Athena Loses on Eligiblity – Although 12 Federal Circuit Judges Agree that Athena’s Claims Should be Eligible

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:

  1. 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.
  2. 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:

Diagnosis: Ineligible

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.

170 thoughts on “Athena Loses on Eligiblity – Although 12 Federal Circuit Judges Agree that Athena’s Claims Should be Eligible

  1. 17

    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.

    1. 17.1

      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.

    2. 17.2

      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.

        1. 17.2.1.1

          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.

        2. 17.2.1.2

          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?

      1. 17.2.2

        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.

        1. 17.2.2.1

          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.

          1. 17.2.2.1.1

            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.

              1. 17.2.2.1.1.1.1

                Because there must be a non-obvious relationship between the printed matter and the substrate. Try to keep up.

                1. Wrong – as usual, my shifting historical pseudonym friend.

                  I love how you want me to keep up when you are so far behind.

                2. So what would a patent attorney say about what the law requires about the relationship between the printed matter and the substrate?

                3. You have no response, Green anon, my shiftless snowflake friend? The PTO has a registry of patent attorneys that you may consult. So, . . . bye.

                4. 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?

                5. Since you waited less than an hour, at it has been more than seven now, are you “seven times as bad”….?

  2. 16

    [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.

  3. 15

    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?

    1. 15.1

      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.

      1. 15.1.1

        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.

    2. 15.2

      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.”

  4. 14

    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.]

    1. 14.1

      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….

  5. 13

    “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.

    1. 13.1

      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.

    2. 13.2

      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.

      1. 13.2.1

        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.

  6. 12

    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.

    1. 12.1

      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.

  7. 11

    “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.

      1. 11.1.1

        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!

      2. 11.1.2

        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”.

            1. 11.1.2.1.1.1

              Blue anon, my ever-shiftless snowflake friend, I was talking to Green anon.

              1. 11.1.2.1.1.1.1

                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)

              2. 11.1.2.1.1.1.2

                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

              3. 11.1.2.1.1.1.3

                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…

                1. So Blue anon can cut and paste from a website. Attaboy, Blue anon! Is there anything else?

                2. LOL – you are kidding, right?

                  You just got faced, bit time, and want to pretend that you are not an @$$?

                  Too funny.

        1. 11.1.2.2

          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.)

    1. 11.2

      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.

      1. 11.2.1

        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”?

        1. 11.2.1.1

          Okay so now information is a “useful tool” according to some European hack and therefore must be eligible for patenting.

          LOL

        2. 11.2.1.2

          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.

          1. 11.2.1.2.1

            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.

            1. 11.2.1.2.1.1

              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.

          2. 11.2.1.2.2

            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.

      2. 11.2.2

        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 ).

        1. 11.2.2.1

          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.

          1. 11.2.2.1.1

            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).

            1. 11.2.2.1.1.1

              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.

          2. 11.2.2.1.2

            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).

    2. 11.3

      There can be no information without matter. Information is just a measure of a state of matter, like temperature or entropy.

      1. 11.3.1

        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.

  8. 10

    From pg. 4 of Judge Dyk’s concurrence:

    A simple example in the area of diagnostic patents illustrates this point. If the first person to identify the relationship between a genetic abnormality and a disease had sought a broad patent on a method of searching for genetic abnormalities and determining their relationship to disease, the claims would have been neither anticipated nor obvious. Nor is it likely that they would they have been invalid for lack of enablement (since a representative species was disclosed) or written description (the overall conception being in the mind of the inventor). The only barrier to such broad patent claiming is § 101.

    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).

    1. 10.1

      >>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.

      1. 10.1.1

        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.

        1. 10.1.1.1

          Ben??? If the embodiments existed at the time of examination, then the claims would be anticipated. Sheesh.

          1. 10.1.1.1.1

            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.

            1. 10.1.1.1.1.1

              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.

              1. 10.1.1.1.1.1.1

                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.

                1. He’s beyond help Ben. He truly believes in overbreadth. In his mind the only check on claim scope at filing is 103.

              2. 10.1.1.1.1.1.2

                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.

                1. Random, you don’t understand patents and you don’t understand inventions.

                  >> to whom should the law allocate the burden of identifying if the scope is improperly large: <<

                  Apparently your game is to not read what I wrote. The whole point and this is expressly discussed in LazardTech is that there is no way of knowing at the time of examination what the scope should be. These other non-obvious embodiments haven't been invented yet and may never be invented.

                  The whole point is that the patentee risks having their claims invalidated if they are overly broad as then other non-obvious embodiments may be invented within their claim scope. This may invalidate the claims.

                  Your argument is that somehow you know an overly broad claim at examination 'cause you feel it. Not law. And it does not capture what innovation is all about.

                  Try to remember that you are talking to people that really work with real inventors and real products.

                2. Please Pardon the Potential (re)Post due to the count filter:

                  What Random ALSO misses is that a perfectly good patent may well have improvement patents separately made (by the inventor AND by others) that DO NOT “wreck” the first patent.

                  Just because a later patent may come along and “fall within” some possibly wide scope of a first patent (while being patentably distinct in other regards), does NOT either “chill” anything, or wreck that first patent.

                  Random absolutely misses the fact that patents having a “Stick” effect DOES promote innovation, and ONLY thinks that the “keep out” somehow MUST HARM innovation.

                  The fact of the matter on this point is that Random is simply wrong (as is, the Supreme Court in their own officious manner of imposing their own philosophical viewpoint on the statutory law). There exists a simple adage that provides this point: “Necessity is the mother of invention.”

                  When you make it “necessary” for a person to either pay up or invent around a given “keep out” item, man’s ingenuity is unleashed.

                  Random (and the Supreme Court) would rather turn this deliberate aspect of patents into some sort of “no patent for you” denial of patent rights at the very point of WHY patents work (in at least one regard of why patents work).

                  This point has been provided many times now, and Random has never been inte11ectually honest enough to acknowledge the point.

                3. The whole point and this is expressly discussed in LazardTech is that there is no way of knowing at the time of examination what the scope should be.

                  That’s simply not true. As Lizardtech points out, if you invent a particular fuel efficient engine you can claim your particular fuel efficient engine. You can’t claim all possible fuel efficient engines.

                  These other non-obvious embodiments haven’t been invented yet and may never be invented.

                  Then your scope can’t cover them. You can’t possess what hasn’t been invented.

                  And that’s the whole point. You simply can’t do what you want to do – the whole reason you want to use functional language is because you want the claim to include embodiments that you haven’t thought about. But “I haven’t thought about this” is by itself, ipso facto, sufficient to deny a claim.

                  If I disclose means A, and means A has equivalents B, C and D, and further would allow a hypothetical POSITA to come up with different embodiment E (but I personally haven’t thought of E) and further there is an entirely different non-obvious means F which also achieves the function, I can’t write a claim scope that encompasses E or F. Any claim to E or F is invalid. And it’s invalid from the moment the claim is proposed, even if the Office lacks evidence to prove the existence of F, or fails to find art or make a WD rejection on E. The only thing you can claim is the disclosed means and their equivalents.

