Lilly v. UroPep

Supreme Court: What is the Role of Functional Claim Limitations?

Supreme Court 2019-2020: Introduction to the Term’s Patent Cases

 

33 thoughts on “Lilly v. UroPep

      1. 6.1.1

        Indeed.

    1. 6.2

      Also, still no SG brief in either Vanda or Berkheimer.

    2. 6.3

      Good. Didn’t deserve to be heard.

  1. 5

    Dennis, what do you think is this claim’s “point of novelty?” As I read it, they claimed a new use for a known class of compounds. The old compounds are arguably described in functional terms, but the inventors don’t claim to have invented those. The point of novelty, if any, would seem to be the new use.

    Side note: the old compounds for use in the method (pde 5 inhibitors) are indeed described in functional-looking terms, but that may or may not be “functional claiming.” The refrigerator in your kitchen is also named after what it does, so is your dishwasher. Yet when we hear “dishwasher” we know we’re talking about a class of machines, not “purely functional language.” Maybe the “pde 5 inhibitors” in that claimed method are like that?

    1. 5.1

      Where in the words of Congress do you find “point of novelty” and how is any such use tied to the actual words of the statute?

      (note as well that “described in functional-looking terms” is NOT the same thing as purely functional claiming – single element or multi-element claiming)

    2. 5.2

      Dennis, what do you think is this claim’s “point of novelty?” As I read it, they claimed a new use for a known class of compounds. The old compounds are arguably described in functional terms, but the inventors don’t claim to have invented those. The point of novelty, if any, would seem to be the new use.

      Hm, I suppose that there is something of a philosophical question here, but not one that we really ought to take too seriously. One could say that prostate cancer treatments are old in the art, and the point of novelty here is that one is using PDE5 inhibitors to treat prostate cancer. Alternatively, one could say that PDE5 inhibitors are old in the art, and the point of novelty here is using them to treat prostate cancer.

      Still and all, I think that the way that Lily characterizes this claim is the right way to think of it here. There are lots of real-world investigators who have a suite of prostate cancer treatments at their disposal, but who are always on the lookout for new ones. I doubt that there is even a single researcher out there in the world who says to herself “I have these compounds here that inhibit PDE5, but I wonder what else can they do? Do they taste good sprinkled over salads? Do they freshen parakeet breath if coated onto bird seed? Do they clean the fuel lines if stirred in as diesel fuel additives?”.

      In other words, by treating the state of the art as “prostate cancer therapies” and “PDE5 inhibitors” as the point of novelty, one approximates oneself to some actual research program run by actual artisans working in some actual field. By contrast, treating “PDE5 inhibitors” as the art field and “use as prostate cancer therapy” as the point of novelty, one is hypothesizing an art field with no actual correspondence in the real world. The patent system is not run to provide us with amusing hypotheticals, but incentivize actual developments in actual industry. “[I]s it not… evident that a patent system must be related to the world of commerce rather than to the realm of philosophy?” In re Ruschig, 343 F.2d 965, 970 (C.C.P.A. 1965) (Rich, J.). The adjudication of patent cases should proceed on that basis.

      1. 5.2.1

        To follow on Greg’s point, “cholesterol lowering drugs” are also old in the art. If you found that one such prior art drug was useful for treating cancer, too, a claim to a method for treating cancer by administering “a drug, whereby said drug lowers cholesterol” is just as ridiculously invalid as the claim at issue here.

        Put another way, the problem with this claim in this context (as with most infirm claims relying heavily on functionality at the point of novelty) is that there is an insufficient relationship to physical reality. The claim scope is huge. The supporting disclosure is slim to none.

        The point of permitting some limited uses of functional language in claims was to lighten up the descriptive burdens on claim drafters and eliminate silly grammatical traps. The point wasn’t to give applicants the right to claim functionalities outright, or to expand claim scope far beyond what was actually supported or possessed at the time of filing.

        1. 5.2.1.1

          …”the right to claim functionalities outright“…

          And Malcolm’s tripe continues….

          And I love the strawman of “what was actually supported or possessed at the time of filing” since NO ONE is actually making the argument that terms sounding in function (and the related Vast Midle Ground) is meant in the least to provide any basis for claims not possessed at the time of filing (unlike MOST Pharma type claims) or supported (which draws to mind Random’s most odd Flash of Genius or Serendipity modes).

          But let’s see you or “straight road” Greg address the point that I presented at post 5.1.

          And yes, by “address” I do mean in a cognitive and inte11ectually honest manner.

          (I will not be holding my breadth waiting for you to actually engage on the merits)

          1. 5.2.1.1.1

            It appears you are unaware of the facts of this case, Bildo.

            No surprise there.

            1. 5.2.1.1.1.1

              My comments are geared to what you have stated. Please tell me how “the facts of the case” bear on the points that I have provided.

              Your strawman remains a strawman.

              You STILL do not address my point at post 5.1.

              ALL that you are doing in this last post of yours is kick up dust(dissemble).

              Try again (or perhaps more accurately, try for the first time)/

      2. 5.2.2

        Interesting points! Correspondence to ‘real art fields’ I don’t think will work as an analytical tool. Not in this case. For example, you say: “I doubt that there is even a single researcher out there in the world who says to herself “I have these compounds here that inhibit PDE5, but I wonder what else can they do?”
        What if I told you that there are indeed researchers out there who are systematically looking for new uses for existing drugs? It’s a very real field, so now what?
        Also, we should be at least a little bit skeptical about the strident bashing of “purely functional claiming,” because ‘functional claiming’ may or may not be what’s going on here. There are structural classes of compounds that are named by what they do. Non-steroidal anti-inflammatory drugs, atypical antidepressants, angiotensin II receptor blockers and many others. Don’t get suckered into thinking “functional claiming” everytime you see terms like that. If you tell pharmacists that you’ve invented a new use for “NSAIDs” the pharmacists are going to have a general idea of the chemical structures for which you’ve invented a new use. They’re probably not going to think that “NSAID” is a disembodied purely functional notion, and they’re certainly not going to be as clueless as Supreme Court justices.

