by Dennis Crouch
Athena Diagnostics, Inc. v. Mayo Collaborative Services, LLC (Fed. Cir. 2019)
In a 7-5 decision, the Federal Circuit has denied Athena’s petition for en banc rehearing on the question of eligibility of diagnostic patents. As discussed below, the en banc denial includes eight (8) separate opinions — all of which call for Supreme Court or Congressional intervention. Judge Moore explains:
This is not a case in which the judges of this court disagree over whether diagnostic claims, like those at issue in Athena, should be eligible for patent protection. They should. None of my colleagues defend the conclusion that claims to diagnostic kits and diagnostic techniques, like those at issue, should be ineligible. The only difference among us is whether the Supreme Court’s Mayo decision requires this outcome.
Athena and its co-petitioners Oxford University and the Max-Planck institute asked the Federal Circuit to address two particular questions:
- Whether this Court now recognizes a categorical bias against patent claims to methods of diagnosis, an impermissible expansion of the Supreme Court’s narrowly defined judicial exception to patent eligible subject matter under 35 U.S.C. § 101.
- Whether courts may now exclude claim elements that they deem “conventional” in determining whether the claim is “directed to” patent eligible subject matter, or does Supreme Court authority requiring that claims be assessed “as a whole” still apply in Section 101 analysis.
Athena’s claim at issue covers a method for diagnosing neurotransmission disorders by obtaining “bodily fluid” and running a set of lab tests to identify whether the fluid contains a “MuSK” complex. I described the patent in a prior post:
In its original decision, the Federal Circuit found the claim directed to an ineligible preexisting law of nature: “the correlation between the presence of naturally-occurring MuSK autoantibodies in bodily fluid and MuSK-related neurological diseases.” The court found the additional concrete steps in the claim were all “standard techniques in the art” and thus did not rise to a patentable inventive concept.
The en banc denial includes eight (8) separate opinions
- Concurring opinion by Judge Lourie: Although we disagree with the Supreme Court, we are bound by its precedent. Thus, there is no need to revisit this case. (joined by Judges Reyna and Chen)
- Concurring opinion by Judge Hughes: “[T]his is not a problem that we can solve. As an inferior appellate court, we are bound by the Supreme Court. . . . I, for one, would welcome further explication of eligibility standards in the area of diagnostics patents.” (joined by Chief Judge Prost and Judge Taranto)
- Concurring opinion by Judge Dyk: Section 101 is necessary — sometimes it is the only defense against overbroad patents that would stifle future discoveries. However, the claims in this case are specific enough and have proven utility an provide the Supreme Court with a good vehicle “to refine the Mayo framework.” (Joined by Judge Hughes, and partially joined by Judge Chen)
- Concurring opinion by Judge Chen: Under Diehr, the claims are patent eligible — but not under Mayo.
- Dissenting opinion by Judge Moore: The claims in this
case should be held eligible, and they are distinguishable
from Mayo — especially when that case is read in light of Myriad. (joined by Judges O’Malley, Wallach, and Stoll) - Dissenting opinion by Judge Newman: Medical diagnostics methods are critically important for society and the patent system should encourage their development. Mayo does not create any anti-diagnosis rule. (joined by Judge Wallach)
- Dissenting opinion by Judge Stoll: Although the decision here is foreclosed by Mayo, the court should rehear the case because it is so important. (joined by Judge Wallach)
- Dissenting opinion by Judge O’Malley: The Supreme Court is simply wrong in its statutory interpretation of 35 U.S.C. 101.
The statements here by the judges have no direct impact on the law and are all 100% dicta. That said, this collection of opinions is designed to send a powerful signal to both the Supreme Court and – perhaps more importantly to Congress – that all members of the “high patent court” see a major problem with the law as it stands now.
Of some interest – the judges were almost uniformly all careful to focus their attention on medical diagnosis inventions — suggesting a targeted solution that would not extend to business methods and other information-based inventions.
The more that people understand that there are indeed information-based inventions, the sooner the realization will arrive that the form of consumption of the information result defines the form of utility provided by the invention. Information used by people is abstract, always and 100%. Information used by non-human actors can never be abstract.
It’s just that simple.
When we are talking about things other than information, such as mechanical or chemical structure, the consumption distinction is not pertinent to determine eligibility.
“It’s just that simple.”
And you remain that simply wrong — but hey, keep on trying to sell that snake oil, Marty.
Then, when you want to actually understand the terrain of patent law, figure out what utility entails in the patent world.
“Information used by people is abstract, always and 100%.”
Traffic lights ONLY have utility as a mechanism for conveying information to be used by people.
For obvious — and unfortunately for you — personal reasons, you have a vested interest that biases your entire approach to “understanding” the terrain upon which you would like to do battle. You remain blinded by those underlying emotions.
