method straight up: A method comprising administering drug A to a patient with mutation X. Done. Is that method anticipated such that the claim won’t “work” for the applicant? If so, then the applicant shouldn’t file a patent on that method. Find something else to “innovate.”

    And lastly we come to the very wrong turn taken by the PTAB and the CAFC:

    The PTAB held claim 9 not unpatentable as obvious. It construed the “in accordance with” language to mean that the discontinuation of the treatment was performed “based on, or as a result of” the information/recommendation provided with the nitric oxide cylinders. It then concluded that the fact that the [printed] information was the reason or motivation for the medical provider to discontinue treatment created a functional relationship between the information and the discontinuing-treatment step. Opinion at *6. In turn, the PTAB held that the functional-relation exception to the printed matter doctrine applied, that the information provided could be given patentable weight, and that claim 9 was not obvious…..

    The point of agreement between the PTAB and the Federal Circuit on the expansive interpretation of the functional-relation exception raises an interesting—and possibly troubling—precedent for future cases. The logical reason for a real-world, extra-mental action can now distinguish a claim reciting the action from the prior art. That is, the “invention” of a nonobvious mental motivation for a human actor to perform an already-known, real-world (i.e., non-mental) action, like discontinuing treatment, can give rise to a patentable method claim.

    Collins is being generous when he suggests that “reasonable minds can differ” about the desirability of letting such claims pass through the patent system. The fact is that if the CAFC’s expansive holding here is challenged en banc or at the Supreme Court and the challenger(s) has his/her ducks and arguments lined up properly, it’ll be relegated to the tr@sh bin of history. The CAFC’s “functional relationship” test was already an incomprehensible hand-wavey nothingburger before this decision. Now it’s got rancid raw onions in it. Bleah.

    1. 21.1

      First of all, kudos to Professor Collins for an excellent post, one of the best posts here on any topic in a long time. It’s clearly written and Collins goes the extra mile by presenting easy-to-understand examples which highlight the policy considerations and pitfalls of the various “options” at play here.

      It is clearly NOT “one of the best posts here on any topic in a long time“.

      It is clearly NOT “It’s clearly written

      As to “highlight the policy considerations and pitfalls of the various “options” at play here.” – this is nothing more than the “high-minded” spanking going on and attempting to fit a pet theory into a fabricated problem.

      Collins is a major thought leader in this area of patent law

      Certainly NOT true – and thankfully so.

      The CAFC’s “functional relationship” test was already an incomprehensible hand-wavey nothingburger before this decision.

      LOL – coming from someone who claims to know (and understand) the judicial doctrine of printed matter – and its important exceptions – “better than anyone” and yet cannot get out of his own way when it comes to admissions against interests on the very topic (not to mention someone who cannot be bothered to engage in the merits of an actual super-clear Set Theory explication), Malcolm, you are what you accuse others of (here, that being the “incomprehensible hand-wavey nothingburger” thingie.

      No surprise.

      At all.

      1. 21.1.1

        coming from someone who claims to know (and understand) the judicial doctrine of printed matter – and its important exceptions – “better than anyone”

        Right. As demonstrated by this CAFC opinion which, while mistaken in an important respect that both Collins and I have now highlighted, otherwise sets out the fundamental issues pretty much exactly as I’ve been setting them out here for the past six years (at least). Please start getting used to it already.

        1. 21.1.1.1

          Except for your admissions against interests, you mean?

          Yeah, that’s what I thought.

          Your rush to celebrate the academic is nothing more than confirmation bias of the way that you want the judicial doctrine (and its critical exceptions) to be.

          It just is not.
          You just are not.
          The academic just is not.

          Maybe instead, you want to (finally) engage on the merits of the Simple Set Theory explication I so long ago invited you to?

          (and yes. I thought so too on that as well)

          1. 21.1.1.1.1

            Your rush to celebrate the academic

            LOL

            I’ve been reading Collins’ work for years and encouraging others to do the same. Apparently some important people got the message. Let me know when your tear-filled river reaches stage 5 because I want to have as much fun rafting on it as possible.

            1. 21.1.1.1.1.1

              Your “for years” remains a “rush” because all you want to do is engage in your own special confirmation bias.

              I provided a FAR easier, much more clear explication and invited, urged, even begged you to join a substantive discussion on the merits.

              “getting the message” sounds an awful lot like all that you care about is pushing your propaganda.

              Funny how that is, isn’t it?

              1. 21.1.1.1.1.1.1

                I think I missed the begging part. Can you provide a demo to refresh my memory?

                1. It’s in the repeated requests, repeated hyperlinks, and repeated provisions of the Simple Set Theory explication itself.

                  Pull your head out and maybe you won’t “miss” these things.

      2. 21.1.2

        “Collins is a major thought leader in this area of patent law”

        Certainly NOT true

        Notice what’s missing, folks.

  2. 20

    It seems like what is going on here is that the judges are either ignorant or willfully ignorant of information processing. We need to agree on some basic set of laws about information processing.

    Would we tolerate judges that said that there was no such thing as gravity, but rather bodies tended towards their natural place in the universe?

    The view of information processing from most of the CAFC judges and the foul nine is from before 1900.

  3. 19

    I am sure this subject has been “done to death” but if you could help me understand I’d be grateful.
    I am aware that
    The “printed matter doctrine” restricts the set of patentable things, in that the
    knowledge conveyed by printed matter to a human reader—i.e., the “content” of the printed matter—cannot be considered by a patent examiner or a court that is
    determining whether a claimed invention is novel.