                  If your client is (to put it bluntly) too dumb to see the full range of what is obvious, they still don’t get to claim an obvious embodiment, because WD requires *the applicant* to possess the scope, not the POSITA. If your client doesn’t like their scope because they fear it might be easily designed around, that fear does not give them license to claim some unknown scope of a functional result.

                  The whole point is that the patentee risks having their claims invalidated if they are overly broad as then other non-obvious embodiments may be invented within their claim scope. This may invalidate the claims.

                  I understand your argument, you are just wrong temporally. It is not evidence of some non-obvious embodiment lying within the scope that renders the claim invalid. That evidence is simply the best proof. The claim does not start out valid and then become invalid once someone invents and publishes a non-obvious embodiment. The claim was invalid at the filing because *the specification failed to eliminate the possibility that a non-obvious embodiment could be made in the future.* The existence of the gun is *the best proof* that a functional claim to “a machine that fires projectiles” supported by the specification disclosure of a bow is overbroad. But even prior to the gun being invented, the claim is overbroad because the bow specification fails to foreclose the eventual existence of the gun.

                  Your argument is that somehow you know an overly broad claim at examination ’cause you feel it. Not law. And it does not capture what innovation is all about.

                  Unfortunately for you this isn’t my argument, I’m just saying what the Supreme Court said in Morse, so yeah, it is law. Unless you can provide a reason as to why your disclosure fills the scope of the function, your claim to the functionality is invalid.

                  As I said – the very motivation you have for trying to do what you do is what is wrong. You want to use vague functional language specifically for the purpose of expanding the scope of the claims beyond the disclosed means. You’re not a special little snowflake here. People have done that for hundreds of years. And the courts have seen it, and they specifically deny what you are doing, specifically citing the reason you are doing it. You cannot do what you want to do. You cannot use the functional result as a means of expanding the scope of protection.

                  Either the functional scope is limited to the means disclosed in the specification (in which case you are not expanding your scope at all, so what’s the point in using the functional language) or it is broader than the means disclosed in the specification. Your inventor is not entitled to those means. Your inventor is only entitled to the means he has posited. Not what is rendered obvious by the disclosure. Not the utility of the disclosure. Not some functional description of the use of the disclosure. But what the disclosure proves the inventor posited.

                  There is no amount of legal scrivening that turns the inventor of a molehill into the inventor of a mountain. You (as the attorney) are simply not as important as you think you are. There is no trick you can employ to make a small inventor into a great inventor. You cannot claim unposited-but-made-obvious-by-the-disclosure embodiments. You cannot claim any other machine that achieves some generic functional result. You can only claim the means your inventor posited together with equivalents.

                4. posited together with equivalents.

                  For all of your ling-winded whining, this last phrase alights upon the very point that Night Writer is trying to make with you.

                  But you are SO stuck in your anti-patent mindset that you cannot see it.

                5. I understand your argument, you are just wrong temporally. It is not evidence of some non-obvious embodiment lying within the scope that renders the claim invalid. That evidence is simply the best proof. The claim does not start out valid and then become invalid once someone invents and publishes a non-obvious embodiment. The claim was invalid at the filing because *the specification failed to eliminate the possibility that a non-obvious embodiment could be made in the future.*

                  Absolute nonsense.

                  Such would eliminate improvement patents wholesale.

                6. “But “I haven’t thought about this” is by itself, ipso facto, sufficient to deny a claim.”

                  Sorry Random, perhaps that should be the state of the law, but currently that is given to applicants as a gimme (that is, the claim is not denied on such grounds). It is one of many gimmes they are given by the current state of the law.

                7. “There is no amount of legal scrivening that turns the inventor of a molehill into the inventor of a mountain. ”

                  Actually that is literally the state of the law currently. Though it only actually ends up affecting some small portion of patents any irl, through that patent’s lifetime. It is something which is objectionable to some, but currently is quite legal.

        2. 10.1.1.2

          You can’t expect an examiner to find non-enabled non-obvious embodiments in order to give an enablement rejection.

          I know that I have said this before, but I simply goggle in stupified amazement when I read this sort of thing. This is not at all how written description and enablement rejections work in the 1600s. No one in the 1600s thinks that the examiner must actually identify a non-obvious, non-enabled embodiment within the claim scope in order to make out a prima facie §112 rejection.

          If you say that this is necessary to sustain a prima facie rejection in your art unit, I take your word for it. It makes me wonder, however, why the PTO top brass allows such obviously disparate standards for §112 rejections to prevail in different art units.

          1. 10.1.1.2.1

            It makes me wonder, however, why the PTO top brass allows such obviously disparate standards for §112 rejections to prevail in different art units.

            It’s not surprising at all if you stop and think about it. The vast majority of software would-be inventions are algorithms which are 1) easily designed around and 2) the market wouldn’t punish sub-optimal options. So the vast majority of people aren’t good enough to write “the best” algorithms, which makes their claims worthless, and the few who can write the best algorithms know that people would take something that works in 95% of cases or performs 95% as well if it was free rather than license their algorithm. Consequently, if you limited software patents to what they should be – algorithms rather than functional results – it would not make financial sense to apply for a patent.

            If you couldn’t maintain a claim to the functional result a software patent would be worthless, which means *there would be no tech center* if they applied WD as in 1600. Faced with the choice of having a tech center versus not having a tech center, the office chose to have a tech center.

            Some might say that the system should not, in fact, support these useless disclosures that don’t really advance the art. Others might argue that maybe the fees for other inventions should be increased while the cost of software patents be decreased so it would make sense to apply for smaller scope patents. I’m largely ambivalent. My job is to examine patents, not wax philosophic on how closely we should hew to free market principles. If someone wants to pay the office to try and get an overbroad scope and the office wants to let them and the defendant doesn’t want to raise 112 because their company is doing the same thing, I say let everyone dance.

            1. 10.1.1.2.1.1

              Consequently, if you limited software patents to what they should be

              That you are a software patent examiner with these views IS part of the problem of the Office.

              What the “F” are you doing being an examiner?

        3. 10.1.1.3

          You can’t expect an examiner to find non-enabled non-obvious embodiments in order to give an enablement rejection.

          I cannot speak to what your supervisors require, but simply as a matter of law, you do not need to identify non-enabled, non-obvious embodiments within the claims scope in order to support an enablement rejection. Consider the recent (precedential) Enzo Life Sci v. Roche Molecular. Read it carefully, and tell me where (in the course of sustaining the enablement challenge) either the challenger or the panel actually point to an actual non-enabled embodiment.

    2. 10.2

      It is also the case that inventors should be permitted to claim what they invented. The whole notion that something is too broad because the judge “feels” that way is not law or equity. It is a croo ked judge stealing from an inventor.

    3. 10.3

      Re: “..contrary to Judge Dyk’s far-too-confident assertion—§112 is easily capable of tanking such a claim.” [For being over-broad and/or lack of specific written description.]
      If that is so easy, how come one of the very few [or maybe only?] cases in which a 112 defense other than 112(f) was successfully asserted and sustained on appeal was in University of Rochester v. G.D. Searle & Co., Inc., 375 F.3d 1303 (Fed. Cir. 2004)(denying rehearing en banc).

    4. 10.4

      I suffer from SSCD (Super Semicircular Canal Dehiscence). It is a hideous disease that affects my hearing and can cause almost continuous vertigo. It is caused by a hole in bone that is supposed to cover the semicircular canal. This hole seems to be due to a genetic malformation of the bone.

