Guest Post by Prof. Ghosh: A Fitter Statute for the Common Law of Patents

Guest Post by Shubha Ghosh, Crandall Melvin Professor of Law and Director, IP & Tech Commercialization Law Program and Syracuse Intellectual Property Law Institute, Syracuse University College of Law.  I asked Professor Ghosh to offer his views on the ACLU and Law Professors’ letter.  Below is is response. -Jason

As a law professor, I am in the camp of those who are critical of the proposed bipartisan, bicameral legislation (“the Coons-Tillis bill”) to amend provisions of the Patent Act dealing with patentable subject. I am also in the camp of those who find the “two-step test” introduced by the Supreme Court in its Mayo v, Prometheus, 566 U.S. 66 (2012), and Alice v CLS Bank, 573 U.S. 208 (2014), decisions unworkable and inconsistent with its own precedent. I am also in the perhaps much smaller camp that is skeptical of the approach adopted by the Court in its Association for Molecular Pathology v. Myriad, 569 U.S. 576 (2013) decision (even if I agree with the result that identified genetic sequences are not patent eligible). Here are my thoughts about the Coons-Tillis bill and the comments in the letter from the ACLU and the law professors and practitioners organized by Professor Ted Sichelman of University of San Diego Law School.

A proposed provision of the Coons-Tillis legislation states: “No implicit or other judicially created exceptions to subject matter eligibility, including ‘abstract ideas,’ ‘laws of nature,’ or ‘natural phenomena,’ shall be used to determine patent eligibility under section 101, and all cases establishing or interpreting those exceptions to eligibility are hereby abrogated.”

The language expresses frustrations with judge-made exceptions to patentable subject matter based on implications drawn from the language of the Act or from judge made common law reasoning. If enacted, the amendment would not only remove established exceptions to patentable subject matter, but also would limit the power of the federal judiciary to create exceptions based on its own reasoning and interpretation of the Patent Act. Such legislation is in conflict with the long-established relationship between federal courts and Congress. If enacted, it would invite constitutional challenges claiming violation of the separation of powers, under Article III, of the Constitution. The proposed amendment would very likely be found unconstitutional.

Federal courts have as their role the interpretation of statutes. By abrogating the federal court’s power to develop any implications from the statutory language and to engage in common law reasoning in interpreting the statute, Congress invades long-standing judicial power.  Although a full analysis of the separation of powers is beyond the scope of this post, Congressional limitations on judicial power in other realms have failed under judicial scrutiny. At the extreme, Congress is limited in its power to legislate that federal courts cannot hear certain cases or controversies. See Boumediene v. Bush, 553 U.S. 723 (2009) (suspension of writ of habeas corpus unconstitutional); United States v. Klein, 80 U.S. 128 (1871) (Congress’ limitations on claims relating to confiscated and abandoned property unconstitutional). But see Patchak v. Zinke, 138 S.Ct. 897 (2018) (Congress’ stripping federal court jurisdiction over claims arising from Department of Interior’s taking of land into trust was not unconstitutional).

I am not suggesting that the proposed abrogation goes as far as the suspect legislation in Boumediene and Klein. Federal courts can still adjudicate patent law questions under the Coons-Tillis bill. But the bill does put limitations on how courts can decide cases. This attempt to bind the way federal judges approach a federal question is as problematic as taking away their power to adjudicate in the first place. The Coons-Tillis bill if enacted as drafted will invite substantive litigation which may well lead to the legislation being struck down, in part, as an unconstitutional exercise of Congressional power.

The drafters of the ACLU letter express the concern that the abrogation of the established exceptions will essentially reverse the Supreme Court’s ruling in Myriad that isolated gene sequences are not patentable subject matter. I am not as sure of the specter of genes coming back under patent should Coons-Tillis be enacted. My hesitation stems from what I find to be the opacity in the Supreme Court’s analysis in Myriad. If the Court’s reasoning rested on a constitutional holding that natural occurring substances like genetic sequences are not the “discovery of an inventor” contributing to “progress” in the “useful arts,” as required by Article I, Section 8, Clause 8 of the Constitution, then perhaps the Myriad holding survives a possible enactment of the Coons-Tillis bill.