    I cannot seem to square this with patent claims to a 2nd medical uses.
    Essentially most often in a method of treatment claim for a new disease indication, the actual method steps are exactly the same as the previous method of of treatment claims i.e. “administer the drug” so that the only difference between a drug product that encompasses the drug for the new indication is the label i.e. printed matter.
    Also at least in the Para IV setting an accused infringer of a MoT patent is found to infringing purely on the basis of the printed matter of the accused label.

    Why is it that the label is enough to impart patentability to a drug product method claim – but to nothing else?

    1. 19.1

      Further to the above it is also arguable that a Method of Treatment claim who’s only difference is the mental process of the doctor diagnosing a patient as having a particular disease rather than a prior art disease should, by the printed matter doctrine be unpatentable or invalid – no?

      1. 19.1.1

        The answer may be found in the error and misperception provided by Random below at posts

        At 4: and thus the determining step is an attempt to limit the following action by a particular motivation, which is just not legally relevant under KSR

        And at 4.1.1: The reason is because the “determining overheating” step is simply an attempt to write in a specific motivation for performing the transfer.

        Take the opposite of what Random is saying, because the claim elements – being functionally related – are NOT so easily dismissed.

        Random wants to turn “functionally related” into only sometimes applying, and removing the instances wherein the related may overlap with some (any) motivation.

        But that places the aspect of “motivation” at an improper place in evaluating ALL of the claim elements (and the claim as a whole). Random’s path is merely a more “clever” way of claim dissection and NOT following a “claim as a whole” approach.

    2. 19.2

      [M]ost often in a method of treatment claim for a new disease indication, the actual method steps are exactly the same as the previous method of of treatment claims i.e. “administer the drug”…

      Thanks for your questions. I will begin my answer by contesting the premise of your question. A well crafted second medical use claim usually begins “a method of treating [X] in a patient in need thereof… .” Sometimes that “in need thereof” is outcome determinative for validity contests, because that is the limitation that distinguishes over the prior art.

      Imagine the following: telastrim is known in the art for treating gastritis, but I discover that it can also treat migraines. I claim “a method of treating a migraine headache in a patient in need thereof, the method comprising administering a pharmaceutically effective dose of telastrim to the patient.”

      Notice two points about this claim. First, nothing in the claim specifies what is written on or in the packaging, or what must be told to the one administering the telastrim. The physician infringes by administering telastrim to a migraine patient even if no one has ever told the physician about the anti-migraine effect of telastrim. Therefore, the printed matter doctrine never comes into it.

      Second, the objective point distinguishing my claimed method from prior art instances of telastrim administration is not the label on the bottle, but rather the patient to whom the drug is given. There is, in other words, an objective physicial difference from the prior art—not in the act of administering, to be sure, but rather in the target to whom the “administering” is done.

      1. 19.2.1

        Leaving the label aside for now.
        Consider the claim elements.
        The administering step is prior art, the only novel element is the nature of the patient in need thereof,
        i.e. a diagnosis of migraine. ie the method is to be carried out only on those with the diagnosis.
        According to the CAFC decision, diagnosing and a diagnosis are a mental process and the direct result of a mental process
        So that according to CAFC the diagnosis cannot impart novelty to an other wise anticipated claim

        1. 19.2.1.1

          N.B., diagnosis does not actually come into my hypothetical claim above. The claim is not distinguished from the prior art based on anything that happened in someone’s head. It is distinguished from the art on the objective, physical basis that it is administered to someone suffering a migraine. Diagnosis vel non of migraine is actually irrelevant to the analysis.

          Of course, this means that if someone suffering migraine has actually been administered telastrim before my filing date (regardless of diagnosis) then my claim is anticipated. However, the proponent of invalidity actually has to prove that pre-filing telastrim administration to a migraine patient. It is not enough to say, “well, it probably happened sometime that one of those prior art gastrits patients also had a migraine at the time of telastrim administration.”

          1. 19.2.1.1.1

            It is distinguished from the art on the objective, physical basis that it is administered to someone suffering a migraine.

            My apologies. That could be more clear. Please let me rephrase: The claimed method is distinguished from the art on the objective, physical basis that the telastrim is administered to someone suffering a migraine.

            1. 19.2.1.1.1.1

              …talk about something being “totally in the mind”….

      2. 19.2.2

        because that is the limitation that distinguishes over the prior art.

        …but according to Random, that is not a “true” limitation, merely being one of selective motivation and all…

        Note as well as to how the “written description” is being attempted to be wed to the Z0mbie of “mental steps”… Once one goes beyond a requirement of a written description to be written, and one recognizes how the Zombie of “mental steps” is being attempted to be played against a particular form of innovation (can you say anthropomorphication?), you will see what you are seeing.

        Lastly, I am not sure your attempted distinction with “the patient” carries much impact, as the prior art also includes “a” patient – thus there being no “objective physical difference from the prior art.”

        1. 19.2.2.1

          I am wondering as well if migraines are “conventional,”and one is simply trying to “apply” a prior art item (that inherently has certain properties) with something deemed “conventional,” and under SC “interpretation,” cannot yield something patent eligible (even if the Statutes expressly say something else).

    3. 19.3

      If what you say is true, that a second use of a drug can be patented, then that is what is being patented. A new method of treating affliction B that was not known before.

      For example, minoxidil was a blood pressure medicine. It might be that a patent later issued for using minoxidil to regrow hair. It is that new use that was patented. Not the label.

      I believe the printed matter doctrine explains when inventions related to printing matter CAN be patented, such as when having utility, as in a measuring cup.

      1. 19.3.1

        Leaving the label aside for now.
        Consider the claim elements.
        The administering step is prior art, the only novel element is the nature of the patient in need thereof,
        i.e. a diagnosis of baldness. ie the method is to be carried out only on those with the diagnosis.
        According to the CAFC decision, diagnosing and a diagnosis are a mental process and the direct result of a mental process
        So that according to CAFC the diagnosis cannot impart novelty to an other wise anticipated claim.