      The treatment for this disease involves drilling a hole in the head so that the middle ear hole (dehiscence) can be closed. That treatment seems almost as hideous as the disease. The data suggests that it is not permanently effective.

      When the doctors explained their understanding of the disease and I read the available literature (there is not much), I asked myself, “If this problem results from a genetic malformation, why did it not appear until I was 61 years old?”

      I realized that I was showing evidence of decreasing bone density (approximately .5″ decrease in height). I asked my doctor to order a
      bone densitometry test, which unfortunately was inconclusive and probably could not tell us much because I never had one before.

      We decided to try increasing calcium in my diet and exercises known to be helpful for building and for maintaining bone density.

      Within a month the vertigo and hearing problems disappeared.

      Could I obtain a patent for this method of treating SSCD (apparent loss of bone density in the bones associated with the middle ear)? I doubt it because I merely applied an already known method of treating general loss of bone density to a specific disease that seemed to be caused by loss of bone density.

      1. 10.4.1

        See 35 USC 100(b) (emphasis added):

        (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. 10.4.1.1

          I agree that if I applied for patent and if I claimed a known process for increasing bone density in the form of a method claim for increasing bone density to close a dehiscence in the bone atop of the superior semicircular canal, the claim would be § 101-eligible, but it would hardly pass the § 103 requirement for non-obviousness. If I were the examiner, I would certainly reject such a claim as unpatentable.

          1. 10.4.1.1.1

            Careful there, Joachim, your broad brush makes the passage in 35 USC 100(b) surplusage.

            1. 10.4.1.1.1.1

              I understand Anon’s caveat, but my experimentally identified treatment for SSCD does not seem to rise to the same level of non-obviousness as the method of treating primary dysmenorrhea by means of viagra (sildenafil citrate).

              1. 10.4.1.1.1.1.1

                You now appear to confuse “how you got there” (vis a vis the caveat/warning in 35 USC 103) with other matters.

                Be aware of (and beware of) the dichotomy of “Flash of Genius” OR “Serendipity” view. THAT view removes any amount of “teaching function” as to even having patents in the first place, as the Genius rises above any and all teaching and the Serendipity happens regardless of teaching; BOTH views dismiss having a patent system at all.

                1. The papers that discussed treatments for increasing bone density in the context of osteoporosis and of osteopenia all suggested that bone density increased generally throughout the skeleton.

                  It’s possible that I could argue around KSR, but as much as I like to dispute, winning in this particular case seems unlikely.

                2. Joachim – yet again, you are NOT applying the meaning of 35 USC 100(b).

                  It is NOT a “matter of obviousness” that the fact that an increasing of bone density increases generally throughout a body.

                  You grasp merely only a portion of 35 USC 100(b) with that statement. The rest of your statement turns that section of law into a nullity (universally so), and thus CANNOT BE CORRECT.

                3. The treatment is new in that my doctors and I used it to treat a disease to which the treatment had never been applied, but a correct understanding of Rubber-Tip Pencil Co. v. Howard, 87 U.S. 498 (1874) tells us that a new invention, which is characterized by a good idea, does not necessarily get past the requirements of § 102 and § 103.

                4. Rubber-Tip Pencil is inapposite to our discussion.

                  We are NOT talking about a “mere idea,” and we ARE talking about 35 USC 100(b).

                  Your view still makes that a nullity – and thus, cannot be correct.

                5. I perhaps incorrectly read 35 U.S. Code § 100 (b) to tell us that a process can include a new use of (one of:) a known process, a (known) machine, a (known) manufacture, a (known) composition of matter, [and] a (known) material.

                  Rubber-Tip Pencil Company v. Howard 87 U.S. 498 (1874) teaches that a new combination of two known manufactures + praxis (an engineering fit) may be neither sufficiently novel (102) nor sufficiently non-obvious (103) to be worthy of a patent.

                  My treatment for SSCD was clearly new, and discovering that an old treatment could cure SSCD was truly a case where necessity is the mother of invention.

                6. Not only would I be a tough examiner, but I am also good at arguing either side of an infringement controversy.

                  (1) Taking a general treatment that was reputed to work on all bones and

                  (2) finding that it works on the bone above the superior semicircular canal seem too close in terms of lack of novelty to Blair’s invention of joining an eraser to a pencil by drilling a hole in the eraser even if both Blair’s invention and also my invention are good ideas.

                  The treatment seems even less of invention than that of Blair, and I am not sure how I would ever sue for infringement if I were so inclined. If the treatment worked on a victim of SSCD, he would probably be able to claim that he was treating osteoporosis or osteopenia.

                7. Joachim,

                  You are not as good as you may think that you are if all you can do is repeat the point that I refuted at 9:11 am above.

                  Your view remains incorrect because that view turns 35 USC 100(b) into a nullify.

                  It is a true point that proving infringement MAY be more difficult due to using the prior known item for something other than the new use mentioned in 35 USC 100 (b), but that is a separate argument and does not preclude the patenting.

  9. 9

    It is kind of comical that the we enie judges think that they can figure out which areas of innovation should be incentivized, but it is clearly not their job to do this.

    Yet the “judges” continue making law on their or at least jones that they could make law on their own.

    We enies: not your job to assert your little opinions about information processing and how that should not be eligible but medical diagnostics should. The lot of you should be removed from the CAFC. What a shxt show.

    Bring us back Rich and he would excoriate the lot of you into behaving.

  10. 8

    As at least one of these Fed. Cir. judge’s comments seems to suggest that “the rubber meets the road” on this simple [but controversial] question: If the only novelty in the claimed diagnostic method is in having discovered a new correlation to use, aka a new “law of nature,” should that diagnostic method claim be patentable even though it is not now?

    1. 8.1

      Paul,

      I “get” the point that you seem to be making, but the question you ask breaks down into two distinct questions, based on understanding the difference between “patentable” (your question) and “patent eligible” (which distinguishes on the patent law point of 35 USC 101).

    2. 8.2

      If the only novelty in the claimed diagnostic method is in having discovered a new correlation to use, aka a new “law of nature,” should that diagnostic method claim be patentable even though it is not now?

      Two brief responses:

      1) Did you mean “it is not new”? Otherwise, I am not clear on what you are trying to ask.

      2) On the assumption that you meant “not new” (rather than “not now”), I say “yes.” The claimed invention (the diagnostic method) is new, even if the law of nature implicit in its function is not. That is to say, if I am the first person to realize that this given law of nature might be harnessed to diagnose condition [X], then it is not crazy for the patent system to award me my 20 years of statutory exclusivity for tests employing that law of nature, even if the mechanisms for measuring the correlation are old in the art, and even if the only contribution that I have made to the art is the discovery of a pre-existing but hitherto unrecognized law of nature. There are two reasons for this, one statutory, the other policy.

      On the statutory side, the §101 text says “[w]hoever invents or discovers…” (emphasis added). It is hornbook law that statutes should be construed so as to avoid treating statutory verbiage as surplus. The fact that the Congress put both “invents” and “discovers” into the statute implies that they mean to award patents for things that are not necessarily “inventions,” but are rather “discoveries.” Therefore, the best reading of the statute is to suppose that the discoverer of a hitherto unknown law of nature can obtain a patent so long as the discoverer limits the claim to useful applications of that previously unknown law.

