Questioning Conventionality and Redefining Process in Patent Eligibility Law

by Dennis Crouch

In CareDx v. Natera, an intriguing amicus brief was recently filed by the Honorable Paul Michel (Ret.) and Professor John Duffy in support of the patentee petitioners Stanford and CareDx. The brief advocates for the clarification of patent-eligibility law, and criticizes the Federal Circuit’s handling of the case. The filing of the brief has seemingly prompted the Supreme Court to request a response from the accused infringers, after they initially waived their right to do so. This move reflects some significance of the arguments presented in the brief.  [Read the Brief]

According to Michel and Duffy, the Federal Circuit’s decision in the case overlooked the text of the Patent Act and conflicts with Supreme Court precedent such as Diehr and Cochran v. Deener. They argue that the decision fails to recognize the difference between patent eligibility (under § 101) and patentability (under §§ 102, 103, and 112). They further criticize the decision for an unduly simplified description of the invention that leaves out important details and for improper emphasis on “conventionality.”  The concept of “conventionality” is more appropriately associated with issues of novelty and nonobviousness, as regulated by §§ 102 and 103 respectively, rather than being a key criterion for patent eligibility under § 101.

The brief spends some amount of time focusing on landmark patent cases such as Diehr and Cochrane v. Deener (while rejecting Flook) to illustrate how a process can be patent eligible despite encompassing conventional elements.  And, throughout this argues that the Federal Circuit misunderstood the definition of “process,” which under 35 U.S.C. § 100(b) is defined to include “a new use of a known process.” The brief contends that this definition permits patents on new applications or improvements of known technologies, and that such improvements should be presumed to be patent eligible.  But, the Federal Circuit’s eligibility criteria of “conventionality” prohibits this interpretation even though not rooted in the Patent Act’s text or the Supreme Court’s precedent.

As with other recent eligibility briefs, this one also underscores a need to address confusion and uncertainty surrounding patent eligibility, particularly in relation to biomedical and diagnostic patents.

Now that we’re almost to June, the petition is unlikely to be decided before the recess and instead will be held-over until the fall 2023 before we get a decision on whether the court will grant certiorari.

See, A. Sasha Hoyt, The Impact of Uncertainty Regarding Patent Eligible Subject Matter for Investment in U.S. Medical Diagnostic Technologies, 79 Wash. & L. Rev. 397 (2022)




56 thoughts on “Questioning Conventionality and Redefining Process in Patent Eligibility Law

  1. 8

    As just ONE example of how inept and deceptive these two con artists are, they state in their brief (without providing or admitting ANY background facts) that the Supreme Court used “conventional” as a “synonym” for “inventive concept” in Mayo. Then they cite three pages of the opinion, wherein the term “conventional” appears once (and not used as a synonym).

    I could write ten pages on the other mis-citations and omissions. Nothing surprising about this level of hackitude from these desperados, of course. They don’t know how to be better people than this.

    1. 8.1

      MY DRESS COVERED IN PURPLE DRINK. AGE pprox. 4. I’m pretty sure Uncle Eddiewasmy dance partner at Eleanor’ wedding. Only problem with my very last spin before I puked,the BAR Open. The bubbly waterfall I was drinking from, and so delicious was Sangria.
      And to think they gave you me to Marcella and Guerwood.

    2. 8.2

      I simply could not believe that anybody at any time ever used “conventional” as a synonym for “inventive concept”. Antonym perhaps. But synonym? Hardly. So I checked out the “brief” and sure enough, there it is, this nonsense statement.

      As to the invocation of “inventive concept” in considering patent eligibility, the established case law of the EPO eschews it, and this provoked a reaction from a revered judge of the English Appeal Court, dismissing this EPO approach as “ine11 ectually dis honest”.

      I presume they would dismiss the Brief in similar terms.

      A propos Mayo, the Brief suggests that anything solving a technological problem should be eligible. But here in Europe it isn’t that simple. Only when the solution is one that uses technology to solve a technical problem is that solution eligible. The human brain, or a “process” going on inside it, is not technology.

      1. 8.2.3

        The human brain, or a “process” going on inside it, is not technology

        hmmmm, really? Lots of technology is inert without a human operator.

        But I certainly argue that the boundary of a human mind represents a major philosophical element in any legitimate political conception of intellectual property.

        Law is a product of politics. That’s the terrain here.


          Law is a product of politics. That’s the terrain here.

          Does NOT help you in your ever-persevering efforts to 1gn0re the terrain of patent law.

    3. 8.3

      “They don’t know how to be better people than this.”

      Malcolm, meet mirror. Mirror, meet Malcolm.