Doesn’t In re Gulack, 703 F.2d 1381 (Fed. Cir. 1983) render favorable judgment an invention based in information used by people?
link to patentimages.storage.googleapis.com
Among MANY others, Joachim.
Please do not make the mistake to think that Marty has any clue whatsoever in regards to actual patent law – he is merely a rather disgruntled NON-professional in regards to the patent profession.
Well, Gulack was not a statutory subject matter case. Moreover, in that case, what did the court say was required to give “patentable weight” to the content of the information?
The utility of a traffic light is a mechanical fixture. A novel traffic light is entirely patent eligible. A claim to a method of using a red light to stop traffic should be entirely ineligible.
You STILL do not “get” it, Marty.
The actual utility of the mechanical fixture ONLY comes about due to its utility as a mechanism for conveying information to be used by people.
Nothing more.
How do you make the leap that the actual utility of the mechanical fixture ONLY comes about due to its utility as a mechanism for conveying information to be used by people?
The problem being solved by a traffic light is that of putting an illumination source in the view of a driver. The patent system is not concerned with the ultimate use of the fixture-only that it is new and in some way useful.
The traffic light is rightly subject to a patent. Stopping when you see red absolutely should NOT be subject to a patent.
How do you NOT make that “leap?”
Seriously.
Because there must be a non-obvious relationship between the printed matter and the substrate. Try to keep up.
Wrong – as usual, my shifting historical pseudonym friend.
I love how you want me to keep up when you are so far behind.
So what would a patent attorney say about what the law requires about the relationship between the printed matter and the substrate?
You have no response, Green anon, my shiftless snowflake friend? The PTO has a registry of patent attorneys that you may consult. So, . . . bye.
No instant reply, so you want to run away, my shifty historical pseudonym friend?
Patent law requires a functional relationship between the printed matter and the substrate.
You reference a registry for me to consult when it is beyond clear that YOU are the one that needs help.
That Accuse Others meme does not work for Malcolm — why in the world would you think it would work for a Malcolm bootlicking lackey like you?
Since you waited less than an hour, at it has been more than seven now, are you “seven times as bad”….?
[T]hat you don’t concede it doesn’t make it any less absurd…
Incidentally, our disagreement here is cheap. Whether or not Congress can (within the bounds of its constitutionally limited powers) grant a patent on the exploitation of a newly discovered oil deposit, such a thing is not at all likely in either your lifetime or mine. We can each of us confidently assert the outcome of constitutional challenge to such a statute, secure in the knowledge that neither of us will ever have to face the humiliation of being proven wrong.
By contrast, the bill moving through the committee process in both the House and Senate right now to restore patent eligibility to diagnostic medical processes stands a very good chance of being passed into law. In that respect, we will each of us stand a good chance to see our respective legal theories put to the test in the SCotUS. I am already on record as contending that such a law will pass constitutional challenge, and you are on record that it will not. May the best argument prevail, as it were. I promise to concede gracefully if I am proven wrong.
There is no “categorical bias” against claims which include a diagnostic step. On the other hand, there is a serious Constitutional problem (not to mention a “greedy patent crack smoking @-h0le problem) with patent claims which turn me into a infringer because I happen to think about the meaning of data collected using a prior art method (and it’s that problem which gave rise to the judicial exceptions in the first place).
Dennis, would you care to recite again for your educated readers the facts in Mayo v. Prometheus which led to that holding, which will never be reversed (or if it will be reversed, it will be immediately reinstated again unless, of course, we want to rip up the Constitution in the interests of funneling more wealth and power into the hands of the already wealthy and powerful). You say that you can’t do that because it would run against your own “bias” and also the conflict of interest that permeates this blog? Fine. I’ll do it.
The facts in Prometheus v. Mayo were that Prometheus claimed a method that recited (1) an admitted prior art data gathering step and (2) a step of “determining” (i.e., thinking about) the implications of that data for an admittedly existing treatment regimen (a regimen which included in the art the flexibility to raise and lower the drug for various reasons). In other words, the “invention” in Prometheus v. Mayo was a correlation, i.e., a fact which — by itself — is ineligible for patent protection in every patent system on the planet, including the US.
Prometheus’ theory of infringement was that (1) Mayo was using the prior art data gathering step (something anybody on earth was permitted to do) and (2) Mayo knew about the correlation and was using that knowledge to adjust treatment of patients. Critically, Prometheus testified that infringement of their claim required no more than obtaining the data and thinking about it. The treatment regimen did not need to be changed in any manner.
The Supreme Court correctly held, 9-0, that Prometheus’ claim was ineligible because it impermissibly protected a particular flavor of abstraction, i.e., a correlation. Limiting that protection to prior art context (e.g., a hospital where data is collected using prior art methods) does not cure the problem. What would cure the problem, the Supreme Court wisely observed, was the recitation in the claim of some otherwise eligible step that was itself inventive (i.e., not just some prior art data gathering step). Again, nothing “confusing” about any of this.