      On the policy side, it can require intensive capital investment to discover law of nature and then recognize means of usefully employing those newly discovered law. One (not the only, but one) reason we have a patent system is to allow inventors to have a rational expectation of recouping those intensive capital investments, so that it will make rational economic sense for them to make the investments. Therefore, a patent system that does not reward such discoveries is a system that does not properly incentivize the upfront investments necessary to make those discoveries. In other words, it only makes policy sense to exclude such diagnostic technologies from patent eligibility if one thinks that it is not particularly valuable for scientists to invest the time and material resources necessary to make such discoveries. I am not aware of anyone who thinks that such investments are not worthwhile, so therefore it follows that the patent system should not exclude such diagnostic technologies from patent eligibility.

      1. 8.2.2

        Greg turns into a genius when it is time to protect his bailiwick. When it is time to protect our bailiwick, he throws us under the bus.

      2. 8.2.3

        Greg, I was quite clear that the subject correlation was newly discovered, but of course newly discovered correlations or laws of nature are inherently not new, in the normal meaning of new, they had to pre-exist in nature in order to be discoverable. [Newton did not invent gravity nor was it new.]
        Nor is this academic, since the Senate bill drafters will remove “new” from 101 without putting it into 102 or anywhere else.
        And I did mean “not now” because that was re patentability, under Mayo. As the majority of Judges here noted.
        And “not patent eligible subject matter” under 101 or other judicial exceptions can make a claim just as “unpatentable” as 102 or 103.

        1. 8.2.3.1

          I did mean “not now” because that was re patentability, under Mayo. As the majority of Judges here noted.

          Ah, thanks. I follow now. In any event, I think that my 8.2 still stands as an explanation for why I think that the claims in question should be patentable, even if they are not now in view of Mayo.

          1. 8.2.3.1.1

            Incidentally, I share your concern about removing “new” from §101. I can see the sense of it (the temptation to conflate the §101 analysis with the §102 analysis or the §103 analysis will be less if “new” is effaced from §101). If, however, Congress means to remove “new” from §101, then they also need to amend §102 to make plain that all natural laws and natural phenomena are in “public use,” such that claims to (e.g.) a newly discovered species of frog or a newly discovered enzyme in human blood are to be regarded as unpatentable for anticipation.

          2. 8.2.3.1.2

            When I read “discoveries” in the statute “laws of nature” do not come to mind. Rather, it seems to cover things such as the accidental “discovery” of the Teflon compound and its non-stick properties when their intent was to “invent” new refrigerants. See also Section 103 — “Patentability shall not be negated by the manner in which the invention was made.” A pharma example might be the “discovery” that minoxidil for hypertension worked as a treatment for male pattern baldness. Viagra? invented for hypertension and angina. Somebody later said, Eureka!

            1. 8.2.3.1.2.1

              What you have in your mind when you read is certainly not controlling.

              Why would you think that such would be?

            2. 8.2.3.1.2.2

              We have an ambiguity that pertains to English and that typically is not found in more precise less contextual languages like Latin.

              In Latin one would reveal a natural law or a natural principle in natural philosophy. In the 18th century one used phrases like philosophic law or philosophic principle just one might write about a mathematical principle because it took a while for people to grow accustomed to science as a useful art.

              Before the science of chemistry was better understood, it was not clear whether human-created compounds should be described to be invented or to be discovered — and likewise for methods of bucket chemistry and other areas of industry or of the the useful arts.

              In terms of original meaning the three judicial exceptions seem to be on the mark as long as we think in the late 18th and early 19th century.

              1. 8.2.3.1.2.2.1

                because it took a while for people to grow accustomed to science as a useful art.

                Much like it took a while for people to grow accustomed to business as a useful art, eh? (See Deming, et al.)

                (of course, the ready – and easy to understand – distinction is already available: Fine Arts and Useful Arts)

                1. Mayo v. Prometheus was a r idiculous 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 the worst of legally inconsistent reasoning. It breaks the US patent system. All sitting Justices that concurred in this m oronic decision should resign in shame.

                  I discuss in more detail in Preface: Fixing § 101 Requires Fixing § 100.

                2. The more usual ancient-through-Medieval distinction puts the trivium and the quadrivium on one side (the liberal arts including the fine arts) and architectura on the other side. The Roman definition of architectura is close to the 18th century definition of useful arts.

                  There is some crossover Brunelleschi, who was an architect devised linear perspective, which is important in art and belongs to mathematics, which is one of the quadrivium.

                  Yet the founders of the British and US patent system seem to have intended (original intent) that letters patent be granted wholly for inventions in the useful arts, which the Romans would have called architectura.

                3. Your own penguin logic applies here to your attempt to have “Roman Logic” prevail at a time when the “overlap” that you have noted was not only present, but had grown.

                  And continued to grow (hence my comment about Deming et al).

                  Another way of thinking about this is how I have pointed out that there are distinctions between:

                  1) math,
                  2) applied math, and
                  3) MathS.

                  Here you seem to struggle in that the third item, being a philosophy and dealing with BOTH of items 1) and 2) appears to have overlap, while all that that means is that the lens of philosophy does NOT adequately distinguish. There are some aspects of a “philosophy nature” dealing with “applied math” that are of themselves Useful (and rightly covered within the Useful Arts) and there are other aspects of a “philosophy nature” dealing with “math” that are NOT of themselves Useful (thus NOT rightly covered within the Useful Arts).

                  This is an instance where your penchant for dealing with the issue from a philosophic standpoint causes you to misapprehend the context of the law.

                  (I do note that this is not an error that earns the denigration that such as Malcolm earns, as your error here is an honest one)

              2. 8.2.3.1.2.2.2

                seem to be on the mark as long as we think in the late 18th and early 19th century.

                And only “seem,” as the fact of the matter is that THIS part of the law deals with innovation and the NEW and simply cannot be constrained to an artificial thinking as of the late 18th and early 19th century.

                It makes ZERO logical sense to so attempt such a crabbed view – by the very nature of the topic at hand.

                1. From the standpoint of disputation, original meaning has a lot of significance for probably at least 5 of the Justices on SCOTUS, and I (or the attorneys I advise) are at a big advantage because I can think in the late 18th and early 19th century while most people cannot.

                  It is incorrect to believe that the thinkers of the Enlightenment had a narrow and constrained view of the possibilities of invention and of innovation. One needs to explain exactly how expansive the original meaning really is.

                  Yale law professor Jack Balkin has pioneered the use of living originalism for expansive interpretation of the law.

                2. Your post at 3:15 is a bit confusing, as you appear to want to buttress your view AND my expansiveness position at the same time.

                  IF you take the expansive view (my view), THEN you also have to accept that your proposition of ambiguity is false.

                  Here, I think that you err by a reliance on the differences in languages (some being contextual, while others being less so) as necessarily creating an ambiguity when what is actually present is merely a reliance on contextualism.

                  This is NOT an error of ambiguity as you posit.
                  This IS merely a requirement of the understanding that context matters.

              3. 8.2.3.1.2.2.3

                I would further posit that what you may merely see as an ambiguity is NOT so – and that the fact that English is a more contextual language merely means that that — as here — context matters.