      1. 8.3.1

        Long before the phrase of “the iron law of Woke projection” was coined, I had noted Malcolm’s “iron law” of exactly that trait with my own coined phrase (with its direct and un-emphasized version earning a filter spot on the George Carlin list for this site) of

  2. 7

    When I think of the SCOTUS deciding cases involving technology and subject-matter eligibility, I am reminded of the story related to me about how Justice Thomas was observed a number of years ago in a bank ATM vestibule as being utterly befuddled on how to use the ATM machine.

    1. 7.1

      How can Lehman get control of Century Tel. In Wisconsin, tap my phone in TN. then the PENSACOLA, FL FBI OFFICE tells me to get lost in spring, 1997.
      Then Brucie gets canned on Nov 23, 1998 when they find my Aug 28,1998 FAX contained a letter was finally circulated?
      Then DOLL of MN. works with Sotelo to take my mail from July 19, 1995, opens it then FAXED IT TO THE USPTO BY THE. POSTMASTER IN ENVILLE, TN giving it to Sotelo with my claims along with the first of two patents. They then hide the first, making it two. How can a fender with a metal rod, fold, float and be allowed.
      So without any one to tell me what was going on behind my back while stealing my mail, Bruce wasn’t arrested with DOLL and Lotman? Then the reason I was never allowed to use my street address was because they claimed my home address was for them to hide the information needed? This just Chspter 8.
      If Orange man gets wind of this Comey’s screw up will be a joke. Orange man will be King if this gets out.


          Maybe I can get in touch with Orang a
          Actual information for money? JUDGE JUDY would say it is perfectly legal if it is true.
          Journalists do it all the time.

  3. 6

    A new use of a known process 1) does nothing to define “process” and 2) muse mean, at a minimum, a new and non-obvious use, which means that any such use cannot be a mere variation which does not imbue novelty.

    Bilski was a punt / non-decision that changed nothing. “Process” must be limited because everything people do is a process, and we aren’t patenting everything people do. The EPO has is barely better: they know “technology” when they see it, because there is no clear definition of that term. Almost everything people do involves some elements of “technology”.

    The problem is one of information and it’s limitations, and until that is recognized by those in power, there will be no coherent briefs or cases.

      1. 6.1.1

        The irony, of course, is that the comment speaks for itself.

        The other irony, of course, is that it is you who are delus ional about the terrain on which this policy problem will -or will not be- fought upon.

        Because the legal problem is a morass made by the policy problem. Federal judges solve policy problems every day. Congress does too, sometimes. Not here.


          Lol – you are aware that only one Branch of the government was allocated authority under the Constitution to write patent law, eh? (Please tell me that you understand at least that)

  4. 5

    The better the briefs are for restoring patent eligibility (and this is yet another superb one from Michel and Duffy) . . . the more violently Malcolm hand waves and dust kicks.

    Surprising absolutely no one . . . while guaranteeing yet another visit to his chiropractor.

  5. 4

    I just read the brief. It’s drafted as if the last fifteen years of discussion about the problems with “determine and infer” claims and “detect this” claims and the reams of discussions about the d.o.a. majority opinion in Diehr (long since obliterated by Mayo and subsequent Supreme Court cases, not to mention hundreds of CAFC cases) never happened. It’s like some chatbot took the least honest and most evasive crayon scribblings from the most childish, patent huffing zombies on the Internet and made some overripe fondue out of them. Gross and sad.

  6. 3

    Regardless of your views, I’d commend Justice Stevens’ Diehr dissent to anyone trying to understand what the Court in Mayo and Alice was going for. It’s a much clearer explanation of the two-step test of 1) suss out the actual invention based on the spec and pros history; 2) determine whether that actual invention is a novel product or process vs. just an abstract idea/natural phenomenon.

    I think it maybe suffers from naïveté about how patent litigation is traditionally conducted (possibly because it was an appeal from a prosecution rejection), but it was not confused about the role of 101 vs. 102/103.

    1. 3.1

      One of Stevens’ best dissents, almost as perfect and correct as his dissent in Bush v. Gore

      1. 3.1.1

        Do you understand (at all) just why Stevens was in dissent (and also lost the majority writing position for his “bookend” case of Bilski with his dissent dressed as a concurrence?

  7. 2

    “ The brief contends that this definition permits patents on new applications or improvements of known technologies, and that such improvements should be presumed to be patent eligible. But, the Federal Circuit’s eligibility criteria of “conventionality” prohibits this interpretation”

    No, it doesn’t. There is no “prohibition” against all such claims falling into those categories. Not even close. The mistake goes back to the terrible drafting work and the failure to define “process” and the term “new use” with any clarity. Are SOME claims that arguable fall into this “new use of old machine/process” genre ineligible? Of course. That’s always been true and nobody ever questioned it then and no serious person will question that now.