That is the promise of the Law Professor Letter promoted by Ted Sichelman (and his co-authors Kevin Noonan and Adam Mossoff).  Their principal point is that courts can base patent subject matter exceptions in the constitutional language rather than in a murky common law. This point they contend is true for the established exceptions of abstract ideas, laws of nature, and natural phenomena.  But this optimistic assertion is far from clear; it is certainly possible, but not guaranteed. The Coons-Tillis bill, however, offers no guidance on how the courts should assess patentable subject matter. The proposed legislation requires courts to consider eligibility based on “the claimed invention as a whole” and to disregard the manner in which the invention was made, the state of the art at the time of invention, whether limitations are well-known, conventional or routine, or to the standards of novelty, nonobviousness, or enablement. I would assert that there is some general acceptance for excluding laws of nature, abstract ideas, and natural phenomena from patent eligibility (even if there is disagreement on the scope of these exceptions). I find little comfort in abrogating am established body of law on the hope that a Constitutional analysis will either not change the status quo or provide more light.

In summary, the Constitution may not come to the rescue of the proposed abrogation and more likely the Constitution will be its downfall.

Instead of shackling judicial decision making, a bill more carefully tailored to address the problems with the two-step test of Alice/Mayo and the unclear holding of Myriad would be more desirable.

The two-step test requires the PTO or a court to first determine whether patent claims are directed to an abstract idea, natural phenomenon, or law of nature.  If they are not, then the claims are patentable subject matter. If the patent claims are directed to ineligible subject matter, the second step requires the agency or court to identify an inventive concept for which the ineligible subject matter is embodied, used, or applied. What “directed to” and “inventive concept” mean has been the source of controversy with courts often failing to find an inventive concept beyond the ineligible subject matter. The problem is that there is no meaningful definition of an inventive concept beyond the notions of novelty, nonobviousness, usefulness, and enablement. The Coons-Tillis bill attempts to finesse this problem by basing a determination of patent eligibility on a consideration of the “claimed invention as a whole,” but this only begs the issue.

More targeted reform would abrogate the two-step test with its confusing language of “directed to” and “inventive concept.”  Instead, Congress might attempt to more clearly define the established exceptions, drawing on precedent. The Supreme Court tried to do something like this in its Bilski v. Kappos, 561 U.S. 593 (2010), decision. Justice Stevens’ concurrence would have established an exception for “business methods” but for the switch in Justice Kennedy’s vote. Although the Court, Congress, and the patent bar disfavor exceptions for broad classes of inventions, like software or business methods, Justice Stevens’ approach would have set forth a more principled approach to defining the exception that rested on a careful interpretation of the word “process” in the Patent Act.  Instead of this potentially fruitful approach, we were given an open-ended opinion by Justice Kennedy that quite correctly avoided any specific test while endorsing open ended standards.  Justice Stevens’ policy-based interpretation of the word “process” would have taken us further. The irony is that despite Justice Kennedy’s refusal to adopt a specific test, the Court adopts a rigid, unworkable test in Mayo/Alice.

Congress can follow the trail blazed in Justice Stevens’ Bilski concurrence by spending time offering more helpful definitions of the established exceptions.  The Court’s Myriad decision illustrates the need for more clear definitions.  In determining whether Myriad’s isolated gene sequences were natural phenomena, Justice Thomas’s opinion took us through an exploration of biotechnology that read like outtakes from an episode of Nova. The purpose of his scientific exegesis was to explain why the isolated gene sequences were in fact identical at the level of code to the natural phenomena of the naturally-occurring gene sequences. Justice Scalia would have none of this exegesis and simply concluded, in his concurrence, that the two were in fact the same based on his reading of the record. Notably, the Federal Circuit came to the opposite conclusion, ruling that the isolated sequences differed in chemical composition from the naturally occurring sequences.  This conflict as to determining how the subject matter of an invention compares to ineligible subject matter shows to me that guidance from Congress would be desirable.