                This reinforces my post above concerning the fact that the law that we are discussing deals with innovation, change and the a priori unknown.

                This is precisely why 35 USC 101 is meant by Congress to be a very low bar to patenting, and that two and only two factors need be met:

                1) the claims to the invention be phrased in at least one of the (very broad) statutory categories, and

                2) the utility of the invention fall within the (very broad) Useful Arts.

                Understood thus – and meant to BE timeless – there are NO “constraints of looking at this from a late 18th and early 19th century “as long as we think” in such a crabbed manner.

                It is an oxyM0R0N to think in a manner that innovation was limited to the “known.”

        2. 8.2.3.2

          And “not patent eligible subject matter” under 101 or other judicial exceptions can make a claim just as “unpatentable” as 102 or 103.

          Certainly, while technically true, this only confuses the conversation — and allows those who would rather conflate and obfuscate NOT have to be clear.

      3. 8.2.4

        That is to say, if I am the first person to realize that this given law of nature might be harnessed to diagnose condition [X], then it is not crazy for the patent system to award me my 20 years of statutory exclusivity for tests employing that law of nature, even if the mechanisms for measuring the correlation are old in the art, and even if the only contribution that I have made to the art is the discovery of a pre-existing but hitherto unrecognized law of nature.

        Look I happen to think the 20 year term *can be* ridiculous, but it’s clear that congress could set the term to any non-infinite length of time. So let’s make a simple example – If you discover oil that lies under my house, do you think the framers intended for the constitution to allow Congress to control that oil for 20, or 99, or 1000 years? After all it’s MY land, and the states were very careful to try and keep control of their territory, so how come someone can come by and relay a natural fact (something that certainly would be found out within the life of a 99 year patent anyway) and essentially deprive me of the benefit of my land for my lifetime.

        I only use land because the possessory interest is so clearly marked, but “the public” has the same possessory interest in all natural laws. They affect us and are publicly known just as well as gravity. The counter argument to “the court doesn’t know anything about technology it should defer to congress” is that “congress simply wasn’t given that power.” Under your logic throwing a ball, which is something I’ve done since I was a child, could become illegal if I consider a true fully formed theory of gravity that was just discovered while doing it. I don’t deny that the person who develops a theory of gravity should be compensated. I do, however, deny that the patent power was intended to grant congress the right to secure control of it in the discoverer for any time they see fit.

        1. 8.2.4.1

          If you discover oil that lies under my house, do you think the framers intended for the constitution to allow Congress to control that oil for 20, or 99, or 1000 years?

          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. Yes, in brief answer to your question. Yes, I think that the Constitutional text—both as a matter of textual interpretation, and as a matter of optimal policy in certain circumstances—permits Congress to award a letter patent to the discoverer of a hitherto undiscovered oil deposit that permits the patentee to restrict the exploitation of that oil for 20 years (or 99, or 1000 years, as Congress deems fitting for optimum policy).

          After all it’s MY land, and the states were very careful to try and keep control of their territory, so how come someone can come by and relay a natural fact (something that certainly would be found out within the life of a 99 year patent anyway) and essentially deprive me of the benefit of my land for my lifetime.

          So what? The laser printer in my office is MY laser printer. The RW CD ROM drive in old laptop is MY CD ROM drive. 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. Come to that, a patent on a new drug is a limitation to what I can do with MY organic synthesis chemistry set, and a patent on a new engine is a limitation on what I can do with MY scrap iron, and a patent on a new ornamental design is a limitation on what I can do with MY canvas and paints.

          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. This is just how the game is played. Your counterargument here is not really an argument against patents on diagnostic medical devices, but against patents (and copyrights) tout court.

          1. 8.2.4.1.1

            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,

            AND

            Your counterargument here is not really an argument against patents on diagnostic medical devices, but against patents (and copyrights) tout court.

            THIS.

            This happens ALL THE TIME with the likes of Random, Malcolm, Paul, (the late Ned Heller), and the whole host of anti-business method and anti-software patent folks (including YOU, Greg) – which, as I have provided, boils down to those making these types of “arguments” to be merely anti-patent.

          2. 8.2.4.1.2

            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.

            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.

            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.

            1. 8.2.4.1.2.1

              [T]hat 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.

              Fair enough. You are one of the most thoughtful and worthwhile contributors around these parts. I always enjoy our exchanges, so I have no desire to be sour or surly in response. Suffice it to say, I think that the point that you are trying to carry here looks every bit as absurd as you evidently think my response. I leave it to disinterested readers to decide whose point seems the more absurd.

              Incorrect. The copyright statutes stand as a limitation on *generating further* versions or copies of things…

              This is really a distinction without a difference. Once again, if you care to take up what seems to me so obviously an absurd position, then I leave it to the disinterested reader to decide whether I am the one raving or you.

              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?

              For whatever little it is worth, I do not think that it is useful to worry about labels like “patent power.” The tax clause allows Congress to levy “taxes,” but not “penalties.” United States v. Doremus, 249 U.S. 86, 93 (1919). What’s the difference between a “tax” and a “penalty”? I do not know, but it is certainly not that the Congress calls something a tax. That fact matters less than a fart in a hurricane.

              Similarly, it matters very little whether a conveyance is styled a “license” or an “assignment.” In a similar manner, it does not really matter to the constitutional outcome whether a law is ostensibly predicated on the “patent” power or the “interstate commerce” power.

              1. 8.2.4.1.2.1.1

                In a similar manner, it does not really matter to the constitutional outcome whether a law is ostensibly predicated on the “patent” power or the “interstate commerce” power.

                This is correct at least insofar as the First Amendment puts an identical limit on what sorts of acts (e.g., thinking about the meaning of data, communicating the meaning of data) can be made illegal by Federal statutes purporting to “promote progress” or “regulate commerce.”

                1. Yet again, you mouth “First Amendment” and without more,
                  F
                  A
                  I
                  L
                  miserably.

                  You really should try to take a First Amendment law class to learn how to advance a proper First Amendment argument.

        2. 8.2.4.2

          but “the public” has the same possessory interest in all natural laws.

          The map is not the land.
          This is not a pipe.
          Flogiston, Aether, and the like.

        3. 8.2.4.3

          The counter argument to “the court doesn’t know anything about technology it should defer to congress” is that “congress simply wasn’t given that power.”

          An absolutely clue1ess statement.

          1. 8.2.4.3.1

            Are mining patents under discussion here? The US government used to issue patented mining claims — maybe it still does.I learned of this area of law from reading Rough ing It by Samuel Clemens. It is a most interesting 2 volume set of books. In many jurisdictions surface real estate property rights are completely separate and distinct from subsurface mining rights.

            1. 8.2.4.3.1.1

              The topic is brought up only because it is a fallacy position of Random’s and Greg often is overly fawning of Random and in his over-politeness exacerbates Random’s fallacies.

    3. 8.3

      The answer to that question, Paul, was answered by the Supreme Court correctly in Prometheus v. Mayo. The answer is “Of course you cannot use the patent system to protect an abstraction such as thinking about a ‘new correlation’ merely by additionally reciting a prior art context, e.g., a known data gathering step, or a known treatment step, in a patent claim.” Why is that the case? It’s the case because doing so is no different than simply claiming the correlation directly, at least it won’t appear any different to those who are freely practicing the prior art, as is their right.

