by Dennis Crouch
Senators Tillis and Coons have released their “Patent Eligibility Restoration Act of 2023” designed to overturn the Supreme Court case of Mayo and Alice Corp. The impact here is to return eligibility doctrine back to the mid 2000s when almost any useful advance was likely patent eligible.
Here are some key points:
1. Elimination of Judicial Exceptions: The Act proposes to eliminate all judicial exceptions to patent eligibility. “Under this Act, and the amendments made by this Act, the state of the law shall be as follows: (A) All judicial exceptions to patent eligibility are eliminated.”
2. Statutory Ineligibility Categories: The Act specifies that that the following are not eligible: (A) mathematical formulas that are not part of an invention; (B) processes that a human could practically perform that are “substantially economic, financial, business, social, cultural, or artistic” even if the process itself requires a machine; (C) mental processes performed solely in the human mind or processes that occur in nature wholly independent and prior to any human activity; (D) unmodified human genes (“as that gene exists in the human body”); and (E) unmodified natural material (“as that material exists in nature”)
3. Claims as a Whole: When determining eligibility, the tribunal must consider the claims as a whole without discounting or disregarding any claim element and without regard to its novelty or conventionality.
Abstract iDan’s posts are usually top quality, but there are not that many of them. It is kind of exciting that on this one particular day, this one particular thread has enticed him to post so much and so frequently. Kind of like when the monarch butterfly migration passes through your town—beautiful to behold, even if fleetingly transitory.
I’m blushing.
In case you are confused about the fact that the PMD is an eligibility screen, please refresh yourself by reading the CAFC’s Bard case from 2020 (totally wrong on the merits but correct on the history and the legal relationship between 101 and restrictions on printed matter).
Maybe also recognize that the issues don’t go away just because an unconstitutional or otherwise revolting statute is passed. On the contrary …
this one:
chrome-extension://efaidnbmnnnibpcajpcglclefindmkaj/https://cafc.uscourts.gov/opinions-orders/19-1756.opinion.11-10-2020_1683097.pdf
which states (emphasis added): “We also hold that the asserted claims are not directed solely to printed matter, and thus are patent eligible under 35 U.S.C. § 101,..”
(note the ‘solely’ and how often I have in the past corrected your own goal post moving of claims as YOU tried to make the entire claim to be something entirely in the mind when it was not)
Note that unlike the previous discussion of claims to books or CDs with printed information, the CAFC was discussing a claim to *only* the printed information, with no underlying substrate.
I’m amused by the fact that you must have been scouring printed matter cases for the past day and only came up with one where they mention that, if the only limitation in the claims is printed matter, since it has no patentable weight, there would be nothing in the claim to be eligible… and then they go on to discuss anticipation and validity.
iDan: “ the CAFC was discussing a claim to *only* the printed information, with no underlying substrate.”
No idea what you are referring to here. A different case, perhaps?
Really Malcolm?
As if “only” and “solely” confuse you (especially as I provided a link to the case)…..
As you typically do not respond in a substantive manner, I am willing to give you the benefit of the doubt that YOU had a different case in mind, and invite you to share a link to that case.
IDan “ the CAFC was discussing a claim to *only* the printed information, with no underlying substrate.”
? Still waiting to see the claim you are referring to. Can you copy it here?
Yo are still waiting…?
(And yes, I see you have moved the goal post to want “claim,” when the discussion in the case that you yourself suggest — and that I provided — does NOT use it that way)
As I stated, Malcolm, you have been the least honest commentator when it comes to the Written Matter Doctrine and its important exceptions.
I should clarify – by “does NOT use it that way,” I mean differently than what I had already provided in my comment above (with Malcolm possibly referencing some other unspecified case than the one that I provided).
Translation of Malcolm:
“Look at me. Look at me.”