One source of uproar over the state of the patent subject matter doctrine is the Federal Circuit’s decision in Ariosa v. Sequenom, 788 F.3d 1371 (Fed. Cir. 2015), finding ineligible an arguably valuable pre-natal diagnostic test because it involved cell-free fetal DNA. The court’s analysis is a collision of two errors, combining the two-factor test in Mayo/Alice with the question of when isolated DNA is naturally occurring in Myriad.  Finding the claims directed to natural phenomena and laws of nature, the court failed to find an inventive concept. Its analysis reduced the test to its nonpatentable elements and not finding more. The case illustrates the mechanical application of the two-step test combined with the uncertainties of determining when an invention is identical to ineligible subject matter.

Can Congress set forth clearer definitions of the recognized categories of ineligible subject matter? Can it clarify the definition of process as Justice Stevens set forth in Bilski? The politics of patent reform may inevitable corrupt the process.  But better than stripping courts of common law decision making in patent law, Congress should nudge the process along through clearer statutory guidance.

39 thoughts on “Guest Post by Prof. Ghosh: A Fitter Statute for the Common Law of Patents

  1. 8

    “useful” is defined in §100(k) to mean that the claimed invention “provides specific and practical utility in any field of technology through human intervention.”

    This is utterly meaningless, circular g0bbledyg-0-0-k, and that’s being charitable.

    How many years did Kevin Noonan and his fellow j@ ck@ sses have to come up with something that wasn’t a steaming pile of d0gsh-t? Prometheus v. Mayo was decided SEVEN years ago (before the decision destroyed the biotech industry … oh wait, that never happened except in N00nan’s and Hricik’s tiny fevered minds).

    1. 8.1

      Since YOU are feeling SOOO charitable, Malcolm, let’s see YOUR definition(s) (for both “useful” AND “Useful Arts”)…

      Or does this go against your mantra of YOU providing any actual useful posts….?

    2. 8.2

      …and maybe stay on point, Malcolm, so you don’t have to add even more to your “more than all others combined” expungement totals.

  2. 7

    Another thing that is really ridiculous about this is that your DNA is your DNA. You can have it sequenced. You can look at it yourself. You can look at any markers yourself and there is nothing anyone can do about it. You can printout your DNA sequence and go to a doctor and say I have the markers.

  3. 6

    These opinions are just total nonsense.

    >>The proposed amendment would very likely be found unconstitutional.

    Really? I am sure that is not true. There is a fair amount of real scholarship that discusses the relationship between interpretation of statutes and the Constitutionality of statutes.

    The new law is not saying that the Scotus can’t making a finding that something is unconstitutional, but that the Scotus cannot generate their own private interpretations of the statute.

    Additionally, the whole reason that the Scotus tried to tie in the Constitutionality of the Alice claims and the exceptions was exactly this reason. The Scotus knows their exceptions are not grounded in the language of the Constitution and if they were then the problems you discuss might be real problems.

    1. 6.1

      It is so difficult for me to believe that our country has sunk so low that arguments are presented by supposed academics that lack merit and are so obviously are being formed out of a commercial interest as to be ludicrous.

    2. 6.2

      The thing about this is there is no consequences. These professors (many take money from industry) just say and write whatever they want. There are no ethical constraints on what they do. There is no one to punish them for presenting outrageous arguments. There is no one that will punish them for knowingly misciting a reference or knowingly not citing to counter arguments.

      So why should anyone given anything they say any credence?

    3. 6.3

      Really? I am sure that is not true.

      I agree with this. When one starts sorting through the case law on the constitutional implications of the IP clause, one finds a lot of dicta (e.g., Graham v. John Deere, Cuno Eng’g. v. Automatic Devices Corp., etc.) suggesting that the IP clause predicates hard limits on what sort of patent laws Congress can pass, then a lot of holdings (e.g., Evans v. Jordan, McClurg v. Kingsland, Golan v. Holder, Oil States v. Greene’s Energy Grp.) saying that there are few if any constitutional limitations on what sort of patent laws Congress can promulgate.

      Both the patent plaintiffs’ bar (e.g., in Oil States) and the patent defense bar (e.g., in the present statutory reform debate) are enamored at various times with the idea that the Constitution is going to get them the outcome that they want. Both are deceiving themselves. The Constitution has very little restraining force—in either direction—when it comes to the question of what sort of patent laws the Congress can enact. The Congress is largely free (as a Constitutional matter) to pass laws that can irk the plaintiffs’ bar and to pass laws that irk the defense bar. The real restraints for Congress in this space are political restraints, not Constitutional restraints.