      And this basic truth is why Congress’ current efforts to appease the world’s most entitled whiners is doomed to fail. It’s also why people like Dennis, GregDL, Bildo, et al. who refuse to address or discuss the issue are cowards at best, and (more likely) the worst kind of intellectually dishonest @ h0les imaginable.

      Meet a significant fraction of the US patent bar folks: it’s a filthy pile of truly sc-u-m-m-y attorneys and professors, with only their own interests in mind, who excel primarily in creating confusion and obfuscating the truth. Heckuva job, guys. Heckuva job.

      1. 8.3.1

        who refuse to address or discuss the issue are cowards at best, and (more likely) the worst kind of intellectually dishonest @ h0les imaginable.

        Your Accuse Others meme is showing.

  11. 7

    1.Whether this Court now recognizes a categorical bias against patent claims to [whatever it was we tried to claim]

    Really, really funny stuff here.

    There is no “categorical bias” against claims which include a diagnostic step. There is definitely a serious Constitutional problem with 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.

    1. 7.1

      Mayo v. Prometheus was outrag eous. 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 to tally legally inconsistent reasoning. It breaks the US patent system. All sitting Justices that concurred in this decision should resign forthwith.

      I discuss in more detail in Preface: Fixing § 101 Requires Fixing § 100.

  12. 6

    Since Dennis can’t be bothered to provide the claims or summarize the undisputed facts in the case, I’ll comment quickly on this:

    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.

    1. 6.2

      I’m sure this is a nice write up and thx mm, but whew I would have to spend an hour trying to figure out what all is being talked about.

      All I will say at present is that if you have a whole body of patent people finding something should be patentable there is a non-zero chance that there is some underlying “advance of the traditional useful arts” that is at the heart of the claim and it is probably fine to patent as that justification if nothing else. But, they may have got the right result here.

  13. 5

    Shorter Judge Moore: Come one guys, we were willing to buck the SCotUS in Vanda with a totally bogus argument to distinguish Mayo. Let’s not lose our nerve now. We should use this case to introduce another totally bogus argument to distinguish Mayo, until Mayo becomes effectively a dead letter and the law on diagnostics test eligibility is returned to essentially the pre-Mayo status quo ante.

    Shorter Judge Lourie: We have—by careful patient work—carved out in Vanda an exception to Mayo that practically swallows the rule, so long as the claim drafter fashions the claim as a “method of treatment” rather than a “diagnostic method.” I agree that it would be better still if we could dispense with the artifice and just uphold “diagnostic method” claims. If, however, we get too bold in our defiance of Mayo, the SCotUS might sweep in and undo even the limited good that we have achieved with Mayo. Better to be happy with what we have, rather that overreach and lose all.

    I admire Judge Moore’s daring here, but if I have to choose between her instincts and Judge Lourie’s on this one, I am going with Lourie. I would be delighted if the Court were to clean up its own mistake, but that is not too likely. If the CAFC tries to clean up the Court’s mistakes using the en banc mechanism, that is far more likely to end with the Court reversing both Vanda and the (putative) en banc Athena than to end with Mayo being Diehred. Meanwhile, Congress is already working on an even better solution. I think that the right course of action at present is just what Judge Lourie did here—point out the obvious flaws of Mayo, but take no over action and simply wait for Congress to fix the problem in a cleaner and more permanent manner.

    1. 5.1

      but if I have to choose between her instincts and Judge Lourie’s on this one, I am going with Lourie

      What is the State of your attorney’s oath there, Greg?

      Does it call out for you to elevate the Supreme Court above the Constitution, or — like most all other states — are you ethically called to defend the Constitution (and the fact that ALL THREE BRANCHES exist under that Rule of Law)…?

      1. 5.1.1

        “are you ethically called to defend the Constitution (and the fact that ALL THREE BRANCHES exist under that Rule of Law)…?”

        The boomers know that tru ethics (TM) of the boomer kind mean fighting (not defending) the white cis hetero christian capitalist patriarchy in all its forms, definitely including the source of most of its ebil, the constitution. Greg likely is one, or at least is brainwashed thereby. Those defending the constitution are known in this ethical system of the boomers as ebil white nationalist neo nazi facists. You know this already anon.

        1. 5.1.1.1

          I am talking about real pragmatic attorney ethics — quite distinct from ANY political viewpoint situational ethics.

          It matters not at all the labels that ANY political viewpoint may seek to attach. As an attorney, our oath supersedes such views.

          1. 5.1.1.1.1

            “quite distinct”

            I loled. Your muh formal ethics vs informal ethics distinction is known to me, but it does not make a hill of beans, due to the sheer overpowering effects of their informal ethics. The informal ethical duty to fight the patriarchy etc. governs their day to day, not their formal obligations, for the most part. Their whole generation more or less decided, collectively, on those ethics because of various nonsense occurring back in the day (and good amounts of propaganda/influencing). And it seeps into all aspects of their lives. They may have formal ethics and formal ethical duties, but they’ll undermine those in the background, under the table on a day to day basis. This is literally why they are a 5th column to the ebil patriarchy etc. And none of their fellows will shoot them for treason, send them to jail etc. because, derp derp, their whole generation more or less decided that they would have their own ethics. That’s what ethics are irl and manifest as, everyone, or some group among everyone, collectively agreeing on x y or z as being the “right/correct” thing to do.

            “our oath supersedes such views”

            NWPA is supposedly an attorney, but he has already made plain that if he is denied his muh progress politically then he is not loyal to the constitution and would seek the gubmit’s destruction, it doesn’t sound like his muh oath is binding him. MM is obviously not loyal to the constitution as far as he could throw the national monument, and dislikes over half the population on an ethnic basis. It doesn’t sound like his muh oath is binding him. Greg is probably half loyal to the constitution and is mostly just a ho hum liberalish person. Most likely his oath only half binds him. Are you just now noticing that the “liberal elite” attorneys are fundamentally not loyal to the gubmit/constitution/state constitution that they are supposedly “sworn” to? This is literally why politicos sit and btch about them all the time. That and the fact that they’re supposed to be sworn thereto, and get away with not being sworn thereto but in formal swearing only.

            Bottom line anon, for many, being an attorney these days has degenerated into more or less a jerb, and they use that position to fight the patriarchy etc. And their fellows do not pass laws against them and execute etc. them for literally fighting the patriarchy (gubmit embodiment) because of their ethics. Ethics forged in the 60’s.

            1. 5.1.1.1.1.1

              I loled. Your muh formal ethics vs informal ethics distinction is known to me, but it does not make a hill of beans, due to the sheer overpowering effects of their informal ethics.

              Your opinion on this does not change the fact that the two ARE distinct.

              Saying it does not matter is willingly allowing yourself to be – and remain – mired in the incorrectness.

              Such a choice is and always will be a personal choice. You may always choose to be wrong, but you do NOT get to change a wrong choice into being a correct choice just because you may want to play with labels.

              1. 5.1.1.1.1.1.1

                “Your opinion on this does not change the fact that the two ARE distinct.”