        1. 19.3.1.1

          First of all, I don’t know that the administering step is prior art. I doubt that as a blood pressure medicine minoxidil was sprayed on the patients head. I seem to recall it was injected. I think nurses that administered it often, that might get a drop on there hands now and then were growing hair on their hands. …

          That aside, new uses of known things are patent eligible. Lumber, rope and sail cloth were known. But, putting them to the new use of a warpable wing earned a coupla bicycle shop owners a patent nonetheless.

          The judge made nonsense about mental steps is just that.

          1. 19.3.1.1.1

            By the way, we needn’t speculate. This appears to be claim 1 of the minoxidil hair growth patent:

            1. A method of treating humans for alopecia which comprises topically applying to the human scalp an effective amount of a solution containing 6-amino-1,2-dihydro-1-hydroxy-2-imino-4-piperidinopyrimidine and a solvent.

            link to patents.google.com

            You may note that there are not mental steps recited.

            1. 19.3.1.1.1.1

              1) It may be that the claim you recite is an exception to the general claim drafting practice of simply “administering” – as the only method step. In this case “topically applying to the human scalp”

              2) the claim you recite DOES indeed have a mental process step in that the “treating humans for alopecia” requires a mental step of “diagnosing” – i.e. a trichologist examines the scalp and concludes – this is not simply thinning due to vitamin difficiancy – this is alopacia!. BUT, importantly although the mental step is there it adds nothing to the patentability – which relied on the new and novel Method Steps of “topically applying to the human scalp”so that in this case even getting rid of the Alopacia limitation still protects a new method

              1. 19.3.1.1.1.1.1

                Just a little quibble. The diagnosis to which you refer is not part of the claimed invention. A lot of things have to occur prior to the application of the claimed method, including the patients parents having to meet. That is not, however, part of the claimed method.

              2. 19.3.1.1.1.1.2

                [T]he claim you recite DOES indeed have a mental process step in that the “treating humans for alopecia” requires a mental step of “diagnosing…

                Requires? No, not really. As a practical matter, the only instances of infringement that the patentee might ever hope to detect will be preceded by a diagnosis, but diagnosis is not actually required for infringement. One cannot treat alopecia in a subject who does not suffer alopecia, so an honest-to-goodness alopecia patient is necessary to infringe (or anticipate) the claim, but a diagnosis of alopecia is not actually necessary.

          2. 19.3.1.1.2

            Of course new uses of known things are patent eligible!

            The question here is in regards to a very specific type of new use

            Where the only element that is novel is the mental process to diagnose a subject as being “in need thereof”

            Of course where the actual method steps are different – e.g. administration by injection/swallowing there is no question unless the claim itself does not make that distinction.

            In other words if the preferred new method is oral administration rather than injection but the prior art claim is simply to administering including oral – it won’t help to point out that in practice there is a preferred type of administering

            1. 19.3.1.1.2.1

              If someone discovers that a course of aspirin cures type seven liver cancer then that is an invention and a claim such as:

              A method of treating humans for type seven liver cancer which comprises administering at least about 700mg of aspirin per 50 Kg of patient weight at least about four times a day for at least about 14 days.

              would and should be eligible.

  4. 18

    >However, the role of information in patentability depends on the novelty and non-obviousness of the invention as a whole. Neither the inclusion of information in the patent claim, nor the mental component of the
    practice of process steps, negates eligibility under Section 101. The discovery of previously unknown information may well lead to new and useful technology; and mental steps often are needed to move through a sequential process. The conflation of “information” with “mental steps,” whereby both are designated “printed matter,” adds neither clarity nor precision to the law.

    This is reasonable and the concurring opinion from Newman. I just don’t see anyway that patent law is going to be reasonable as long as Lourie and Prost are judges as well as the Google judges. I am strongly in favor of eliminating the CAFC due to it being stacked with anti-patent judges.

    1. 18.1

      NW, Ironically, one reason legislation to dump patent litigation back to 13 different circuits has no more chance that the proverbial snowball in hell is that the Fed. Cir. is regarded by many outside the patent field, including the Sup. Ct., as too PRO-patent.

      1. 18.1.1

        Paul, the reputation of the CAFC is prior to the Google judges (everyone after O’Malley).

        I pretty much agree with you that there isn’t going to be any relief in the form of new legislation or some break-through court case. Still, I think it is important to continue to try to critique the opinions when they are not consistent with the reality of innovation.

        I am not just going to rollover and say that information has an “ethereal form” that is non-physical.

        1. 18.1.1.1

          Still, I think it is important to continue to try to critique the opinions when they are not consistent with the reality of innovation.

          Absolutely.

          Ours is not to capitulate and then wonder why the law has degraded (due to captured interests).

          We, as attorneys, have an ethical responsibility for NOT simply bowing to “bad” laws (either legislatively or judicially created).

    2. 18.2

      Also note that even J. Newman supported the majority decision including its reversal of that part of the IPR decision re-allowing some claims.

    3. 18.3

      [T]he concurring opinion from Newman [is reasonable].

      Agreed. As usual when Judge Newman writes separately, she has the better analysis. Those “provide information” steps read on printed matter, and that is all that one needs to know in order to decide this case correctly. The majority’s digression into “mental steps” is as unhelpful as it is unnecessary. The majority’s straightforward printed matter analysis is fine, but they could and should have simply stopped there.