Now, Dennis Crouch, Mr. Bigshot Patent Professor, please tell everyone specifically what aspect of the Supreme Court’s decision was incorrect, in your opinion. Use your words. Don’t be a sniveling simpering coward like your (equally conflicted) and clueless little acolyte Greg DeL. Step up and tell everyone your personal opinion about the incorrect reasoning in Prometheus. Let’s hear it.
Reminder: the issue we are discussing does not disappear if section 101 is changed (disastrously) to prevent the public, Examiners, attorneys and judges from using basic logic to understand what is being protected by a patent claim. It will keep popping up. It will pop up in 103, or 112, or under “utility” or under “technology”. So just grow up, Dennis Crouch, and deal with it like a grown up. What the h-e-ll is the matter with you anyway?
Mayo v. Prometheus was an outrag eous decision. The Prometheus claims specify a new use of a known (already patented) process and are thus self-evidently patent-eligible.
The new use is achieved by combining the known process with well-understood, routine, conventional activity (I prefer praxis) of adjusting dose to patient response. Combining a known medical treatment with medical praxis is inherently obvious.
Thus while the Prometheus claims are obviously patent-eligible, they are also obviously unpatentable.
Mayo v. Prometheus is inconsistent with all legal decisions before it. It represents worst of legally inconsistent reasoning. It breaks the US patent system. All sitting Justices that concurred in this decision should resign.
I discuss in more detail in Preface: Fixing § 101 Requires Fixing § 100.
Spot-on “Penguin Logic” that describes Malcolm’s own statements as to why he feels that he can rant about anything political on a patent law blog.
“So just grow up, Dennis Crouch, and deal with it like a grown up.”
Because Malcolm is the epitome of dealing with things like a “grown up.”
I’m moving this up to the top because Greg DeLaxxus has been hitting the patent crack pipe really really hard lately and RG did a great job of shining the spotlight on the smoking crater that used to Greg’s brain (it was never that large to begin with but it sure in heck hasn’t grown):
Greg: I know that you think that you have hit upon a really wicked reductio ad absurdum, but as I have already explained at least a dozen times now, I just do not concede that there is an aburdity here.
I know, but the fact that you don’t concede it doesn’t make it any less absurd, which is the point of repeating the attack every time you repeat your arguments about the eligibility of diagnostic tests. Other readers should see that your logic inherently must accept this outcome. Just as it must accept the “reporting of a previously unknown fact is eligible for patenting despite immediately promulgating the first amendment” argument.
Nevertheless, the copyright statutes stand as a limitation on what I can do with MY laserprinter and MY CD ROM drive, and none of us blinks an eye at that limitation on private property, because we (as a society) consider the (fairly minimal) burden on private property rights to be worth the wealth of creativity that it buys us.
Incorrect. The copyright statutes stand as a limitation on *generating further* versions or copies of things that 1) someone else made and 2) you purchased from them. None of which (generation, other creation, derivation) applies in an abstraction or law of nature context. My printer combined with your story *uses* your story. My rig combined with my oil doesn’t *use* anything of yours, as you don’t own the location either.
Regardless, a printer has a use outside of printing copyrighted works. Oil does not have use outside of the ability to get it out of the ground. A copyright on a work is not a taking of my printer. A claim covering drilling for my oil is a taking of my oil. Congress lacks the ability to perform an uncompensated taking of my oil.
[MM: Also, Greg, I look forward to the inevitable ‘fair use’ exception to patent infringement on the dark day when your beloved patents on correlations (oh wait — “only” medical correlations, according to Greg! — become a reality … LOL]
Greg: It is an unavoidable truth that intellectual property stands as a (small and easily borne) limitation on rights of real property and tangible personal property.
Spoken like someone who isn’t sitting on oil that someone else stole from them.
[MM: “Spoken like a giant g@ ping @-h0le patentee or patentee’s attorney” is more like it, if you ask me]
Your counterargument here is not really an argument against patents on diagnostic medical devices, but against patents (and copyrights) tout court.
That’s a conclusory statement. You assume that congress was given a power of the scope you (not the supreme court mind you, as this article and the CAFC expressly point out, but *you*) desire, and then assert that by challenging that power I have challenged all of patent law. I have no problem with most patents. I do, however, hold the viewpoint which is entirely unsurprising to everyone but the patent bar: That Congress’ patent power is not all-encompassing. Congress simply cannot do whatever it wishes so long as an aim is to advance a science.
I do think that Congress was not granted the power to monopolize anything in any context it seems fit. If so, why call it a patent power? If so, why bother with a commerce clause? Under your view, congress can (and has) make any useful disclosure eligible for patenting. Under your view, since Congress could design any scheme it wanted, the 102/103/112 limitations are merely discretionary. Under your view, congress was granted the police power, and they have only benevolently chosen not to run roughshod over the states and our freedoms.