                The one blends into the other, in ginormous part. Failing to understand that they are blending to inappropriate levels irl will lead you to not be able to understand what is happening around you.

                “Saying it does not matter is willingly allowing yourself to be – and remain – mired in the incorrectness.”

                Oh it matters that you would like for them to be distinct, and it would matter if you could keep them wholly distinct, but irl the written scribbled ethical codes are a failin’ to achieve such perfection.

                And I want to make sure that you understand this, it isn’t me that is doing any of this, I’m just reporting to you what attorneys are doing irl around you.

                1. Sorry 6, but I am not buying what you are trying to sell.

                  IF all that you are doing is trying to say that certain attorneys (like other folks) HAPPEN to be being unethical in more than one way, we can certainly agree on that.

                  But the fact remains that attorneys DO operate under certain ethical canons that OTHER people do not have to. It is this separate and distinct aspect that I am addressing. On that aspect there is NO such “blending” as you would have it, precisely because the attorney aspect very much is still part and parcel of each State attorney oath***.

                  *** The only single instance that I have seen of a particular State that may provide an argument against this level of ]separate] ethics is the Commonwealth of Massachusetts.

                2. “IF all that you are doing is trying to say that certain attorneys (like other folks) HAPPEN to be being unethical in more than one way, we can certainly agree on that.”

                  Yeah that’s basically it, tho I’m saying that it is a specific type of boomer ideological unethical behavior that I’m discussing specifically other than more mundane types that have been around since forever. And further I will say that they’re not only “being” unethical (or “in a state of being unethical”), their entire thought process as to what even is ethical is unethical at its core due to the aforementioned blending.

                  “But the fact remains that attorneys DO operate under certain ethical canons that OTHER people do not have to. ”

                  Certainly and they’ll do the rock bottom min at the least. Sometimes more if you explicitly remind them.

          1. 5.1.1.2.1

            The boomers are a distinct social category of people that went through collective experiences (writ broadly) in the 60’s etc. Some people may use this lazily or as a rank generic pejorative but I use it as a very specialized pejorative that does actually have meaning. A very specific meaning.

            1. 5.1.1.2.1.1

              Some people may use this lazily or as a rank generic pejorative but I use it as a very specialized pejorative that does actually have meaning. A very specific meaning.

              Да, комрад, мы все очень впечатлены вашей командой американских разговорных социологических терминов, таких как «boomer».

              1. 5.1.1.2.1.1.1

                For those not inclined to use a mechanism such as Google Translate, Greg’s last paragraph reads:

                Yes, Komrad, we are all very impressed with your team of American colloquial sociological terms, such as ‘Boomer’.” [sic]

                It’s too bad that the emoticons no longer directly work (the “eye-roll” one may have been appropriate for Greg to use).

    2. 5.2

      I think that the right course of action at present is just what Judge Lourie did here—point out the obvious flaws of Mayo

      What were these “obvious flaws”?

      You guys are remarkable in your ability to reach conclusions (and parrot them) without actually ever saying anything or attempting to understand what the facts were in Mayo, why the Supreme Court reached the holding that it did, and what sort of claims avoid the issue with Mayo (which is not an issue that can be statutorily obliterated, at least not Constitutionally).

      1. 5.2.1

        You guys are remarkable in your ability to reach conclusions (and parrot them) without actually ever saying anything or attempting to understand“… ANY cogent counter points presented on ANY topic that happens to go against Malcolm’s feelings…

        LOL – the Accuse Others here is…

        … stultifying.

    3. 5.3

      [T]ake no overt action and simply wait for Congress to fix the problem in a cleaner and more permanent manner.

      Incidentally, I would like preemptively to address a rejoinder that I am sure will be raised—constitutional supportability of the Congressional reforms. In Cuno Eng’g. v. Automatic Devices Corp., 314 U.S. 84, 91 (1941) the Court first articulated its infamous “flash of creative genius” test. The Court explicitly purported to derive this test from the Constitution. Id. (“Tested by that principle [i.e., the ‘flash of creative genius’]… [w]e cannot conclude that [Mead’s] skill in making this contribution reached the level of inventive genius which the Constitution (Art. I, § 8) authorizes Congress to reward”).

      So, logically then, when the Congress in 1952 explicitly repudiated the “flash of creative genius” test in the new §103 (“Patentability shall not be negated by the manner in which the invention was made”), the logical reaction for the Court would be to set aside the 1952 act as unconstitutional. After all, the Court had said previously that a “flash of creative genius” is required by the constitution in order for Congress to grant a patent, and here Congress had expressly required that patents be granted regardless of whether the claimed invention possesses that (supposedly) requisite flash.

      So, what did the Court do when confronted with Congress’ headlong defiance on that point? Why, the Court folded like a sheet of paper (a “paper tiger,” one might say). In Graham v. John Deere Co., 383 U.S. 1, 6 (1966) the Court meekly observed that “[w]ithin the limits of the constitutional grant, the Congress may, of course, implement the stated purpose of the Framers by selecting the policy which in its judgment best effectuates the constitutional aim.”

      “But wait,” you might ask, “didn’t the Court already say that removing “flash of genius” from the list of patentability conditions exceed those constitutional limits?” Not at all. Rather, the Court unctuously explains that “the reference to ‘flash of creative genius’ was but a rhetorical embellishment of language going back to 1833… Rather than establishing a more exacting standard, Cuno merely rhetorically restated the requirement that the subject matter sought to be patented must be beyond the skill of the calling.” Id. at 15 n.7.

      In other words, the Court likes to talk big about constitutional limits on the patent power in dicta, but it has never actually held any such limits. Nor will it ever do so. This is all just chest thumping, but the Court does not actually want a fight with Congress on this point. If the Congress says that patent eligibility reaches to a variety of business methods and/or diagnostic medical tests that Mayo/Alice presently exclude, the Court will find some way of saying that the offending language in those cases was just a misunderstanding and a “rhetorical excess.” The Court is not going to tank the patent act just to make the ACLU and the EFF happy.

      1. 5.3.1

        Other blogs have featured detailed multi-point attacks AGAINST the “the Supreme Court is using a Constitutional argument” case previously.

        That being said, yours is a good point to add to that multi-point view.

    4. 5.4

      Shorter Judge O’Malley:

      That “anon” poster over at Patently-O has been right all along.

    5. 5.5

      Both the Vanda claims and also the Prometheus claims were treatment claims.

      The CAFC distinguished the diagnostic limitation of the Vanda claims from the diagnostic limitation of the Prometheus claims because the Vanda diagnostic limitation was not a well-known, routine, conventional activity (medical praxis).

      Even if the CAFC found a loophole in the Mayo v. Prometheus decision, this loophole does not fix the basic problem caused by SCOTUS’ determining that obviously patent-eligible claims were patent-ineligible.

      SCOTUS broke the US patent system by making it logically inconsistent (both p and also ~p are true).

      Not only did SCOTUS make an error that I would not have made in the upper school (9th-12th grade), but SCOTUS incredibly made an error that I would not have made in fifth grade, which is the year that The Pingry School taught introduction to mathematical logic according to the Dolciani series of math textbooks.

      The Justices that are still sitting and that signed onto the Mayo v. Prometheus decision must resign. There is no way to walk-back such an error.

      1. 5.5.1

        There is no way to walk-back such an error.