        1. 5.2.2.1

          Correspondence to ‘real art fields’ I don’t think will work as an analytical tool.

          This is not only a gross error of conflating with 35 USC 103, but that section of law expressly rejected the

          Yes, Moocow, there ARE people who indeed systematically look for new uses of existing items.

          Not only that, but there are MANY items that are also the results of “oopsies, I did something odd and now have this thing, so NOW, what can I do with this thing?”

          No reasonable person would doubt the patentability (let alone the patent eligibility) of such things.

          But then again, “reasonable” is not a term for MANY of those seeking a particular Ends regardless of Means.

          As to: “There are structural classes of compounds that are named by what they do.” – this too has been exhausted for those willing to be reasonable (I still recall David Stein repeatedly taking Random to the woodshed on this very topic – very much on ALL TYPES of art units).

        2. 5.2.2.2

          ‘[F]unctional claiming’ may or may not be what’s going on here. There are structural classes of compounds that are named by what they do. Non-steroidal anti-inflammatory drugs, atypical antidepressants, angiotensin II receptor blockers and many others.

          I certainly agree that there are terms that superficially appear “functional,” but which are really structural designations (e.g., we all know what structure is conveyed by the word “screwdriver,” even if the naive sense of the word would cover any structure that drives screws). I am dubious that this is what is going on in this case, however. The patentee here did not claim merely “PDE5 inhibitors,” but rather “an effective amount of an inhibitor of [PDE5] excluding a compound selected from the group consisting of [8 of the 10 specific PDE5 inhibitors disclosed in the spec]… .”

          In other words, the patentee definitely did not want merely to claim compounds belonging to a specific structural class, because the patentee went out of its way to exclude a bunch of compounds that would presumably belong to that class. Rather, the patentee was clearly trying to get a claim to anything that works (except for the 8 specific compounds that would have tanked the claim if the claim scope were construed to read on them).

          1. 5.2.2.2.1

            e.g., we all know what structure is conveyed by the word “screwdriver,” even if the naive sense of the word would cover any structure that drives screws).

            My, that’s some serious selective application of terms there.

            Must be a “magic wand” somewhere that Greg can wave about and “know it when he sees it.”

          2. 5.2.2.2.2

            In the opinion below it says that they disclaimed the 8 compounds for double patenting reasons.

            1. 5.2.2.2.2.1

              Be sure to let Bildo know.

        3. 5.2.2.3

          From one Ph.D to a low level engineer: what’s the common distinguishing objective structure of a “receptor blocker”?

          Good luck.

  2. 4

    Were no amicus briefs filed by academics or IPL associations?

    There are important underlying issues here, as demonstrated in the debates over the current draft senate bill amendment of 102(g) as an alleged 101 fix, but not of significance if limited to [rare] one-step functional claims.

    1. 4.1

      Some “fix”!

      Sure, let’s make the actual statute worse, nullify the use of basic reasoning when evaluating claim scope for 101 purposes, and do nothing to address the vagueness in crucial terms that are left undefined (“technology”) or defined circularly (“utility”).

      The important thing is to never, ever criticize the incompetent patent huffing narcissist Giles Rich who couldn’t draft a decent statute his life depended on it.

      1. 4.1.1

        ————————————————————————————
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        Symptoms include an excessive need for admiration, disregard for others’ feelings, an inability to handle any criticism, and a sense of entitlement.
        The disorder needs to be diagnosed by a professional. Treatment involves talk therapy.
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        Let’s talk.

        1. 4.1.1.1

          What’s funny is that his own “huffing” shows that he actually recognizes the ACTUAL law as written by Congress (penned in part by Judge Rich), but that his own emotions overcome ANY reason as to recognizing the proper place of the Rule of Law.

          How very Trump of him.

          1. 4.1.1.1.1

            “Derp you teh Trump derp!”

            1. 4.1.1.1.1.1

              Yay, mindless Malcolm Derp Dance – wheeeee!

  3. 3

    Law of nature! Law of nature! Law of nature!

    Abstract! Abstract! Abstract!

    Cert denied!

  4. 2

    A method for making flawless solid platinum spheres from cornflakes, wherein said method comprises a step for converting cornflakes into flawless solid platinum spheres.

    Spec teaches just one method for achieving this result. My claim covers all methods.

    Can I haz this patent claim now? After all, some old cases dealing with a related issue were “abrogated” according to some blog commenters who also typically believe that logic and information should be protectable by patents. They are very serious people! With lots of money. We must pay attention to their whimsies or else they will take all their super innovative results to China. They’ve done it before!!

    1. 2.1

      Spec teaches just one method for achieving this result. My claim covers all methods.

      “… such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.”

      No, it doesn’t. It covers the one method in your spec and equivalents thereof.

      (disregarding for the moment the whole combination thing)

      1. 2.1.1

        He cannot even get out of his own way….

      2. 2.1.2

        Is that what the patentee is arguing in this case? Their claim is limited to the particular example (and “equivalents”) presented in the priority document?

  5. 1

    I would sanction a misrepresentation of the law in referencing a case known to have been abrogated by the Act of 1952.

    1. 1.1

      Yes, you should be sanctioned.

      1. 1.1.1

        Pay attention son.

        The case known to be abrogated is the case being referenced in the cert petition as if it were still controlling law.

        Attorneys must not misrepresent known abrogated cases as if those cases were not abrogated.

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