  5. 17

    >>Digitech Image Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344, 1349–50 (Fed. Cir. 2014) (“Data in its ethereal, non-physical form is simply information that
    does not fall under any of the categories of eligible subject matter under section 101.”);

    So apparently data can be in an “ethereal” form where it is represented by angels on a pinhead. “Non-physical” form? So somehow information can be represented without any physical form. How? Wow, right back to the 10the century with medieval thinking.

    1. 17.1

      …reflections of the non-reality evident in the In re Nuitjen decision.

      Anyone with any meaningful grasp of reality should be appalled.

  6. 16

    Giggle as y’all may, but the worm is turning toward my views on a 1) formal eligibility analysis happening at the Markman stage and 2) an accepted and exact measure of abstraction being the consumption of information by a human being.

    I quote Collins at length below as presenting an appropriate frame for thinking about what symbols and abstractions really mean to people, but one that is not esp. practical for daily use because some people (*ahem* anon) lock-up when facing adult choices.

    link to papers.ssrn.com

    1. 16.1

      It is not a matter of “locking up” as you try to twist it, Marty.

      This is not a matter of “facing adult choices” as presented by the w a n k i n g of the Collins v0m1tfest.

      Quite the opposite.

      You are seeking to slap yourself on your back way too early, and without regard to reality,

      As usual.

    2. 16.2

      Yes and back when most of the mechanization was occurring with machines replacing physical labor, I am sure the test for 101 should have been how much hard it would be for a human to perform the physical labor.

      Please. Stop. Go read Deener and tell me why it shouldn’t be abstract because a human could have performed the method.

      1. 16.2.1

        Deener said a method MUST have a result. I agree with that. That result should be construed as a matter of law, based on a mixed inquiry, just as a claim is construed.

        1. 16.2.1.1

          OK. Nice Martin. Nothing to do with what I said, but OK.

    3. 16.3

      By the way, Martin, having an academic support your views is not a good thing. Probably they took money to write the article to an abstract already written. Bought off boys and girls deserve no respect.

  7. 15

    Fantastically unreal that anybody would try to defend some of these claims at issue here. What’s the point of that? Among the worst ever drafted.

    1. 15.1

      Nice straw man – I do not see any “defend THESE claims.” I do see the larger context of the law being explored. Well, explored by some – not by you, of course. By you, we only see the typical non sense.

  8. 14

    And the dots begin to be connected. This is the first step for the CAFC to pull itself out of the abyss. Regular readers of this blog are well aware of the fact that the so-called printed matter doctrine is really nothing more than an eligibility test using different words. The best part is watching the spinning and dust kicking from the 101 h@ters. Also: Newman clinging to her fantasy world. Too funny.

    1. 14.1

      Dots connected…?

      I already “connected the dots” for you Malcolm with my very easy to understand Set Theory explication.

      Invited your comments and engaged dialogue on the merits of same (repeatedly).

      To no avail.

      The best part is watching the spinning and dust kicking from the 101 h@ters.

      More of the typical Malcolm Accuse Others, as the only spin here is yours.

      It is NOT anyone “ h a t i n g” 101, but rather, it is the mid-use and A buse of 101 that draws the ire (and rightfully so).

      1. 14.1.1

        Damm autocorrect – “mid-use” should read “mis-use”

    2. 14.2

      …as for being “well aware,” you should be well aware that the full doctrine – including the important exceptions – provide a reading of the law that is simply NOT congruent with your desired Ends.

      As was well noted in the archives of the blog and your admissions against interests.

      You may continue to pretend otherwise, but that f001s no one.

  9. 13

    No idea why my contribution is blocked, pending moderation. But as I am optimistic, that the block will be lifted, I’m not going to write it all over again.

  10. 12

    In the text of the Decision, when I got to this sentence:

    “The evaluating limitation in claim 3 is directed to a mental step that is also printed matter.”

    I winced. Imagine anybody but a patent lawyer reading that. imagine their reaction! It is a matter of regret, when the jurisprudence takes a pre-Dickensian course that is inexplicable to the non-specialist.

    Elsewhere in the piece, Prof. Collins writes something I quarrel with:

    “(Interestingly, the European Union, too, mixes patent-eligibility concerns into the inventive step analysis with its requirement that that the inventive step reside in a technical effect. European Patent Office, Guidelines for Examination, Part G, Chapter VII.5.2.) ”

    First, it’s not the EU, OK? The EPO has 38 Member States, the EU 28. The UK’s departure from the EU is irrelevant to its membership of the EPO.

    Second, the EPO’s jurisprudence does not mix eligibility and patentability, OK? Eligibility requires “technical character”. Non-obviousness requires inventive activity within the ambit of the useful arts. Non-obviousness outside the useful arts might well add to the joy of human society, but cannot deliver patentability in Europe. Instead, patentability is predicated on technical means to solve a technical problem.

    I think that even Charles Dickens, never mind an accountant, CEO or member of Congress, can grasp the logic of the EPO’s eligibility/patentability dichotomy, OK? I can see that the CAFC is trying to get to the EPO’s position but the PMD is not the best way to get there.

    1. 12.1

      As much as MaxDrei winces, his own writing and (previously rejected) attempts to co-opt “Useful Arts” is a cause for wincing to anyone that recognizes the true (Sovereign-specific) imports of those words.

      Useful Arts is simply broader than the “Euro” “technical arts.”

      There is only one reason for such dissembling…

  11. 11

    If you dig deep enough into the “printed matter doctrine,” it’s genesis involves issues associated with non-statutory subject matter. Moreover, if you think of what printed matter actually entails: prior art + information (in whatever form) useful and intelligible only to the human mind, this should be a simple 101 rejection since the invention is directed to nothing more than the abstract idea represented by the instructions.