Reporting of a natural law is not distinguishable from reporting of any other fact. Athena did not invent the natural law, it simply disclosed what was already there. Reporting is simply not invention, and therefore places it outside of the patent power. The fact that the reporting was difficult to come by doesn’t make it inventive, as Woodward and Bernstein were not inventors. The fact that it can be used by an art does not make it inventive, as virtually every dissemination of information can be used in an art in some way. You confuse “invention” with “publication.”
Congress has ample means to encourage publication of fact, but the full sweep of the patent monopoly is not one of them. The fact is unpatentable, and the diagnosis once the fact is known is noninventive. There is no invention. Again, the same would be true of Sequenom or drilling for oil or anything else – Congress could incentivize a fact finding mission, but not through a claim which has the effect of performing a taking on a private good.
[MM: All Greg did there was to adopt the classic patent maximalist script: “If you don’t like my favorite kind of patent, then you are just anti-patent or anti-technology.” This is the argument of kindergartner who has run up against the wall and is licking the bricks with his tongue. And that’s where Greg and his fellow maximalists are. And that’s where their representatives in Congress are going to be if they pass the law that Greg wants them to pass. And that’s not a good luck. Of course, all bets are off if Greg is in favor of some authoritarian utopia where Greg and his fellow patent lawyers get to pass whatever self-serving pocket-lining laws they want and the rest of us just to have to grovel before them. Only Greg knows the truth about that. As I’ve said before, life is about choices. Increasingly people (like Greg, and like Dennis) are making some incredible sh–ty ones. But who knows what kind of pressure they are under? It’s really, really tough being a white guy in the US these days, or so I am told by white guys on the Internet.]
“It’s really, really tough being a white guy in the US these days, or so I am told by white guys on the Internet.]”
What the “F” does “white” have to do with ANYTHING here in regards to patent law?
Nearing 14 and a half years of this blight….
“The only difference among us is whether the Supreme Court’s Mayo decision requires this outcome.”
The Supreme Court has denied 40+ section 101 cert petitions. Come on CAFC, grow some guts. They won’t question you. In fact, follow the lead of the Supreme Court and bend the law to the ends prefer.
…
Kind of exemplifies WHY Common Law law writing for the expressly (Constitutionally expressed at that) statutory law is all “Fed up” because of the Supreme Court.
Setting aside the 40+ correctly denied cert petitions filed on behalf of some of the absolute worst junk patents ever granted by any patent system in the history of the universe, let’s take a look at the actual issues in this case:
In its original decision, the Federal Circuit found the claim directed to an ineligible preexisting law of nature: “the correlation between the presence of naturally-occurring MuSK autoantibodies in bodily fluid and MuSK-related neurological diseases.” The court found the additional concrete steps in the claim were all “standard techniques in the art” and thus did not rise to a patentable inventive concept.
The critical question is: were the recited methods/compositions for detecting “MuSK autoantibodies in bodily fluid” in the prior art? i.e., do the claims recite, say, a newly described monoclonal antibody or a non-obvious series of steps for that purpose? This is not a “confusing” analysis. This sort of question is not alien to our patent jurisprudence. If the answer is yes, then the claim is eligible.
If the answer is no, then we have a problem. The reason for the problem is two-fold. First, if detection of “MuSK autoantibodies” is in the prior art, then it’s not permissible (under the First Amendment to the Constitution) to further protect steps of thinking or communicating some new meaning for the collected data. Second, if the steps for detecting “MuSK autoantibodies” are generic prior art detection steps without the recitation of new structure, then we have the additional problem of tying up useful tools and basic scientific facts in patent claims merely by reciting some naturally occurring phenomenon that the tools were designed to detect. For example (to take one of Breyer’s examples), using a ruler to measure your fingernail could turn into a liability (for everyone!) if the length of your fingernail can be correlated with a disease, or using some other standard method (an existing home kit, for instance) to detect/measure the level of some “newly discovered” polysaccharide floating in your blood.
For the kindergartners out there, you must remember and digest the fact that it’s not this claim in particular that presents the major problem for the patent system or the public. It’s the existence of a zillion other claims, protecting a zillion other correlations and a zillion other methods of “use the prior art to detect this new thing” patent claims that are inevitably going to be filed and inevitably going to be owned by rich, powerful interests who will be mostly immune (or defended against) the consequences and costs of these patent claims. It’s the public who is going to suffer the consequences. That includes the families and friends of patent attorneys (like me), although sometimes it seems like a lot of patent attorneys don’t have any friends without a lot of money.
Your mouthing of a First Amendment argument is NOT complete. It is NOT cogent. ALL that you do with this bland repetition is show that you just don’t understand First Amendment law (in addition to you lack of actual understanding of patent law).
Your “angst” about the “rich and powerful” merely shows your cognitive dissonance. I suggest that you get into a field in which you can believe in the intrinsic worth of the work product that you (allegedly) produce — regardless of any characteristics of the people that you may produce that product for.