Greg, at least, admits the fundamental truth rather than making a complete f 0 0 l of himself. His ploy is to then pretend to be born yesterday and ask “So what?” … as if we’ve never been here before. No other patent system in the world has EVER had an eligibility statute this ridiculously insane on its face EXCEPT for the US and that statute survived for only for two reasons: the judicial exceptions, and the Federal Courts’ refusal to follow its own d.o.a. decision in Diehr. Mayo was the predictable result of Prometheus doing exactly what Greg says won’t happen and the hammer came down 9-0 which is exactly what will happen again if this d.o.a. statute is somehow passed. The alarm will be sounded and intelligent people who aren’t high on patent crack will see the problem. And don’t forget: the sewer dwellers pushing this have had YEARS and plenty of guidance if they wanted to do it right. They chose otherwise because they are, quite simply, rotten human beings.
Once again:
A method comprising (1) thinking about [insert non-obvious correlation] and (2) drinking a glass of milk.
This is both eligible and valid under the proposed statute, as anybody with a functioning mind who isn’t a worthless puddle of p u k e can see and admit in two seconds. And it’s just the tip of the iceberg of the sort of nonsense that will be immediately be filed and asserted by the truckload should this ridiculous bill (apparently written by kindergartners) be passed.
In the meantime, we are happy to take names of the bill’s proponents so we know exactly who to blame because there will a LOT to account for.
“Zero reason for the scribblings of a lunatic paranoid thin-skinned litigious MAGAt to be up top here or anywhere else for that matter.”
Lol — so many (inadvertent) admissions in the posting by Malcolm, including his one-bucketing, the Sprint Left ‘cancel’ mode, the anti-science religious dogmatic authoritarianism, and – of course – his innate projecting (what Dr. Lindsay calls the Iron Rule of Woke Projection, but what I well-preceded with the coined term of Accuse Others Of That Which Malcolm Does.
Zero reason for the scribblings of a lunatic paranoid thin-skinned litigious MAGAt to be up top here or anywhere else for that matter.
Just to be crystal clear on why this statute is going nowhere: while the legal profession is certainly a troubled one these days, as a whole it’s not nearly as corrupted and filled with MAGAts and Patent Huffers as the patent bar. Intelligent people (including millions of non-attorneys) who aren’t invested in turning half the country into infringers can see right through this laughable “fix” that does nothing except reset the clock a few decades to the most corrupt and rudderless point in the history of the US patent system.
Once again:
A method comprising (1) thinking about [insert non-obvious correlation] and (2) drinking a glass of milk.
This is both eligible and valid under the proposed statute, as anybody with a functioning mind who isn’t a worthless puddle of p u k e can see and admit in two seconds. And it’s just the tip of the iceberg of the sort of nonsense that will be immediately be filed and asserted by the truckload should this ridiculous bill (apparently written by kindergartners) be passed.
In the meantime, we are happy to take names of the bill’s proponents so we know exactly who to blame because there will a LOT to account for.
Translation: “Wah, anything I, Malcolm, do not like belongs in a one-bucket that must be silenced and canceled.”
Even if true that it is valid under utility considerations, who would ever try to practice such a claimed invention? Your comment is as divorced from reality as is the Supreme Court precedent on eligibility.
“Even if true that it is valid under utility considerations, who would ever try to practice such a claimed invention?”
How about “1. A method, comprising: thinking about a [non-obvious correlation about a disease]; and providing a suitable treatment to a patient”?
For a change, Mal’s not entirely wrong.
How about “1. A method, comprising: thinking about a [non-obvious correlation about a disease]; and providing a suitable treatment to a patient”?
That claim is presently eligible, even without the proposed statutory changes. That is Vanda.
I was intending the very generic “suitable treatment”. I would argue that’s invalid under 112, and that that would be a better avenue for rejecting it anyway.
But such a claim would certainly be eligible under this proposed bill. I don’t know that it would be currently – Vanda notwithstanding, you could argue the generic “provide a treatment” is insignificant post-solution activity, and the mental process “think about a correlation” is an abstract idea. This claim would preempt every potential treatment for whatever disease involves that correlation, including those currently unknown, which was a primary concern of SCOTUS.
Here’s a new invention (for argument’s sake) of something that I am calling “a hammer.”
As any homeowner knows, this invention “claimed in objective terms that distinguishes itself from all prior art” will NEVER cover all uses thereof —including those currently unknown.