    Somewhere along the way, the printed matter doctrine changed from an unpatentable subject matter issue to a specific exception in which certain claim limitations can be ignored. It would be better off for consistency in the law for the printed matter doctrine to again be placed under the realm of 35 USC 101. Claim limitations should never be ignored, and placing the printed matter doctrine back under 35 USC 101 should keep that fundamental principle (of not ignoring claim limitations) unsullied.

    1. 11.1

      [T]his should be a simple 101 rejection since the invention is directed to nothing more than the abstract idea represented by the instructions.

      Huh? The invention is whatever the claim says that the invention is. That is the nature of a claims-based patent system. Meanwhile, the claim is directed to “a cylinder containing compressed nitric oxide gas in the form of a gaseous blend of nitric oxide and nitrogen.” That seems like a darn site more than an abstract idea (it would hurt like the Dickens if you dropped it on your toes) and/or some instructions.

      Like it or not, the printed matter doctrine evolved the way it has because that is the way that works. As G.K. Chesterton rather famously admonished, “[d]on’t ever take a fence down until you know the reason it was put up.”

    2. 11.2

      You have one – and only one – correct statement:

      Claim limitations should never be ignored

      But your desire to go “back under” 101 is most problematic as the current state of 101 is steeped in that ignoring (under the “Gist” step).

      You yourself seem inclined to this with your words of “the invention is directed to” – which is a form of the thing that you are saying should never happen.

  12. 10

    ANYONE advancing a legal view of “By necessity, it therefore would have reached the same holding if it had refused to give that content patentable weight.” needs to be kept away – FAR AWAY – from commenting on the law.

    Let’s take a simple analogy.

    A man decides to jaywalk right in front of a court house, with a cop (in an ornery mood) right there. The man is ticketed and is made to appear in court within the hour.

    He appears, offers a feeble protest, and is convicted.

    Oddly, sentencing must be done on the next floor of the courthouse.

    On the way to that floor, the man accidently walks into an open elevator shaft and falls to his death.

    Our illustrious author here (on his break from painfully torturing an EASY concept) draws the conclusion that the sentencing has it occurred and had resulted in a death penalty for the jaywalking offense, would have been perfectly fine, seeing as “the same End was reached.”

    By necessity or some such tortured non sense….

    I suppose that when you write a 3,300+ word article, one may “take liberty” to slip in some inanities…

    1. 10.1

      …and more inanity:

      Inversely, a narrow interpretation of the functional-relation exception— [ ] —would not widely undermine patentability.

      A starkly bald (and erroneous) assertion that need not be made at all (unless one is up to no good and is attempting to inject some muckery into this area of patent law.

      This be no friend of innovation, this academic.

  13. 9

    OT, but for all those on the converging warpaths of IPR tribal sovereign immunity [and consider oral arguments a strong clue to decisions -I don’t] on June 4th the Federal Circuit will hear arguments in Saint Regis Mohawk Tribe v. Mylan Pharmaceuticals Inc. Big bucks and a potential trip to the Supremes are at stake.

  14. 8

    If you’re going to save this for further publication, note you need a “not” after “could” in the following sentence.

    “The PTAB, of course, could consider this section 101 ground because it is limited in IPRs to 102 and 103 grounds.”

  15. 7

    Dennis:

    Regarding:

    “Not only is the lack of patentable weight for “informing”-type limitations settled law, but it is good policy, as well. As I have repeatedly argued elsewhere, the core of the printed matter doctrine, as well as its expansion to information conveyed through speech and other non-print media, is necessary to ensure that the knowledge disclosed in patent specifications remains free for all to use qua knowledge during the term of the patent. Kevin Emerson Collins, The Structural Implications of Inventors’ Disclosure Obligations, 69 Vand. L. Rev. 1785 (2016); Kevin Emerson Collins, The Knowledge/Embodiment Dichotomy, 47 U.C. Davis L. Rev. 1279 (2014). Claim limitations that read on communicative acts can restrain the diffusion of the teachings contained in patent disclosures, so a broad interpretation of the printed matter doctrine is necessary to ensure that patentee’s exclusive rights to claimed inventions cannot interfere with the free dissemination of the informational content of patent specifications.”

    If the applicant in this case (or other applicants) were better able to predict this outcome, the outcome that you support for the reason quoted above, wouldn’t the applicant simply not disclosed the information? Wouldn’t that prevent all from using it with even stronger effect that an allowable patent claim?

  16. 6

    An unusually interesting blog post.
    The decision certainly revitalizes the “printed matter” doctrine re 103, but since this is an IPR appeal presumably unpatentable subject matter 101 discussions here would be dicta.

  17. 5

    The information provided—namely that nitric oxide should be discontinued for patients with left ventricular dysfunction upon pulmonary edema—was too small of an advance over the prior art to render the claim patentable.

    That wasn’t the holding, and I’d expect anon to be jumping all over you if it were.

    1. 5.1

      Professor Collins has a bad habit of OVER-thinking this topic and making a mess of things by trying to shoehorn all types of “semantic theory” into what is in reality a VERY EASY concept to understand.

      I tend not to get too excited over his stuff, and perhaps the most unfortunate aspect is that those who are only too happy to NOT understand this area of patent law gulp down his schlock and pretend that they have some mighty impressive theories to explain patent law in this area.

      If I were to “jumping all over” him for anything, it would be for the misleading results of his efforts.

    2. 5.2

      RG, that was about claim 9 [the claim for which the Court did not support a rejection based on printed matter]. The actual holding was:
      “Where the level of ordinary skill in the art is high, .. and the claim applies a known solution to a known problem, it is “likely the product not of innovation but of ordinary skill and common sense.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). That is the case here. Consequently, we reverse the Board’s decision holding that claim 9 is not unpatentable as obvious.”
      The quoted paraphrase was not indicated to be the actual holding, and as can be seen it does not misrepresent the actual holding.