And I would yet again also note the dichotomy that for ALL of your whining about “rich and powerful,” the form of innovation that MOST upsets you is also the form most easily accessed by the OPPOSITE of the “rich and powerful.” You have never explained that incongruence.
Someday a group of courageous people will gather to admit that the Sup. Crt. made substantial errors in its reasoning when it created Alice and drug her through a Myriad of Mayo. The fairy tale reasoning in all three decisions left so much room for the imagination of future storytellers that believe(d) the mythical logic. Congress, legislate! Sup. Crt., don’t! Fellow patent practitioners, don’t help create poop jurisprudence merely because it serves your immediate interests.
OMG. THIS! I touched the Mayo case back in the day when I worked at Fish. I didn’t have any background on what was going on, but I was asked to do some research. It turns out that my research results didn’t jive with what they wanted the decision to be, so they ignored it and proceeded to shoot us ALL in the foot by pursuing that nonsense. In fact, I would hazard to say that Mayo pretty much invalidated 90% of Mayo’s own patents. Completely, and literally, facetious.
“Of some interest – the judges were almost uniformly all careful to focus their attention on medical diagnosis inventions — suggesting a targeted solution that would not extend to business methods and other information-based inventions.”
“almost uniformly all careful”, please 🙂
Alice was not new 101 law, it was an application of Mayo. A targeted solution to Mayo will impact Alice. The piecemeal analysis of Mayo needs to go.
And, check out the cases cited in EPG as to what is “information”. There’s inadequate support in those cases for the proposition that sensor output is merely “information”. Is “image” processing tech ineligible as “information-based”? Do MRI, CT, PET, ultrasound, seismology, LIDAR, electron microscopy, visible light imaging . . . merely generate “information”? Were the “discoveries” underlying the Nobel Prizes for CT (Cormack/Hounsfield) and MRI (Lauterbur/Mansfield) “judicial exceptions”. And, why is Damadian missing from the MRI Nobel? Because he enforced his patent claims, which today would not exist because they would be ineligible under Mayo.
Hard to believe that a “targeted solution” to Mayo would not extend to other types of medical diagnostics and the so-called “information-based inventions”. But, today, SV gets what it wants, so expect the absurd.
There’s very little overlap between Nobel prizes and patents.
Re: “There’s very little overlap between Nobel prizes and patents.”
And how! I worked on part of a strange unsought application v. patent interference declared sua sponte by the PTO some years ago on C60, aka “Buckyballs,” between two sets of inventors none of whom were among the Nobel Prize winners for discovering/isolating it!
Actually, the two may well be closer than a first glance would make it appear (emphasis added):
“Nobel sought to reward “those who, during the preceding year, shall have conferred the greatest benefit on mankind”. One prize, he stated, should be given “to the person who shall have made the most important ‘discovery’ or ‘invention’ within the field of physics”.”
From: link to en.wikipedia.org
While certainly, the two items are clearly separate from each other and one is law while the other is a private set-up, the view of “very little overlap” is simply not so. There is a critical overlap at the core.
Which (humorously) shows that yet again, my ever-shifting historical pseudonym friend has been lazy in stating an “historical fact,” and gets things wrong.
I do wish that in this instance that he would have at least tried to be a little creative and used the moniker “A. Nobel”.
Wikipedia? Even the PTO does not accept that as authority.
Feel free to supplement with a countervailing view.
Blue anon, my ever-shiftless snowflake friend, I was talking to Green anon.
The mindless Accuse Others ad hominem tactic is a mere
F
A
I
L
As noted: feel free to provide a countervailing attribution of your choice (rather than the obvious attempt at distraction)
IF you don’t like the wiki (and are too lazy to do anything but mindlessly snipe), you may try this:
“Objects of the Foundation
§ 1.
The Nobel Foundation is established under the terms of the will of the engineer Dr. Alfred Bernhard Nobel, drawn up on 27 November 1895 which in its relevant parts states:
“The whole of my remaining realisable estate shall be dealt with in the following way: the capital, invested in safe securities by my executors, shall constitute a fund, the interest on which shall be annually distributed in the form of prizes to those who, during the preceding year, shall have conferred the greatest benefit to mankind. The said interest shall be divided into five equal parts, which shall be apportioned as follows: one part to the person who shall have made the most important discovery or invention within the field of physics; one part to the person who shall have made the most important chemical discovery or improvement; one part to the person who shall have made the most important discovery within the domain of physiology or medicine; one part to the person who shall have produced in the field of literature the most outstanding work in an ideal direction; and one part to the person who shall have done the most or the best work for fraternity between nations, for the abolition or reduction of standing armies and for the holding and promotion of peace congresses. The prize for physics and chemistry shall be awarded by the Swedish Academy of Sciences; that for physiological or medical works by Karolinska Institutet in Stockholm; that for literature by the Academy in Stockholm; and that for champions of peace by a committee of five persons to be elected by the Norwegian Storting. It is my express wish that in awarding the prizes no consideration whatever shall be given to the nationality of the candidates, but that the most worthy shall receive the prize, whether he be a Scandinavian or not.”