While this was intended in a tongue-in-cheek manner, I am hoping you saw what I did there.
That is an eligible claim under current law if “providing” means actually “administering” (not just advising a course of treatment) AND the “treatment” itself is not in the prior art. Problems arise, for instance, if the treatment is “drink a glass of milk” or if the treatment recited in the actual claim is as generic as set forth in iDan’s hypothetical.
“AND the “treatment” itself is not in the prior art. Problems arise, for instance, if the treatment is “drink a glass of milk””
And then again, there is 35 USC 100(b) – emphasis added:
and includes a new use of a known process, machine, manufacture, composition of matter, or material.
You changed the example. I was responding to the claim he proposed.
“Even if true that it is valid under utility considerations”
Of course it’s valid under utility considerations. Milk is healthy for you, provides calcium, etc. Also it’s useful to know about a new correlation. Note that if you want to start using the utility prong of 101 to attack claims like this in court, you will be marching down a familiar path …
“who would ever try to practice such a claimed invention”
From the patentee’s perspective, the beauty of this kind of claim is that accused infringers need not “try” much of anything. Accused infringer’s need to know about the correlation (perhaps they read about it in a patent specification, or on a computer screen, or in a letter) and they need to drink milk. The more “important” the correlation, the more likely it will be known by the milk-drinkers.
Note again: this is just one variation of one type of awfulness that will be valid and eligible under the proposed statute.
Where the current eligible cases expose themselves as being ridiculous is when you take actual examples of machines that perform the functions described in the claims.
So, you have a machine performing information processing and the courts say it is “abstract.” So, you say, what claim would not be abstract that would cover my invention? Dead silence. Because there is no claim that would be held eligible that could give protect to the machine.
So, a machine that performs information processing is abstract according to the courts. Just insanity.
+1
“there is no claim that would be held eligible that could give protect to the book”
Very serious stuff here! Greg DeLassus approves of this sewer-level reasoning by a notorious Depends-sporting MAGAt who once equated critics of software patenting with I s l a mic terr 0r ists.
Zero substance. 100% attempt at defamation.
The Woke playbook at work.
“ 100% attempt at defamation.”
LOL. Pull your dentures out of your throat, gramps. You’re short of oxygen again.
Dennis this is the problem. “The Prophet” or “MM” just responds to any post that doesn’t fit his narrative with an intent to abuse the author of the post. He now as several followers that help him. It really is ridiculous that you permit this.
Meh, “this” has been ongoing for some 17 years now (less the just over a year hiatus that Malcolm took right after his 15 year anniversary) — as you yourself first pinpointed.
Malcolm will not shut down any sense of cognitive, reasoned discussion, because those of us actually willing to engage and reach such a thing see right through his apoplectic rants.
In fact, those who would side with him should be the ones that want Crouch to silence him as his Doofus attacks only make ‘that side’ look bad.
NightWriter: “Because there is no claim that would be held eligible that could give protect to the machine.”
Mal: “‘there is no claim that would be held eligible that could give protect to the book’
Very serious stuff here!”
Mal, a machine and a book are different things. You *do* understand that, right?
“a machine and a book are different things. You *do* understand that, right?”
They are both “manufactures” according to patent law and therefore NW’s whining about that he is sooooo offended that a claim reciting “a machine” could be deemed ineligible because it protects an abstraction (note how carefully and accurately I describe what is actually taking place, unlike NW) is EXACTLY the same as whining that a claim to “a book comprising non-obvious information” is ineligible as protecting an abstraction.
Like many other whiners who have little or no ability to desire to understand the issue, NW thinks he is making some profound point but he’s just showing us his bare behind (again).
The real issue that most normal people are able and willing to wrap our heads around and discuss honestly is that you can not have a sane and functioning eligibility screen if non-obvious abstractions (information and logic) are permitted to be protectable in prior art contexts. In other words, an eligibility screen that lets you claim a non-obvious abstraction merely by reciting “a computer” or “a book” or some other “manufacture” (or some “process”, like “drinking milk”) is totally worthless, at least from the perspective of people practicing the prior art. This is why the broad holding of Diehr was ignored, by the way. It made no sense and was logically kaput (like the proposed statute).