      1. 6.3.1

        See also Golan v. Holder.

        1. 6.3.1.1

          The thing about this is that the Scotus did not hold that the exceptions were unconstitutional squarely. They definitely tried to tie their decision in Alice to the words of the Constitution, but they did not squarely do that.

          So what could happen is the new statute could be passed and then the Scotus could say claims that the exceptions are unconstitutional. But I think the Scotus would have to do this.

          1. 6.3.1.1.1

            Once a new statute is passed, the Supreme Court can say anything.

            The Court does not care for its own limitations (and yes, the Supreme Court is NOT Supreme, but like an entity in ANY other branch of the government operates under a system of limited powers).

            And this is ONE reason why my truly determinative answer includes Congress exercising its other Constitutionally designated power of jurisdiction stripping, and includes Congress stripping the non-original jurisdiction of hearing patent appeals from the Supreme Court.

            Of course, as I have posited in the past, in order to maintain the holding of Marbury, Congress would most likely want to abolish the tainted (simians in a cage, fire-hosed trained by the Supreme Court) CAFC, and reformulate a more proper Article III court in its stead.

            What I find really galling about the academics is the willingness to turn a blind eye to what the Court has been doing. In fact, here, the author actually adulates Justice Stevens! Such is really unbelievable when it comes to the Rule of Law and the over-riding of that Rule in order to legislate from the bench based solely on the personal philosophical beliefs of the Justices involved.

            1. 6.3.1.1.1.1

              >>What I find really galling about the academics

              That is right that they are goal oriented and don’t care about the Constitution or applying laws. They want the outcome that they believe in either for the PC beliefs or for money. The Rule of Law means nothing to these people.

              Again–with Stevens the biggest problem is that the many of his private fact findings are simply ludicrous. Information processing is a physical process. And the entire notion that patents weren’t meant for incentives on information processing is about as far anything can be from reality.

              What I’ve learned in my long life is basically what Clinton said. People do things because they can. Without consequences Lemley will continue, Taranto will continue, etc.

            2. 6.3.1.1.1.2

              The other thing too is to stick to patent law.

              The fact is that if properly interpreted based on a skilled person in the art (“anyone” or “having ordinary skill”), then these claims clearly are not abstract and clearly claim machines. The ladder of abstraction is ignored. 112(a) and 112(b) are ignored as there is simply no problem.

              So these claims like in Alice define a clear set of solutions of machines and the justices (and the CAFC judges) are just fabricating nonsense.

              1. 6.3.1.1.1.2.1

                And what should be galling is that the academics either know this or they are so ignorant as not to know this. In either case their duplicity with the Scotus is shameful to a degree to break the system.

        2. 6.3.1.2

          Both NW and EWS make an excellent point that no one has cited any Sup. Ct. HOLDING on patent law unconstitutionality. But note the long standing practice of the Sup. Ct. to avoid when possible deciding cases on a Constitutional basis, or overruling legislation, when some other basis is possible.

          1. 6.3.1.2.1

            Right. So the Scotus has left the exceptions to being something else. And so the legislation should be fine until or unless the Scotus holds that claims granted that fit the Alice test were unconstitutionally granted. But they have not squarely made this holding.

    4. 6.4

      Wait a minute: so now “scholarship” is suddenly compelling?

      You are a genuine piece of work.

      1. 6.4.1

        You are doing that “one-bucketing” thing again.

        What is compelling is critical thinking. Yes, in the larger scheme of things, such is a rarity in Academia, but there are critical pieces out there and some of us have actually taken in, understood, and integrated such critical thinking into the understanding of how the Constitution works (especially in regards to Separation of Powers/legislating from the bench; Void for Vagueness (defining aspects left undefined to create a “I know it when I see it”/ unknown a priori panel dependent philosophically driven and in-practice-Common-Law-contradictory-law-writing mess); and no advisory opinions (subjective, prospective “May-includes-‘May-Not’-future-Oh-N0es B$).

        Others, like you, merely mouth things like “First Amendment,” and expect the mere mouthing to provide a cogent legal position. Of course, such mere mouthing does not.