    Note: this is not an expression of my approval of the manner in which the CAFC has incorporated a “conventionality” “test” into its eligibility jurisprudence. As I’ve explained before, the CAFC has incorrectly set up a system whereby an “unconventional” BUT LEGALLY OBVIOUS element can be used to bootstrap an ineligible abstraction into a valid patent. It’s completely wrong and extremely problematic.

    One must recognize first the simple proposition that an element can certainly be unconventional yet legally obvious, as long as the term “unconventional” is given its common definition of “not widely in use.” The legal definition of obviousness, of course, is very different and relies on a PHOSITA being aware of all published art even if that art was first published one day before the critical date (a moment when that art was undoubtedly “unconventional”).

    The way the CAFC has set things up, the following absurdity can take place:

    Day 0: patent application publishes teaching an eligible non-obvious machine for presenting information
    Day 1: Greedy Freerider reads application and files his own application claiming combination of prior art machine PLUS non-obvious ineligible information (e.g., a new correlation or the location of a new meteor in space or the price of a pickled banana in Mukwanago).

    According to CAFC’s ridiculous test, the result here is that the “non-conventional” element would rescue this claim (and it’s infinite variations) from the ineligible trash heap where it plainly belongs. This is just one example of the flaw in the “conventionality” “test” the CAFC created (by thoughtlessly grabbing a phrase used by the Court in Mayo to accurately describe the only physically transformative act recited in Prometheus’ claims).

    1. 2.1

      The mistake goes back to the terrible drafting work and the failure to define “process” and the term “new use” with any clarity.

      What is the textual evidence that this is a “mistake”? In other words, how do we know that Congress did not simply intend for the eligibility provisions to read as broadly as Judge Michel proposes (with the understanding that sections beyond 101 can do the work of culling objectionable claims)?

      1. 2.1.1

        Yawn … Again, with the “I was born yesterday” schtick? C’mon. Try harder.

        Consider a book. That’s a manufacture, right? Can I get a patent on a book containing new non-obvious information that was never in a book before? That’s a new use, right? That’s what Congress intended, right? Because they never write statutes that are more limited than the most infantile broad reading imaginable, right? And there’s no statutory interpretation doctrines for reasonable construing language like that more narrowly, right?

        Consider a newly patented telescope. Can I get a patent on using that telescope to look at a non-obvious meteor I just discovered? That’s a new use, right?

        Yawn. Okay, I’m tired of delivering this lecture for the zillionth time. I’m even more tired of hearing the non-responsive “rebuttals” that will inevitably follow.

        Just cue up the baseless allegation that “diagnostic methods are no longer eligible for patenting” and I’ll summon up my last drop of patience to dissolve that lunacy in two seconds.

      2. 2.1.2

        “ with the understanding that sections beyond 101 can do the work of culling objectionable claims”

        This again for the zillionth time: as a matter of basic logic and reason, our patent system’s extraordinarily liberal rules for claim drafting are such that there is no way for the “sections beyond 101” to do the necessary work UNLESS eligibility considerations are co-opted into those sections AND the various elements of the claim can be evaluated based on their relationship to the prior art and the physical world. That is why the radical (and wrong) holding in Diehr was chucked aside by the Court as soon as it got hold of the inevitable case (Mayo) that exposed the Diehr majority’s ineptness.


          Reading all this from Europe is fascinating, if only because, under the self-same common EPC eligibility/patentability law, the EPO chooses to keep novelty out of the eligibility enquiry whereas the English courts don’t and, to wit, accuse the EPO of intellectual dishonesty in their so doing.

          It is as “The Prophet” declares: the EPO co-opts eligibility into their obviousness enquiry. I had not seen it that way until I read his 2.1.2 here.

          At the EPO, it doesn’t matter how inventive you are, outside technology. For your inventive contribution to society to weigh in the scales of patentability, it has to solve by technical means a problem in a field of technology.

          I suppose that it is futile to suppose that the USA might ever pick up and run with the idea that patent protection is not there to monopolise everything under the sun that isn’t obvious to a reference person. Rather, for the benefit of society and to minimise unnecessary restraints on freedom, exclusive rights lasting 20 years are NOT to be awarded except in the case of technological inventions.

          But, if not, then it will continue to be unable to leave to the sections following 101 the vital task of culling claims that didn’t ought to get through to issue.