“They are both “manufactures” according to patent law…”
The book is an article of manufacture. The machine is, well, a machine. Perhaps you should review the statute?
“The real issue that most normal people are able and willing to wrap our heads around and discuss honestly is that you can not have a sane and functioning eligibility screen if non-obvious abstractions (information and logic) are permitted to be protectable in prior art contexts.”
Simply use the printed matter doctrine – or, broadly, the non-functional descriptive material doctrine. The non-obvious information content in a book has no patentable weight for distinguishing prior art, and so that book is effectively anticipated by old books.
That also applies to thinking about non-obvious correlations in your hypothetical. As the correlation doesn’t change the structure or function of drinking milk, it should be given no patentable weight, and the claim is anticipated by a kitten.
But then consider something like Diehr or McRo or Enfish – the claimed information *does* have a function that modifies the operation of the machine, and therefore should be given patentable weight.
“ Simply use the printed matter doctrine”
Oh please, you’re really going to play this game? In 2023. The so-called “printed matter doctrine” is a judicially created eligibility screen (based in the Constitution) that involves claim dissection. The proposed statute expressly nullifies all such doctrines and then expressly forbids engaging in the EXACT kind of logical analysis you suggest, i.e., selectively ignoring claim elements and comparing elements to the prior art.
Have you ever wondered WHY there is this eligibility screen known as the “printed matter doctrine”? Maybe you should think about that.
“ The non-obvious information content in a book has no patentable weight”
Why not? It changes the function of the book. It can turn a book that has no use except as a paperweight into a book that could save children’s lives. Why draw this arbitrary line between information in a book versus information on a computer screen? Why draw the arbitrary line between look-up tables in a book and an instructable computer that uses a look up table because you instructed it to do that? Does it matter it all that computers using look up tables are old in the art? Seems like it should unless your idea of a “new function” is performing the identical function but giving the bits different “meanings”.
“The proposed statute expressly nullifies all such doctrines and then expressly forbids engaging in the EXACT kind of logical analysis you suggest, i.e., selectively ignoring claim elements and comparing elements to the prior art.”
The proposed statute expressly forbids ignoring claim elements or comparing them to the prior art “in determining whether, under this section, a claimed invention is eligible for a patent.” But the printed matter doctrine is not a way to determine eligibility. In every single printed matter case, the claimed invention was undeniably statutorily eligible.
““ The non-obvious information content in a book has no patentable weight”
Why not?”
It’s right there in the rest of that paragraph (which is probably why you cut the quote off there). Please review MPEP 2111.05 if you would like to discuss this, Mal. I’d rather not waste time on basic questions.
“ the printed matter doctrine is not a way to determine eligibility.”
LOL. What? Of course it’s an eligibility screen. Again: what is the point of eliminating a class of claims that recite a non-obvious abstraction (like information) and a prior art machine (like a computer screen or a loudspeaker). What’s the point of doing that? Why were courts compelled to invent this “claim dissecting” doctrine?
“In every single printed matter case, the claimed invention was undeniably statutorily eligible.”
Totally wrong. The truth is that every claim that was invalidated under the PMD is also ineligible and for the same reason: you can’t use patents to protect abstractions (like information) in a prior art context. Do you understand why this is the case? Do you understand why abstractions like information are treated differently, and do you understand why merely reciting the prior art in addition to the abstraction is insufficient as a matter of law?
Most people can figure this out.
Malcolm,
You have been the most dishonest person EVER when it comes to the Doctrine of Printed Matter and its important exceptions.
You have zero, no wait, below zero credibility on that topic.
“if non-obvious abstractions (information and logic) are permitted to be protectable in prior art contexts.”
What does that even mean? You have SO much gobbedlygook….
“Greg DeLassus approves of this sewer-level reasoning by a notorious Depends-sporting MAGAt who once equated . . . ”
You really are lower than a NYC sewer
And I agree with Greg on little
Information processing takes space, time, and energy. Information processing is a physical process. How the information process task is performed can affect the amount of time, space, and energy used to perform the information processing task by orders of magnitude.