      1. 5.2.1

        It sure seems to me like the actual holding is that there was no advance over the prior art – the solution was already known.

        Small non-obvious acts are patentable, because the standard is non obviousness and not the magnitude of the advancement. If you go around saying the advancement is too small to be patentable anon is gonna give you a bad time.

        1. 5.2.1.1

          It also simply does not ring true to the very nature of innovation (groundbreaking innovation often takes a step back and does not even have that hackneyed “linear” advance that only the shallow look for with doling out patent protection).

  18. 4

    The Federal Circuit breaks new ground by extending the printed matter doctrine to mental activity in this manner, and Judge Newman’s concurrence argues that the extension is not proper.

    It’s clearly wrong to extend it. Whether it should be another exception is another matter.

    It’s clear what’s happening here though – this is an attempt to move Mayo into a 103 analysis because the Federal Circuit wants to dispose of things under 103 rather than 101. I’ve argued before that there’s certainly logic for simply removing ineligible subject matter from patentable weight and then performing a 103 analysis on the remainder (it is similar, but different, from directed to + conventionality under 101, though it is a lower standard). I suspect this is going to be rare case where some pro-patent person comes forward and says (to the opposite of most of their talk) “This could have been disposed of under 101, why didn’t they just do that rather than mess with 103” rather than create a 103 in-road for invalidating more patents.

    I think the correct way to argue/think about this is actually that “motivations different from the applicant’s are permissible” (as the MPEP calls it) – Under KSR something remains obvious despite the prior art having a different motivation for performing the action, and thus the determining step is an attempt to limit the following action by a particular motivation, which is just not legally relevant under KSR: A system without that particular motivation (so long as the later act is still motivated by something) renders the claimed system obvious. As someone who has seen a fair share of “determining” and “analyzing” limitations in computers, I can at least say that at the office level I have had *complete* success in getting these limitations essentially tossed out. You can’t write a particular motivation into the claims in an attempt to avoid KSR – KSR simply says the system with a different motivation renders your system obvious. Dennis calls this new ground – Maybe the nomenclature is new, but I’m not sure how much practical difference there is. It’s a rare reason for preventing weight on a limitation, not an entirely new one.

    In other words, one of skill knows that administering anything has benefits and risks. If you inform them that they are mistaken about the weight that should be placed on the benefits and risks, that may impact their analysis, but that impact is not legally cognizable under obviousness because there was a previous motivation for going forward (the benefit) and a previous motivation for not (the risk) and the distinction in motivations is irrelevant under KSR. This is distinct from a claim which actually claims a different previously-unknown critical effect, which is cognizable under KSR, but may or may not be eligible under Alice.

    1. 4.1

      “As someone who has seen a fair share of “determining” and “analyzing” limitations in computers, I can at least say that at the office level I have had *complete* success in getting these limitations essentially tossed out.”

      Could you clarify this? I could see how “determine X” and “do Y” makes “determine X, and based on X do Y” obvious under KSR. But I don’t see how you get around needing “determine X”.

      1. 4.1.1

        Could you clarify this? I could see how “determine X” and “do Y” makes “determine X, and based on X do Y” obvious under KSR. But I don’t see how you get around needing “determine X”.

        Let’s take a hypothetical disclosure/claim:

        Applicant notes that electronic devices such as servers expel heat, and that in large server farms the cooling of devices represents a non-negligible cost and design factor. Applicant recongnizes that when servers utilize nearly all of their processing power, the heat expelled by a server increases significantly. Applicant provides the following claim:

        1. A method comprising: measuring the cpu load of a server; determining that the server is overheating, wherein a server is determined to be overheating based upon the cpu load being greater than a threshold; transferring, based on the server overheating, at least one job to another server.

        Claim 1 is obvious over a reference which teaches that 1) cpu load can be measured and 2) jobs can be transferred to keep loads low in order to better absorb a future influx of jobs.

        The reason is because the “determining overheating” step is simply an attempt to write in a specific motivation for performing the transfer.

        KSR guides as follows: The Court of Appeals failed to recognize that the problem motivating the patentee may be only one of many addressed by the patent’s subject matter. The question is not whether the combination was obvious to the patentee but whether the combination was obvious to a person with ordinary skill in the art. Under the correct analysis, any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.

        The only function of the determining step is to quantify the motivation for performing the transfer that occurred for a different reason in the prior art – it is an attempt to override KSR by saying “you can only combine cpu measurement with the transferring to solve a heat problem.” Claim 1 is coextensive with “measuring cpu load, and motivated by the consideration of heat expelled by a cpu, transferring at least one job to another server.” That claim is not patentably distinct from “measuring cpu load, and transferring at least one job to another server” under KSR, because motivations different from the applicants are permissible.

        People who get too in the weeds with functional language have a lot of trouble understanding this, because they think “but there’s a calculation that hasn’t been taught.” But that calculation is nothing more than a manifestation of motivation. After running the prior art the system has a cpu measurement that leads to a transfer, and after running the claimed invention the system has a cpu measurement that leads to a transfer, and the only distinction between the two is why the transfer was made.

        This is distinct from a claim limitation that limits when a transfer is made. For example, if Claim 2 depends from Claim 1 and makes the threhsold 90% of maximum, that claim is non-obvious when 90% is evidenced in the spec as a critical inflection point, but that would require evidence that 90% is a critical value and not simply a drafting attempt to provide an even-further-limitation on motivation.