  4. 5

    Observing from afar, it strikes me that the debate is complicated by a different “elephant in the room”, namely whether what is logical under a patent statute is manageable in practice, at the PTO and in the courts. Issues that are effortlessly managed under the EPC, in inter partes disputes at the EPO, seem to me to be more or less unmanageable, not only at the USPTO but even also in litigation in the USA. And that, it seems to me, is the reason for all the current distress under 35 USC 101. The hunt is for something that will allow the PTO and the courts to get on and dispose of cases expeditiously.

    Consider a claim presented for patenting. It is the definition of an invention (including a purported invention). To be patentable, that invention must be within the ambit of “the useful arts”. It must be new, inventive and enabled over the scope of the claim. At the EPO, the claim is first examined for “technical character” ie whether the invention is located within the useful arts. That is the EPO 101, done and dusted. Then it is examined step-by-step, for novelty, non-obviousness and enablement. It is in the obviousness enquiry that the main filter kicks in: the only sort of non-obviousness that can “count” towards patentability is that which is within a field of technology. Invoking other sorts of non-obviousness gets you precisely nowhere.

    What’s not to like, about such a sequence? The potential disruption of the obviousness enquiry, perhaps?

    Well, for a start, MM doesn’t like it one little bit. He wants the eligibility enquiry to include an enquiry into the presence of an inventive step. For Europeans, that’s putting the cart before the horse, jumping the gun, complicating examination of patentability grotesquely, for no good reason.

    But there is a good reason in the USA, namely, the horrendous consumption of time and resources, and the appalling multiplication of obfuscation, that ensues if the claim survives its eligibility test. The elephant in the room is procedural economy.

    Before 1978, when England joined the EPC, its patent statute forbade the PTO from enquiring into obviousness. To get to grant you needed only novelty over the art. Obviousness was seen as such an appalling can of worms that opening up an enquiry into it was conceivable only as part of full-throated inter partes litigation.

    Who disagrees with any of that?

    1. 5.1

      You — yet again — want to commit the error of equating the Technical Arts with the Useful Arts.

  5. 4

    Kudos to Ghosh for pointing out (albeit in a somewhat roundabout way) the obvious and appalling problems with the manner in which these “revisions” to 101 have been cooked up and presented to Congress. Just so we’re perfectly clear: the hacks who are pushing this cr @p include some of the least intelligent and most conflicted self-dealing s-c-u-m-b-a-g-s in the patent bar. They had YEARS to come up with something that wasn’t a flaming pile of dog—t and they couldn’t meet that minimum standard. It reflects poorly on the entire community … but the community (as anyone paying attention has observed) has turned into a cessp 00l of know-nothing glibertarian cr-e-e-ps and patent huffing troglodytes.

    A couple comments on specific passages:

    the bill does put limitations on how courts can decide cases. This attempt to bind the way federal judges approach a federal question is as problematic as taking away their power to adjudicate in the first place

    It’s f—-ng I-N-S-A-N-E is what it is. Don’t beat around the bushes here. You have to understand what these cretins want: they want to be able to protect subject matter that hardly anyone (except for them) believes should be protectable (i.e., eligible) but they don’t want to just come out and say that (because they’d be mocked and scorned). So instead they choose to statutorily eliminate the common sense reasoning and logic articulated in Mayo and many, many subsequent Federal Circuit cases that prevents them from scrivening a prior art context into their claims (e.g., a non-abstract or non-mental element, like a data gathering step using prior art technology). It’s bizarre that they think they can get away with this until you remember: these people are fantastically unscrupulous, and they are not the sharpest sticks in the room by a long shot.

    The Coons-Tillis bill, however, offers no guidance on how the courts should assess patentable subject matter.

    Of course they don’t. The chaos resulting from these b0ne-headed revisions is the entire point. A lot of land can be grabbed by Noonan’s disgusting greedy friends and c0-cktail party acquaintances before the ins @nity of it all is put to rest (which it inevitably will be). Again, these people are dishonest hacks. Don’t expect them to “explain stuff”. They want you to watch them wave their hands around and be impressed by their pointless “credentials.”

    Congress can follow the trail blazed in Justice Stevens’ Bilski concurrence by spending time offering more helpful definitions of the established exceptions.

    Ya think? Of course, that might require some intellectual honesty on the part of the most self-entitled patent crack huffing @ h0les who ever existed. Don’t hold your breath.