Many opinions by judges talk as if processing by humans is performed by a mind in the ether and not by a human brain that requires space, time, and energy to perform the information processing task. A person actually consume more calories when performing information processing tasks such as studying for an exam than they do when performing less active information processing tasks such as watching a movie or resting.
“ Many opinions by judges talk as if processing by humans is performed by a mind in the ether and not by a human brain that requires space, time, and energy to perform the information processing task.”
Two related reasons for this: most judges are normal people and not miserable patent huffing m 0 r 0 n s like you, and also because whether humans consume energy when they think is completely irrelevant to patent law.
I have chided Night Writer in the past for his (strict) reliance on his analogy, and your missing his point here is one of those reasons why.
It is a clear miss in your response of, “also because whether humans consume energy when they think is completely irrelevant to patent law.” because a) the patent claims at point are not humans, but machines and b) machines that are improvements along the lines of using reduced energy to arrive at an end product are eminently the domain of patents.
Further still, and a point that you, Malcolm, have never addressed, is that most innovation in the current Kondratiev wave will be information-based. For all your whining about “grown-up arts” (a typical item from your short script), your mind is stuck in a pre-Kondratiev fifth wave, and based on a non-grown-up lack of full understanding of mechanisms involved. As we are NOW seeing though, corporations such as those in the bio-molecular spaces are using AI as substantial elements in their innovation efforts — in essence, “growing up” by embracing the very information tech that you react so emotionally against.
I am not “against” information processing or computing. That would be silly. Also, you know this already but apparently you can’t help yourself so the falsehoods just flow right out.
I am “against” the idea of granting patents that protect “new” logic and “new” information. And even more “against” granting patents on logic where the logic is not even articulated (or articulatable) but described instead by the result allegedly achieved.
There is no contradiction whatsoever in holding these views about instructable computers and patents on computer instructions. On the contrary …
You are against protecting a form of innovation that you would prefer to use without regard to innovation protection.
That is the epitome of being anti-patent.
The least you could do is own up to it.
+2
Just to be crystal clear on why this statute is going nowhere: while the legal profession is certainly a troubled one these days, as a whole it’s not nearly as corrupted and filled with MAGAts and Patent Huffers as the patent bar. Intelligent people (including millions of non-attorneys) who aren’t invested in turning half the country into infringers can see right through this laughable “fix” that does nothing except reset the clock a few decades to the most corrupt and rudderless point in the history of the US patent system.
Once again:
A method comprising (1) thinking about [insert non-obvious correlation] and (2) drinking a glass of milk.
This is both eligible and valid under the proposed statute, as anybody with a functioning mind who isn’t a worthless puddle of p u k e can see and admit in two seconds. And it’s just the tip of the iceberg of the sort of nonsense that will be immediately be filed and asserted by the truckload should this ridiculous bill (apparently written by kindergartners) be passed.
In the meantime, we are happy to take names of the bill’s proponents so we know exactly who to blame because there will a LOT to account for.
Who is this “we” that occupies your mind?
Pretty much every decent honest person who can read and who isn’t a patent huffing s c u m b a g.
Stand up and be counted, folks. It’s not like this is a new issue.
I really should not be amazed at your lack of ability to be in touch with reality.
Your reply is nothing more than your one-bucketing (“my” bucket are the decent folk and anyone else is [denigration]).
Your epithet of “patent huffing” is nothing more than you being anti-patent.
But please, you be you and try (again) to gaslight that you are “pro-patent.”
Your problem is that you live in a bubble of idiocy.
Get out in the world and meet people who aren’t glibertarian knobs or patent huffing B-holes and ask them what they think about being strictly liable for infringing the sorts of disgusting claims that will be eligible and valid under this insane statute.
“Get out in the world and meet people who aren’t glibertarian knobs or patent huffing B-holes and ask them what they think about being strictly liable for infringing…”
Your errors abound.
First, I very much do “get out” in the real world and interact with a full spectrum of people (hint: your one-bucketing reveals that YOU do not do this).
Second, if a patent is duly granted (and given your hyperbolic “it is eligible and valid”), then people infringing are strictly liable.