        1. 4.1.1.1

          “The only function of the determining step is to quantify the motivation for performing the transfer that occurred for a different reason in the prior art .”

          This is precisely allowable subject matter:
          35 USC 100
          (b) The term “process” means process, art, or method, and includes a new use of a known process, machine, manufacture, composition of matter, or material.

          1. 4.1.1.1.1

            What’s your point? I’m not saying it is non-eligible subject matter under 100/101, the Supreme Court is saying its not patentable under 103.

            1. 4.1.1.1.1.1

              I think his point is the same point that I suggested (but coming from a different angle).

              35 USC 100 explicitly provides for NEW patents on (related) OLD things.

              103 just does not cover as much as you (or the Supreme Court) thinks that it may cover.

              This very much has to do with the fact that 103 is not equivalent to a “piecemeal” 102.

              …as I stated: just because a piece of an item may be prior, does not necessarily make that piece “prior art.”

              His point through 35 USC 100 does not a different tact: that piece from the Legislative branch is specifically geared to something that the late Ned Heller never came around to grasping: that the “process” category is NOT merely a handmaiden of the hard goods categories – “use” and “doing” are virtuous in and of themselves and are NOT to be limited as to earning patent protection merely as some means to produce a “hard goods” artifact.

              A long as the “use” and “doing” has a utility that falls within the Useful Arts (as opposed to the Fine Arts), then that “use” and “doing” is meant to survive the (low) bar of 101.

              Far too many – including the Supreme Court – have attempted to turn that (low) bar into something else.

              (it may be worth noting that the phrase “computers are ubiquitous” is merely a modern day spin of “you need a Flash of Genius”) – something that Congress explicitly rejected in the Act of 1952.

              And stuck in the “count” filter is the following reply to your post at 5.2.1:

              Your comment is awaiting moderation.
              May 19, 2018 at 6:42 am

              It also simply does not ring true to the very nature of innovation (groundbreaking innovation often takes a step back and does not even have that hackneyed “linear” advance that only the shallow look for with doling out patent protection).

              1. 4.1.1.1.1.1.1

                His point through 35 USC 100 does not a different tact

                should read:

                His point through 35 USC 100 does have a different tact”

              2. 4.1.1.1.1.1.2

                There is no tension. As both I and you have pointed out, removing the motivation limitation is not the same thing as automatically declaring an old process obvious such that there is never a patentable old process; there are additional hoops to jump through. The fact that in my example – where you’re staying in the same field of use and that field is predictable – you’re going to find obviousness does not mean that we have categorically removed “new use of old process” from patentability.

                1. removing the motivation limitation

                  You are misconstruing the limitation and attempting to play the claim dissection game (in case you were unaware of this).

        2. 4.1.1.2

          Enjoyed your example of dealing with heat problems of large server farms. They now consume enormous amounts of the worlds electrical power generation for their servers and cooling systems. Many years ago server farm owners were sent some free suggestions, and I wondered if many were ever adopted? For example, eliminating the inefficiency of millions of stacked server units each having their own inefficient ac/dc power converter and fan.

          1. 4.1.1.2.1

            They now consume enormous amounts of the worlds electrical power generation for their servers and cooling systems.

            Heat problems and energy, and all of the reality of this universe impacting things (even if “intangible” – which should not be confused with Abstract).

            A bit of a tangent, but I saw an article recently on the hidden costs of bitcoins being a very high computational load cost.

            In a further tangent, this actually feeds into Night Writer’s ongoing theme that “information processing” takes time, energy, and what-not in the reality of this universe (NONE of this is magic, and ALL of this is anchored in reality as opposed to the “witchcraft” notions).

        3. 4.1.1.3

          The only function of the determining step is to quantify the motivation for performing the transfer that occurred for a different reason in the prior art

          I am not sure that this statement is correct (in and of itself).

          I “get” where you want to go, Random (close to the patent doctrine of inherency, btw), but I think that you are playing a bit too loose in getting there.

          1. 4.1.1.3.1

            Random, you may have erred by not setting out who the person having Ordinary skill in the art may be, as “the reason” may very well be beholding to different arts

            (I am not saying that definitively here such IS the case – merely pointing out where you may have “leaped without looking.”

            1. 4.1.1.3.1.1

              …or in other words, 103 art is not the same as “piecemeal” 102 art.

              This is a not-so-subtle concept that MANY examiners really struggle with.

              Especially for 103, art is NOT “prior art” just because it is art that is “prior.”

              1. 4.1.1.3.1.1.1

                Your argument is that a reference which deals with transferring jobs in a server farm is not from the same field of endeavor or does not logically commend itself to an application that deals with transferring jobs in a server farm?

                I mean, on a theoretical level it’s true you have to consider it, but it seems pretty well met at this fact pattern.

                Though with this recent case, I will note that it is not clear to me that this is a 103. I mean the way I think about it (that it’s a different motivation so it is an obvious variant) it would be a 103, but according the fed cir here there is just no patentable weight given, which means it is simply a 102, yes? I’m actually not sure of the result when the only missing limitation is not given patentable weight.

                Is a book with particular non-functional words in it anticipated by or simply rendered obvious over a book with no language in it?

                1. That is most definitely not the point I presented.

                  You have assumed the conclusion as to “field.”

                  The “field” is NOT “transferring jobs.”

                  You have “locked onto” an attribute and want to elevate the attribute to BE “the field.”

                  That’s not how it works.

                2. Is a book with particular non-functional words in it anticipated by or simply rendered obvious over a book with no language in it?

                  I vote “anticipated.”