          As to the Stephens reasoning in the Diehr dissent, however clear it might be, it has not convinced me yet.


            How many applicants lose claims only for another to claim what the examiner denied in the original application? Wouldn’t that be a cause of action regarding fraud against the USPTO?
            The USPTO should be obligated through matching class, claims, and the original examiner as an alarm if another set of examiners do the improved version if a claim used in the improved version was denied earlier.
            Perfect reason for the USPTO to qualify AI as investigative tool.


              As you all know, this was done to me. Sotelo was then removed. Even though this is old news, I think it still is actionable. Removing Sotelo doesn’t erase the crime. It is all recorded in the Lemke Patent.


            And yet, MaxDrei has ever declined to provide a non-circular definition of “technology”….

            I suppose that this goes along with the truck-size holes of “per se” and “as such.”


              Ms. anon is a Chinese bot who admits she gets paid to post . Hear the incredible story about how they are not paid to post but get paid to post. Take it away,Snowflake!


                Hi Shifty,

                Trying to make up for lost time with all of your €hoice$$$$ of known falsehoods?


          Circling back as no one has addressed Malcolm’s rather obvious and blatant error of:

          That is why the radical (and wrong) holding in Diehr was chucked aside by the Court as soon as it got hold of the inevitable case (Mayo) that exposed the Diehr majority’s ineptness.

          The obvious problem of course is that not only did this NOT happen, the later Court doubled down on its own self-collision by expressly stating that Diehr was both most on point AND unchanged.


            … will add that this self-collision has been recognized by leaders of all three branches of the US government, and is instrumental in Iancu’s 2019 PEG re-directions to the Examining Corp.


              Iancu was a hack, like you, who enjoyed lying to the public to enrich his friends.

              The only part of Diehr that survived after Mayo was the trivial part that Stevens agreed with (i.e., merely identifying an ineligible element in a claim does not end the eligibility determination). Everyone knows this.


                Everyone knows that you are attempting — yet again — your usual gaslighting when it comes to Diehr.

                You profess to be an attorney, but your apoplectic rants betray your own assertions.

                holding in Diehr was chucked aside


                only part of Diehr that survived

                Are simply incongruent with the actual words of the Court.

                One does not “chuck the holding aside” by stating that the case NOT ONLY ‘remains good law,’ but is also ‘the case most on point.’

                You keep on trying to spin a version of Diehr that aligns with how you feel the law SHOULD be, but that is simply not reality.

                1. “how you feel the law SHOULD be”

                  Run along, little one. Mommy is calling you. Which is to say that Dr. Lindsey needs you to snake his bathtub drain again.

                2. Your non-sense non-answer is entirely fitting to your capability to actually address any meaningful point.

                  That is to say, zero capability.


          For the students, since Euginia blocks me. I tried to relate this to the 3 bears and lessons of being just right. I am in the just right category, only if I take it to the end.
          Maybe Euginia will share my post as it was being written.
          What you end up as being 1st and giving the speech to your graduating class, has zippo to do with where you list in class rankings when you find your path or passion. Sadly mine is Llazer focused. You who have done this to me And you are responsible for stunting who I would have been allowed to become

      3. 2.1.4

        What is the textual evidence that this is a “mistake”?

        He does not have it because it does not exist.

        He only has his “feelings” and angst that Congress did not write the law that he wants.

      4. 2.1.5

        12s: “What is the textual evidence that this is a “mistake”?”

        For the record, “textual” evidence of “the mistake” that I referred to is not necessary or even expected given the nature of “the mistake”, i.e., a statute drafted thoughtlessly and carelessly, and absurdly broadly, with critical words left undefined or circularly defined.

  8. 1

    God bless Judge Michel for his ant-like persistence at this issue. I am not holding my breath until he succeeds, but I admire his willingness to try, fail, and then get back up and try again.

    1. 1.1

      My take is that if you see Judge Michel promoting an eligibility test, run away and don’t look back. He’s a hack. Duffy simply doesn’t know what he’s talking about half the time.

      1. 1.1.1

        And you, the total doofus, do know why the f—- you are talking about, MM?


          Let’s put it this way: I don’t lie to the Court, like these j e r k s.


            The only question I have to the hirechy. NUCLEUS would be POPE. But in this instance relating to definition it is Cardinal. To bad purgatory if anyone believes what comes next would be heaven. If it’s true in the watered down religion I grew up with, Eddie would pass through. But the Catholic Religion is more like forgiveness is not so easily accepted. That must be why they say Jesus was nailedto the Cross? Maybe they wanted him to repent.


            Well clearly then Malcolm, you never address the Court, as you cannot help yourself BUT

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