But you would rather dwell in your odd dream fever neurosis of a “drinking milk plus,” without regard to reality.
According to you, this ‘nightmare’ already existed and the legislation would reinvoke a prior dystopian state.
No such state existed.
But hey, maybe that “we” that you speak of could share a list of such dystopian, world-ending patents and the “culprits” that supported such nefarious intrusions on “merely thinking.”
Ah, it’s the “I was born yesterday” schtick. Little Baby Billy slurping on his thumb. Cute!
There is no “born yesterday” in my reply to you.
Sorry, not sorry.
Maybe try again without misconstruing my post.
“Stand up and be counted, folks. It’s not like this is a new issue.”
Which begs the question: why do you always get it wrong?
For more analysis of this [6th?] attempt among some Senators for a 101 or Sup. Ct. unpatentable subject matter case law reform Bill see: link to patentspostgrant.com?
[P.S. Is any House committee even interested these days?]
Issa….
Pretty much, ‘Nuf said.
Thanks Paul. Given how he spends the lion’s share of his time, it’s no surprise at all that Scott wants to hold on to all the cars in his post-grant $$$ gravy train.
Astute.
And while some analysis is present, some pronouncements are provided in a more edict form, and some (clear and convincing status) is simply wrong in its conclusory tones.
Also, not sure if the link side changed, but what was in that link belongs only to the PREVAIL Act, and I did not see any comments on the eligibility side of the coin.
Scott’s comments (now at IPWatchdog) on the eligibility topic:
“Scott McKeown, Ropes & Gray
Patent Eligibility Restoration Act
“The Patent Eligibility Restoration Act jettisons over a half century of 101 jurisprudence. That sounds quite extreme — unless of course, you have tried to make any sense of that jurisprudential hairball. The only way to fix this food fight mess is to hit the reset button. While the proposed scope of eligibility might be argued as unduly expansive, a starting point that erases the current morass of conflicting opinions and failed rubrics is the most logical way out (sorry academics). With further refinement, this effort can bring much needed clarity and predictability to subject matter eligibility determinations.”
3. Claims as a Whole: When determining eligibility, the tribunal must consider the claims as a whole without discounting or disregarding any claim element and without regard to its novelty or conventionality.
Too funny. No comment from Dennis Crouch? The same Dennis Crouch who has a soft spot for John Eastman?
LOL
Just to be crystal clear, this entire “fix” goes nowhere with this bizarrely s t u p i d and d.o.a. restriction and everyone here knows why. What’s the point, besides maybe taking money from some advocacy group for corrupt (or mentally ill) patent huffers?
A method comprising (1) thinking about [insert non-obvious correlation] and (2) drinking a glass of milk.
This is eligible and valid under the proposed statute, as anybody with a functioning mind who isn’t a worthless puddle of p u k e can see and admit in two seconds.
This is the example that you always trot out in these discussions. So what? Why should anyone care if this claim gets to grant under the revised statute? What is the practical harm that you foresee in that hypothetical scenario?
This claim would be well nigh impossible to enforce. How would a plaintiff prove what you were thinking while you drink your milk? Moreover, it has no commercial value, so the damages would be merely nominal. The patentee who gets this claim poses no real nuisance threat to any American. Even when granted, this claim is a damp squib.
“Why should anyone care if this claim gets to grant under the revised statute?”
Golly gee, maybe because being strictly liable for thinking about something while drinking a glass of milk is … f’ing insane? And only a patent huffing a h 0 l e would ever pretend otherwise?
“This claim would be well nigh impossible to enforce. ”
Really? Does your wife want to be the test case?
“Moreover, it has no commercial value”
Really? Patents that turn people into infringers for thinking about non-obvious medically relevant facts have “no commercial value”? Really?
Note that the example I’m “trotting out” is just one of many, many disgusting examples. You can’t think of any others, Greg DeLassus? Really?
If even Greg is getting tired of your banal short list, maybe (in response) do not forget “claims as a whole” in your hurry to have an emotional meltdown.
“MM/Prophet is probably one of the more adjusted people here”
link to patentlyo.com
Too funny.