                3. What is a book “with no language”…?

                  (for this question, I am presuming that “pictures” are a form of language, so my question is more than just “with no written words”)…

          2. 4.1.1.3.2

            I “get” where you want to go, Random (close to the patent doctrine of inherency, btw), but I think that you are playing a bit too loose in getting there.

            Kudos for thinking outside the box.

            This is where I started when I wrote my first brief on the issue, but “close” isn’t making it here – The idea being that a non-limited threshold is automatically and inherently met by measurement ignores the fact that “determining” is a non-zero action, you can measure without determining and even determine without measuring, even if you generally do not. It’s not inherency.

            1. 4.1.1.3.2.1

              It’s not inherency

              Congrats for at least recognizing that.

              Now take the next step and realize that it NOT being inherency means that your analysis is off.

    2. 4.2

      Re: “this is an attempt to move Mayo into a 103 analysis because the Federal Circuit wants to dispose of things under 103 rather than 101.” That might be a desire, but it is not possible in this case, because 101 issues cannot even be raised in an IPR.
      [Nor can it be accomplished in most D.C. cases since Sup. Ct. 101 exception unpatentable subject matter is normally decided preliminarily [as the Sup. Ct. seems to want well before a trial on 103 issues.

      1. 4.2.1

        That might be a desire, but it is not possible in this case, because 101 issues cannot even be raised in an IPR.

        It isn’t the PTAB that has that desire, its the federal circuit. The less they talk of 101 and the more they talk of 103 the happier they are. But I agree with you as to the propriety of it.

        1. 4.2.1.1

          properness* I don’t know why I said propriety.

          1. 4.2.1.1.1

            What is wrong with “propriety”? Seems fine to me either way you write the sentence.

    3. 4.3

      It’s clear what’s happening here though – this is an attempt to move Mayo into a 103 analysis because the Federal Circuit wants to dispose of things under 103 rather than 101.

      How do you figure that? Printed-matter case have always been decided on §§ 102/103 grounds, rather than on § 101 grounds. Why should we read ulterior motives into a fairly conventional printed-matter holding?

      1. 4.3.1

        Why should we read ulterior motives into a fairly conventional printed-matter holding?

        Because the reality-based world is preferred to the made-up world when it comes to moving the law and technology forward.

        Nothing about a “printed matter holding” that fails to mention subject matter eligibility is “fairly conventional” except in the sense that the CAFC is consistently unconventional and dishonest when the issue comes up.

        1. 4.3.1.1

          Because the reality-based world is preferred to the made-up world when it comes to moving the law and technology forward.

          Stultifying.

          consistently unconventional and dishonest when the issue comes up.

          BEYOND stultifying.

  19. 3

    I think the mental steps doctrine has always been viable and addresses this easily, without all the contortions. Prometheus Labs did not refuse to apply the mental steps doctrine: it just did not mention mental steps, perhaps because the Supreme Court was not aware of the pre-existing sensible doctrine that addressed the fact that, at the end of the claim, all that happens is that someone thought something about the import of a measurement they made.

    1. 3.1

      KDC: Prometheus Labs did not refuse to apply the mental steps doctrine: it just did not mention mental steps

      The words “mental steps” were not used in the case but it is not possible to read the Supreme Court opinion and come to the conclusion that the Court was unaware that the “wherein clause” of Prometheus’ claims required infringers to carry out the mental step of thinking about the correlation described in both the specification and claims (“the three steps simply tell doctors to gather data from which they may draw an inference …”; “the ‘wherein’ clauses simply tell a doctor … that he should take those laws into account when treating his patient” (i.e., think about them); “these clauses tell … [the relevant audience] to use [the correlations] … where they are relevant to their decisionmaking“; etc etc etc).

      perhaps because the Supreme Court was not aware of the pre-existing sensible doctrine

      The Supremes didn’t discuss the doctrine because the doctrine wasn’t at issue. The issue before the Supremes was about the eligibility under 101 of a claim that recited conventional data gathering steps followed by a step of “using” an allegedly new fact about a nature phenomenon to reach a decision. The Supremes said that such claims are ineligible. There has to be significantly more in such a claim besides the data gathering steps.

  20. 2

    I have long explained ALL of this in easy to understand Set Theory terms.

    We need to eliminate the muckery going on with the attempted Zombification of the Mental Steps Theory.

    (I notice that no academic has yet taken my advice to explicate exactly what that theory truly was for, and why that theory passed into the dustbins of history).

  21. 1

    Another prohibition to patenting purely mental steps is that it would be unconstitutional under the First Amendment. Thought is the core essence of speech, and Congress is prohibited from infringing free speech.
    Has anyone ever raised the First Amendment as a defense in any of these printed matter cases?

    1. 1.1

      ^ Yeah I’ve said this before. Congress lacks the ability to regulate the content of speech, therefore they lack the ability to derivatively regulate it by “passing it on” to a patentee. Saying *something* to someone while providing nitric acid is clearly obvious if not anticipated.

      This line of thinking is also great for people who think that the only prohibitions on receiving a patent are compliance with Congress’ statutory scheme, as if the power to grant a patent is not limited by other parts of the constitution or even the limitation within its own clause (to advance the useful arts).

      1. 1.1.1

        I ran a search, and I found that the ACLU filed an amicus brief in Alice.

        link to aclu.org

    2. 1.2

      I am not aware of anyone (outside of perhaps Les) that has EVER advocated for the patenting of “purely mental steps.”

      Leastwise, anyone that has ever ventured into the comments section here.

      Again, outside of Les, can you think of anyone that has ventured into that arena (I mean, besides the straw manning of Malcolm and the like).

    3. 1.3

      How is delivering a cylinder of compressed gas a purely mental step?

      1. 1.3.1

        Oh…. Yoda, Obi Wan, Luke, is that you?

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