    I am also in the camp of those who find the “two-step test” introduced by the Supreme Court in its Mayo v, Prometheus, 566 U.S. 66 (2012), and Alice v CLS Bank, 573 U.S. 208 (2014), decisions unworkable and inconsistent with its own precedent.

    What’ “unworkable” about Mayo v. Prometheus? You do realize that the Mayo decision has worked incredibly successfully to eliminate a HUGE bolus of incredibly junky patents that illegally protect ineligible abstractions and natural phenomenon, right?

    Before anyone takes your “concerns” seriously, you need to be more specific about what you believe Mayo was about. My guess is that it’s not Mayo that is your problem. Rather, it’s more likely that your issue is with subsequent decisions by the CAFC bending over backwards to fit subject matter eligibility issues into Mayo’s framework where they don’t easily fit.

    Likewise, exactly what “precedent” is Mayo “inconsistent” with and exactly why is that a problem? The Supreme Court isn’t bound by its own precedent and its free to fine tune itself whenever the opportunity arises. Why is that a problem?

    Let’s break it down for the kindergartners. Diehr stands for the proposition that you can’t decide a claim’s eligibility simply by identifying some ineligible abstraction and then concluding “claim is ineligible”, or by identifying some eligible subject matter and then concluding “claim is eligible. There’s nothing controversial about that holding. Eligibility isn’t just a technical scrivening requirement. You have to determine the nature of the subject matter that the claim effectively/actually protects and the only logical way to do that is to evaluate the elements in the claim against the prior art.

    Mayo presented the Supreme Court with the opportunity to address this issue in a particularly pernicious set of circumstances that was becoming disturbingly commonplace: claims that recited a prior art data gathering step followed by an unquestionably ineligible step of thinking about the meaning of that data gathering step. The Supreme Court righteously squashed these claims in a 9-0 decision that was quite clear about the problem and the issues presented: you can’t claim correlations (period) and 101 interpreted correctly bars you from “scrivening around” that prohibition by salting the claim with prior art elements. The reason why that bar exists is because without the bar, any halfway competent attorney can write a claim that protects any non-obvious abstraction or mental step, merely by salting the claim with some pre-existing non-abstract context (e.g., drinking a glass of water; breathing air; “in a hospital”). That’s what Mayo was about. Greedy entitled sc-mb@gs like Noonan didn’t like Mayo because Noonan and his cronies in pharma want to be able to sue doctors for making correlations, or to be able to sue hospitals for recording/retrieving medically relevant correlations in/from a computer.

    Ariosa v. Sequenom is a different flavor of eligibility but the claims at issue in that case are also extremely problematic (note also: there was no invention at all in those claims under 103 so it’s more than a bit ridiculous for Noonan et al. to hold that case up as an example of the awesome “tech” that Mayo is allegedly preventing — but we’ve come to expect no less from these people). The problematic claims in Ariosa are claims where a new phenomenon (e.g., a new molecule) is discovered. Everybody agrees that you can’t patent the new phenomenon itself, on its own terms (e.g., “A previously undescribed Amazonian frog, wherein said frog is described by X, Y, Z”). But that prohibition would be toothless if you could instead claim — as Ariosa attempted to do — the use of a prior art detection method to … detect the frog.

    It’s these sorts of problems that were recognized by the Mayo court and which led the Court to require some inventiveness in a part of the claim other than in the “new” ineligible subject matter. And we all know what “inventiveness” is already: it’s non-obvious subject matter under 103. This isn’t complicated. This isn’t an onerous requirement. All it means is that you have to show that there is inventive non-abstract subject matter in the claim (i.e., inventive subject matter, structurally distinguished in the claim from the prior art, or distinguished on the basis of an unexpected physical transformation of matter).

    And that brings us to the elephant in the room: the patenting of otherwise ineligible “new” logic, where that logic is carried out “on a computer” whose sole reason for existing is to carry out logical processes on data. Yes, there are “inconsistencies” in court decisions regarding whether this subject matter should be eligible. But it’s largely not the fault of the Supreme Court which has never been given the opportunity to squarely address the issue. Suffice it to say that basic reason and logic (<-note) would demand that "new" logic is not eligible for patenting, regardless of whether it is carried out in the mind or carried out by a prior art device whose purpose is to carry out data processing/storage. And it's also worth noting that the "tech" industry is overflowing with people who have never believed that logic "on a computer" should be eligible for patent protection.