From: link to nobelprize.org
I see my Malcolm wanna-be has run away from the exposure here and jumped to a new thread in an attempt to snipe mindlessly…
So Blue anon can cut and paste from a website. Attaboy, Blue anon! Is there anything else?
From you – perhaps an apology.
Or do you (somehow) NOT get the point here?
I know it would be useless to ask what you think your point is, so . . . Bye.
LOL – you are kidding, right?
You just got faced, bit time, and want to pretend that you are not an @$$?
Too funny.
One could certainly argue that Schockley received the Nobel Prize both for the invention of the junction transistor and also for the elucidation of the solid-state physical principles that enabled this type of transistor to work and to function better than earlier types of transistors. (Lilienfeld patent developed the Field-Effect Transistor (FET) in the 1920s.)
And, check out the cases cited in EPG as to what is “information”. There’s inadequate support in those cases for the proposition that sensor output is merely “information”. Is “image” processing tech ineligible as “information-based”? Do MRI, CT, PET, ultrasound, seismology, LIDAR, electron microscopy, visible light imaging . . . merely generate “information”?
I think you misread sensor cases. The sensor is an eligible apparatus in its creation. Once that sensor is created, using the sensor to generate the information as it originally did doesn’t re-impart eligibility, it becomes part of the conventional subject matter under the second step.
By analogy, an oil rig is eligible for patenting, but telling a world knowledgeable in oil rigs to explore for oil at a particular place (a natural fact) is not eligible. That’s because the effort is not to claim a new machine (as the oil rig preexisted) or even an improved machine (as the oil rig is unchanged) but is an effort to claim *the oil* out from under the person who owns the land. The applicant didn’t invent the rig, nor the oil, so he isn’t an inventor.
Similarly, a new diagnostic tool is eligible. An old diagnostic tool simply pointed at a particular spot due to a natural fact is not, as the applicant invented neither the tool nor the natural fact which controls its usage.
All fine and good, Random, but is exploring for oil comparable with exploring for disease? I mean, is not the “correlation” that is revealed to the public in the patent application not only a valuable, new, useful and non-obvious contribution to the field but also, in reality, indeed a new diagnostic “tool”?
Okay so now information is a “useful tool” according to some European hack and therefore must be eligible for patenting.
LOL
I mean, is not the “correlation” that is revealed to the public in the patent application not only a valuable, new, useful and non-obvious contribution to the field but also, in reality, indeed a new diagnostic “tool”?
No. It is a statement of fact that this person who disclosed it did not invent. If I look in a telescope and see a planet that nobody else has seen, I don’t *own* that planet just because I disseminate information about its existence. For that matter, I don’t get to re-patent a telescope so long as it looks at my previously unknown planet. Similarly, if I report an event occurring I don’t *own* the event, or the fact that it occurred, or the ability to disseminate information about it. I can only invent what I create.
This question sounds in the same singlemindedness that Greg (and some members of the CAFC here) likes to show – Don’t confuse the fact that we would like something to occur with the notion that *the patent power* is the mechanism by which it can occur. Congress has a general welfare tax and spend power. It can certainly promote (and this is the correct characterization of what is being done here) a fact-finding mission, just as the Queen could finance Columbus’ voyage to discover the new world. It simply can’t reward the fact finding mission with a patent monopolizing obvious outcomes resulting from knowing the fact.
I don’t suggest that the research (which is a scientific-sounding way of saying “fact finding” when the effort is to determine a scientific truth rather than create a new machine) that took place here isn’t valuable or worthy of encouragement. I simply dispute that that fact (which was not invented by the applicant) combined with obvious following acts (as everyone would know how to diagnose once the natural law is known) is something that can be the subject of a patent award. It is not a new invention, as there is nothing inventive beyond the disclosure of the fact.
Random, I am grateful that you engage with the substance of my viewpoint, rather than dismissing it as nothing more than an unwaranted assertion that information, as such, should be patentable.
I envisage a claim, not to “information” or to a correlation but, rather, to a method of diagnosing the presence of disease condition X comprising the step of (method steps inspired by the discovered correlation).
You tell me that such subject matter ought to be dismissed as obvious. For the reasons I have already given, I continue to resist swallowing this assertion.
You tell me that you are not suggesting that the research into diagnosing disease is not deserving of encouragement but that, I think, is belied by your negative view of the eligibility of claims to such methods of diagnosis.
“rather than dismissing it as nothing more than an unwaranted assertion that information, as such, should be patentable.”
That’s exactly the bottom line here, though, MaxDrei.
That IS the “belied by your negative view of the eligibility of claims to such methods of diagnosis.”