        Actually, there is a way.

        And it is a way that the Court itself has recently laid the foundation for.

        The Court did this in what I have called the two shears of the Kavanaugh Scissors.

        This mechanism has been explained many times now. And while it does appear that the Court is content to allow the Congress to do the “heavy lifting” and directly abrogate the Common Law law scrivening related to 35 USC 101, this does not change the fact that A method has had a recent foundation put into place.

        See also link to ipwatchdog.com in the comments for more discussion.

        1. 5.5.1.1

          I meant that the Justices cannot personally walk back such an elementary judicial error and that they should resign in shame.

          What could possibly make such Justices fit to serve on the highest court of the land?

          1. 5.5.1.1.1

            Ok – I see that your angle is more to honor and fit to serve; while my response was on a manner in which the Supremes may at least attempt to save face (I do not have a picture, but the concept may find such a picture in your Seppuku source.

            I find myself a bit torn between the degree of “honor-restoration” and the offense of logic error — and see greater offense in the level of pure anti-patent feelings of several on the Bench (and to me, the more egregious point is not the logic error in itself, but rather to the Ends for which that logic error was employed.

            The scoreboard IS broken (the logic error does exist), but the deeper dive to be made in fixing that broken scoreboard requires NOT just noting that the logic is in error.

  14. 4

    [T]he 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.

    I agree that the court here seemed uniquely focused on diagnostic claims. I expect that the tenor of the opinions would have been different if the case in question had centered on a business method innovation rather than a diagnostic medicine innovation.

    I do not want to make the good into the enemy of the perfect, so if the Court were to be moved by these CAFC opinions to cabin its Mayo excesses only with regard diagnostic medicine and not other areas of technology, that would still be a welcome improvement. However, this really shows the need for Congressional action. The best outcome would be for Congress to move forward on its whole package of statutory reform (§§ 100, 101, & 112), so as to lift the welter of confusion surrounding the patentability of so-called “business methods” (really, computerized technology useful for the running of particular businesses), but at the same time forcing the claim scope of such patents back into alignment with what is actually invented, and lessening the confusion about the exact limits of such claims.

    I am, happily, more sanguine about Congress actually effecting such an improvement than I am about SCotUS cleaning up the mess of its own Mayo excess. Congress may not get to it this session, but it seems that the momentum is building toward that happy day when the worst excesses of Mayo/Myriad/Alice are effaced from the U.S. patent law landscape.

    1. 4.1

      Greg DL: if the Court were to be moved by these CAFC opinions to cabin its Mayo excesses only with regard diagnostic medicine and not other areas of technology

      LOL So you want a special exception for the Mayo rule (which was a pre-existing rule for the entirety of the patent system, by the way, until the Court got sloppy with its writing in Diehr and the CAFC went wild with it) … where the exception is that the Mayo rule doesn’t apply in the exact situation presented to the court by Mayo?

      Good luck with that, Greg. And why on earth would you want to want to hand out patents that protect medically relevant data in prior art contexts, and which tie up data gathering methods which would otherwise be in the prior art? Let me guess: you have great health care and, as a patent attorney in this area, you earn a very decent income such that the inevitable increase in costs (to everyone) that will result from the ensuing massive land grab of “correlations” that is going to ensue are not a real problem for you. Well, isn’t that special.

      Thankfully not all patent attorneys (certainly not this one) are transparent shills for their private interests like you are. You’re disgusting, frankly, and a perfect example of everything that is rotten about this troubled profession which is about to slide into the very bottom of the t 0 I let.

  15. 3

    1.Whether this Court now recognizes a categorical bias against patent claims to [whatever it was we tried to claim]

    Really, really funny stuff here.

    There is no “categorical bias” against claims which include a diagnostic step. There is definitely a serious Constitutional problem with claims which turn me into a infringer because I 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).

    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.

    1. 3.1

      Assertion: …step… itself inventive…

      Rejoinder: Stop trying to parse the claim and apply eligibility at a piece part level alone. Try instead, “claim as a whole.”

  16. 2

    Oh goodness! Each opinion is even better than the last. Even Judge Dyk is forced to acknowledge (if only grudgingly) that Mayo is totally unworkable. Not a single author in this bunch unreservedly defends Mayo (or even makes more than a half-hearted defense, really).

    We have had many such damning-by-faint-praise concurrences in the past that have come to nothing. I am not, therefore, sanguine that this cavalcade of disparagement will make the SCotUS to see sense on their Mayo mess. I tip my hat to the CAFC, however, for giving it their best shot to make the SCotUS sit up and take notice. Meanwhile, kudos as well to O’Malley for calling on Congress to wrest the steering wheel back from a run-away Court.

    1. 2.2

      Judge Moore: The claims in this case … are distinguishable
      from Mayo — especially when that case is read in light of Myriad.

      Newman: Mayo does not create any anti-diagnosis rule.

      So what exactly is the problem with the Supreme Court’s decision in Mayo v. Prometheus? The facts are easily distinguishable, and are distinguished every day, in fact.

      Where does the “confusion” come from? It seems it’s coming from somewhere other than the Supreme Court. Golly, I wonder if the blame for the “confusion” is coming from … patent attorneys and certain professors who do little except to contribute to the “confusion” because if they can kick up enough dust they can try to reverse the basic holding of Mayo (news flash: not going to happen).

      1. 2.2.1

        It seems it’s coming from somewhere other than the Supreme Court.

        Absolutely — and unequivocally — wrong.

        The score board is broken.

        Trying to pretend otherwise only wrecks your credibility more (if that were possible).

  17. 1

    The 8 opinions in this 7-5 denial of en banc review in Athena Diagnostics, Inc. v. Mayo Collaborative Services, LLC (Fed. Cir. 2019), re 101-Mayo non-eligibility of certain diagnostic patents, provides interesting citations with comments on whole collections of Fed. Cir. decisions on both Alice and Mayo 101 decisions, including some rationales for their consistency.
    The numerous pleas here for Sup. Ct. review would normally seem quite persuasive for obtaining cert, except for the fact that some are not asking for clarification, but rather asking for the Sup. Ct. to reverse its own recent decisions. They do seem to demonstrate that they are closely following the current Congressional 101 legislative efforts.

    1. 1.1

      They do seem to demonstrate that they are closely following the current Congressional 101 legislative efforts.

      Most of the people who testified at the Congressional hearings are interested stake-holders (which is only right and proper; Congress is right to care about the views of interested stake-holders), so one could predict ex ante what each was going to say, and none of the participants really said any more or less than one might expect someone to say who represents the interests that each represented. Today’s set of opinions, however, comes from a source that is equally well informed as the interested stake-holders, but a source that lacks any of the self-interested motives that animated the folks who testified at those hearings.

      I hope that Congress pays careful attention to these opinions. These opinions represent some of the best informed but also least distorted or partisan input that Congress can receive. And despite the differences in emphasis among the various opinions, the central conclusion is the same—Mayo is an unworkable mess that cannot be congently applied except to achieve and end that works contrary to the purpose of the patent act. Just as the Court needed Diehr to clean up the mess that it had made in Flook, the court needs another case to clean up the mess that is has made in Mayo. This case is just such an opportunity for the Court to clean up its mess.

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