    1. 4.1

      For clarity, here’s the bolded section re-formatted correctly:

      What’ “unworkable” about Mayo v. Prometheus? You do realize that the Mayo decision has worked incredibly successfully to eliminate a HUGE bolus of incredibly junky patents that illegally protect ineligible abstractions and natural phenomenon, right?

      Before anyone takes your “concerns” seriously, you need to be more specific about what you believe Mayo was about. My guess is that it’s not Mayo that is your problem. Rather, it’s more likely that your issue is with subsequent decisions by the CAFC bending over backwards to fit subject matter eligibility issues into Mayo’s framework where they don’t easily fit.

      Likewise, exactly what “precedent” is Mayo “inconsistent” with and exactly why is that a problem? The Supreme Court isn’t bound by its own precedent and its free to fine tune itself whenever the opportunity arises. Why is that a problem?

      Let’s break it down for the kindergartners. Diehr stands for the proposition that you can’t decide a claim’s eligibility simply by identifying some ineligible abstraction and then concluding “claim is ineligible”, or by identifying some eligible subject matter and then concluding “claim is eligible. There’s nothing controversial about that holding. Eligibility isn’t just a technical scrivening requirement. You have to be able to determine the nature of the subject matter that the claim effectively/actually protects and the only logical way to do that is to evaluate the elements in the claim against the prior art.

    2. 4.2

      WTFLDNR

      (but hey, your feelings are noted)

  6. 3

    Can someone direct me to something intelligent that “Ted Sichelman” ever wrote about the Mayo v. Prometheus case around the time that the case was being litigated?

    Thanks in advance. I know this is a tough ask.

    As for Noonan, he is always will be an intellectually dishonest hack. It’s worth going back to his blog in real time to watch him doing cartwheels trying to avoid the issues that were presented in the case.

    If these guys were only a bit more honest about their motives (i.e., shilling for the pharma industry, the low rent patent attorney bar, and scr-e-w everybody else) they might be borderline tolerable. As it stands, however, they’re just a pack of rotten entitled cr-e-e-ps lying to Congress and everybody else.

    Just come out and say “We believe that the process of correlating one data point with another data point or the likelihood of a future activity should be protectable with a patent, and we believe that people who engage in the process of correlating data should be subject to a patent suit in Federal Court.” Just say it! Why play these transparent games, you disgusting sniveling liars? At least if you’re honest we can have a frank discussion about the desirability of those kinds of patents instead of listening to your mewling horse—t about how nobody is going to correlate stuff anymore without patents (a prediction that is just another made-up bit of nonsense).

    1. 3.1

      watch him doing cartwheels trying to avoid the issues that were presented

      Wow – Accuse Others much…?

      horse—t about how nobody is going to correlate stuff anymore without patents

      Nice strawman, as it appears that ONLY YOU have ever said this type of “not doing X without patents”…

      1. 3.1.1

        Nice strawman

        It’s not a strawman. This absurd proposed expansion of the patent system to encompass the protecting of “correlations” is brought to us by the same people who constantly shriek that anyone who opposes them “doesn’t understand innovation” or “doesn’t understand technology.” Then come the cries about how “US dominance” in biotech is going to disappear and countries that permit the patenting of correlations are going to rise up and make us look like f 0 0ls (of course, these sorts of “sky is falling” assertions were made by Noonan and his cronies BEFORE Mayo and none of that has happened — historically huge numbers of US patents in the biotech space have been granted in the meantime and I’ve got biotech work coming out of my years that isn’t implicated at all by Mayo or Myriad or Sequenom).

        These people are industry shills and they will do and say literally anything if it makes their precious g@ rb@ ge patents on correlations sound like The Most Important Thing Ever. It’s a massive con game. It’s a grift. It’s all these people have to offer because they aren’t very intelligent. They’re just @ h0les who think they know how to run the world, and part of their grand plan is to own and control everything. Everybody else can just go sc r e w themselves. Once you understand this, you can understand all of the bizarre things that they do and say (you included, Bildo — heck, you’re the poster child for this sort of behavior).