Much like Greg, your coddling of Random’s nonsense is NOT helpful.
Greg… confuse[s] the fact that we would like something to occur with the notion that *the patent power* is the mechanism by which it can occur.
Hm, I plead innocent here. I do not think that the patent act is a particularly useful tool for breaking up tech monopolies, or lowering drug prices, or defending the U.S. against cyberattacks. While we are at it, I doubt that there is much that could be done with the patent act to reduce the incidence of domestic abuse, or to increase standardized test scores in rural zip codes, or to prevent unauthorized crossing of our southern border (worthy though all of those outcomes might be).
There are all sorts of things that the granting or denying of patents will not much serve to improve. One thing that the granting or denying of patents can serve to ameliorate or deteriorate is R&D investments. I really do stand by that assertion, and I have not seen anything up or down this thread that makes me feel less confident in the assertion. If we want more capital invested in the discovery of useful correlations between biomarkers and human health outcomes, then we would do well to grant patents—not on the markers themselves—for useful processes that employ these to-be-discovered correlations to guide medical decision making.
“ it becomes part of the conventional subject matter under the second step.”
This statement on its own is flat out wrong.
The courts have been more than clear that “conventional” requires MORE than merely a 102 or even a 103 type of foundation.
See your Berkheimer Memorandum.
(I can easily imagine that Random is one of those examiners that STILL gets the application of that memorandum wrong all the time)
Also (and pertinent here too) is 35 USC 100(b) and the difference in claiming an item and a method.
Also (and pertinent here too) is both 35 USC 100(a) and 35 USC 101, in which Congress is quite clear that patents are NOT limited to only “inventions,” but are fully intended to cover BOTH inventions and discoveries. (and this, regardless of any “broken scoreboard” of the Supreme Court — on this point, see the amicus writings of Sherry Knowles; for example: link to ipwatchdog.com ).
The courts have been more than clear that “conventional” requires MORE than merely a 102 or even a 103 type of foundation. See your Berkheimer Memorandum.
I acknowledge that there is a legal grey area when two people invent the same thing within a short period of time (i.e. Person A invents a sensor and shortly thereafter Person B, not knowing of A, believes to invent a sensor + other subject matter). But that is not the situation being posited here. Here the situation being posited is that B knows he didn’t invent the sensor, as he is using someone else’s sensor and admits so. That is conventional subject matter. The Berkheimer memo explicitly agrees with me on this, as it says that the test for conventionality is the same test for being so well known it need not be described in detail for 112a purposes.
In short – if you believe you invented a sensor and describe and enable the sensor with particularity, it may be, based on context, sufficient to challenge a label of “conventional.” But if your specification outright says that you don’t need to teach how to make a sensor because the art knows of the sensor, that sensor is conventional.
if your specification outright says that you don’t need to teach how to make a sensor because the art knows of the sensor, that sensor is conventional.
What if instead you only cite to the patent publication that was published the day or two before you file your application (“the zickle-type sensor disclosed in US Pub ###”)? Legally, “the art knows of the sensor.” In fact, you’ve just demonstrated that by citing the publication. But it’s definitely not a “conventional” sensor, in the sense that Bildo understands the term.
I’m asking this question rhetorically, of course, simply to illustrate the absurdity of Bildo’s proposition. He’s not the only one who believes the proposition, sadly. But it is a doomed and intellectually bankrupt proposition within the context of our patent system. Hilarious how the human mind works (or, Bildo’s case, doesn’t work).
“Legally, “the art knows of the sensor.” ”
LOL – Malcolm, do you realize that you just stepped directly into the error as the COURT has laid out (and then doubled down by trying to state this as merely being something that I personally ‘have a sense of”)…?
This is NOT “my” proposition.
The plain matter is that I speak of the situation as it is BECAUSE it is the situation, and NOT (and here, a bit of YOUR Accuse Others meme comes through), because that is what I merely wish the situation to be.
That you then lay into mindless ad hominem is just Malcolm being Malcolm.
“I acknowledge that there is a legal grey area when two people invent the same thing within a short period of time”
Your “acknowledgement” has NOTHING to do with the point that I present.
Plain, simple, and direct: you attempt to use a 102 (or even a 103) reference as establishing — all on its own — a state of conventionality.
That is simple legal error.
“Using someone else’s sensor” is NOT conventionality. The Berkheimer memo does NOT explicitly agree with you on this.
Further, the Berkheimer memorandum is NOT as you want to indicate for ordered combinations***. You want to jump from a single piece part of a claim, apply Berkheimer to each piece and then merely “sum it all up” that (for the sake of argument) each piece being conventional somehow mandates that the ordered combination is ALSO conventional.
And this is simply not so.
The Berkheimer memorandum is NOT perfect: it allows the examiner to play this game (a trap for the unwary) and let’s the examiner make a bald conclusory statement, that — when challenged — MUST be met with the proper APA showing of evidentiary support for what should have been provided in the first instance.