        1. 3.1.1.1

          Your cognitive dissonance is noted.

  7. 2

    In my view, the biggest issue with the draft Senate legislation’s broadening of 101 is that it’s express elimination of “new,” and all of the long-standing Sup. Ct. “exceptions” to patentable subject matter, is being accompanied by oral representations that they are all covered by other provisions of the patent statute. That could be true under 112 for “abstract” claims, but neither 112 or 102 fully precludes patenting of the other “exceptions.”

    1. 2.1

      As long as one leaves “new” in §101, one does not even need to rely on §102 or §112 to reach the “exceptions.”

      As Paul Cole likes to point out, laws of nature (per se) are not §101 eligible because they do not fit into any of the statutory categories.

      Natural products (per se) are not §101 eligible because they are not “new.”

      Abstract ideas (per se) are not §101 eligible because they are not “useful.”

      In other words, when properly understood, the so-called judicial exceptions are not even “exceptions.” They are merely the necessary implication of the statutory text itself.

      The ACLU is not crazy, however, to suggest that removing “new” might actually serve to make human genes patentable. Right now, the proposed statutory text says that “[w]hoever invents or discovers any useful… composition of matter… may obtain a patent therefor, subject to the conditions and requirements of this title,” where “useful” is defined in §100(k) to mean that the claimed invention “provides specific and practical utility in any field of technology through human intervention.”

      Presumably, the intent of “human intervention” is to codify the “hand of man” test. As it happens, however, an enzyme in your blood “provides specific and practical utility in a[] field of technology [i.e., physiology] through human intervention [i.e., the activity of human cells producing the enzyme].”

      If the word “new” remains in the text, then a newly discovered human enzyme is still excluded by §101 because the enzyme—even if “novel” under §102—is not a “new” enzyme (it is as old as humans). We would do better, therefore, to leave “new” in the statute, unless we want every walking-around, live human being to be suddenly transformed into an infringer every time a scientist discovers a hitherto-unknown human enzyme (or gene, or lipid, or sugar, etc).

      As a sloppy second best, we could remove “new” from §101 if we interpret “in public use” in §102 to reach an enzyme that is hidden to view but nonetheless existant and functioning in each walking-around-in-public human. That approach has some case law (Egbert) support. I would like to be very sure that this is the agreed understanding of §102, however, before we remove “new” from §101.

      1. 2.1.1

        But there is no intent in this proposed legislation to retain “new” in 101. There is certainly NOT an agreed understanding that “public use” covers “secret [or unknown] use.” Besides standing English on its head, if it did there would be no need for the Metalizing Engineering Doctrine.

        1. 2.1.1.1

          Agreed. Here’s hoping the next revision (that one that was supposed to come out in Aug) leaves “new” in place. That is much the better way to go.

  8. 1

    The proposed amendment would very likely be found unconstitutional.

    B$.

    By abrogating the federal court’s power to develop any implications from the statutory language and to engage in common law reasoning in interpreting the statute, Congress invades long-standing judicial power.

    NO – common law that goes too far is law WRITING. As a Professor of law, I invite you to watch John Houseman in the movie “The Paper Chase” at the one hour six minute mark to remind yourself that the power of common law Law Writing is NOT the unfettered power that you seem to think exists.

    1. 1.1

      UGHHH – “Justice Stevens’ approach would have set forth a more principled approach

      Please stop teaching law if THAT is your take-away.

      Justice Stevens LOST his slotted majority position at his seminal “book-end” case because his views would have directly abrogated the direct words of Congress and would have created a Constitutional crisis (along the lines of much more heavily pronounced separation of powers violation).

    2. 1.2

      A lighter — but still there – ugh with:

      contributing to “progress” in the “useful arts,” as required by

      You do not teach Constitutional law, do you? Ever hear of “hortatory”…? Maybe think of the Second Amendment…?

      1. 1.2.1

        According to Anon, everything in the Constitution he does not like is “hortatory.”

        1. 1.2.1.1

          Completely false, Squirrel.

          Try again.

          1. 1.2.1.1.1

            I understand the word “false” in that statement to be hortatory.

            1. 1.2.1.1.1.1

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