*** and let’s not forget that ordered combination may OFTEN take advantage of the provision of 35 USC 100(b).
There can be no information without matter. Information is just a measure of a state of matter, like temperature or entropy.
HOPB,
I sense a degree of “prominence” in your statement (that you may not be intending).
Just as much as there can be no information without matter, there can be no matter without information.
THIS is the more nuanced understanding of the underlying actuality of the universe.
The paper entitled Existence of an information unit as a postulate of quantum theory is addressing information of a different sort, but in a nutshell physicists are beginning to assert that information should not be considered the barely noticed step-child of real-ness but is rather a fundamental component of physical reality.
From pg. 4 of Judge Dyk’s concurrence:
Seriously?!? The mind simply reels. Does Judge Dyk legitimately think that a claim to the bare idea of measuring a biomarker that correlates to a disease state would survive a written description challenge? I would like to see him write the claim that he thinks would have stood up under §112 challenge back in the time period he hypothesizes. If anyone thinks that Judge Dyk is on solid ground here, I would invite that person to write such a claim, to show us how it is done.
Imagine the following: “a method of diagnosing a disorder in a subject, the method comprising measuring the mRNA expression of a gene in a tissue sample taken from the subject, wherein the the mRNA expression of the gene correlates with the presence of the disorder.” This is clearly not sustainable on either enablement or written description grounds.
This is nothing more than an invitation to a research project (identify some genetic correlates to various diseases!). No one could argue with a straight face that it would not have required undue experimentation to practice the full scope of this claim (any marker(!), correlated to any disease(!)) back at the time that gene/disease correlations were a totally new discovery. Similarly, there is no way that the author of this application could put in a “representative” number of examples that would show the possession of the full scope of this claim at the time of filing (which, per Judge Dyk’s hypo has to have been in the past, back when this was the first such gene/disease correlation technology ever).
In other words—contrary to Judge Dyk’s far-too-confident assertion—§112 is easily capable of tanking such a claim. It is not nearly the case—as Judge Dyk contends—that §101 is the only statutory section capable of dealing with the (real and legitimate) problem that he is discussing. This is a problem that is not only capable of a §112 solution, but that would be much better handled by §112 (because the penalty imposed has much more to do with a failure of written disclosure relative to claim scope than with the statutory categories or utility).
>>The only barrier to such broad patent claiming is § 101.
The other thing is that a broad claim can be invalidated if there are new non-obvious embodiments that are within the scope of the claim, but were not enabled by the specification. LazardTech.
That’s really only true for a lawsuit. You can’t expect an examiner to find non-enabled non-obvious embodiments in order to give an enablement rejection. So this doesn’t stop anyone from getting a claim and running around with it for a bit.
Ben??? If the embodiments existed at the time of examination, then the claims would be anticipated. Sheesh.
Ah, I really was rather unclear there. I meant “find” in the sense of “discover” rather than the sense of “produce in a search”. I should have said “identify” rather than find. You can’t expect examiners to identify non-obvious, non-enabled embodiments.
Ben >>You can’t expect examiners to identify non-obvious, non-enabled embodiments.
And not invented yet and maybe never will be invented. And maybe they don’t exist. That is the whole point. The point is that if you go for too broad a scope of a claim then you risk losing the claim from new non-obvious solutions that are within the scope of your claims.
That is all that is needed to police claims. Claims should be given the scope of enablement.
My point is that this does not prevent bad claims from being issued, and only stops bad claims from being enforced. As long as we’re supposed to have an examination system rather than a registry system, this is a problem.
And my examples illustrate that these are not bad claims.
He’s beyond help Ben. He truly believes in overbreadth. In his mind the only check on claim scope at filing is 103.
And maybe they don’t exist. That is the whole point.
He’s so close to an actual legal thought here – “and maybe they do.” And the question is – to whom should the law allocate the burden of identifying if the scope is improperly large: The applicant, seeking an (possibly unjust) enrichment and is his own scrivener, or the public?
The point is that if you go for too broad a scope of a claim then you risk losing the claim from new non-obvious solutions that are within the scope of your claims.
No I think the point is that if you go for too broad of a scope you shouldn’t get anything, rather than the public having to suffer a chilling effect on R&D.
If someone invents the bow, they don’t enable or possess the full scope of machines that fire projectiles. That’s true before the gun is invented, after the gun is invented but is not public, and after the gun is made public. If someone does brave an infringement action by inventing and marketing the gun, the fact that proof of the overbreadth is more readily available doesn’t change the fact that the claims were flawed at their inception. They were flawed because the scope of the function is not the scope of the means – after all that was the purpose of claiming functionally. That flaw should be dealt with at the claim’s inception, not after the patent has issued, has a clear and convincing standard attached to it, and can be used to improperly and illegally threaten competition.