Punishing Prometheus: Part V – The Long Punt and the Improbable Return

Patent, , ,

Guest Post by Robert R. Sachs of Fenwick & West LLP
Read Part I; Part II; Part III; and Part IV.

The Bilksi decision punted on the question of what is an abstract idea, leaving it the Federal Circuit to devise a test. Judge Rader and Judge Dyk proposed different versions of an “I know it when I see it” test. Sadly, the Prometheus decision is of a piece with Judge Dyk’s approach—boiling the claim down to a point where the court can say it’s nothing more than _____  [pick at least one: abstract idea, law of nature, natural phenomena].

But interestingly the Court punted even more deeply in Prometheus—and perhaps, just perhaps, gave inventors and us crafty patent attorneys an out, a chance for a long return. A key premise of the Court’s analysis is that all of the claim elements, apart from the alleged law of nature, were “well­ understood, routine, conventional activity.” This not the normal state of affairs, either before the USPTO or before a court in patent litigation. The Court thus held out for another day:

We need not, and do not, now decide whether were the steps at issue here less conventional, these features of the claims would prove sufficient to invalidate them.

This sentence, a model of clarity, not it is.  It seems to suggest that had the other steps been “unconventional,” that is non-obvious, the claim would have stood a chance. This is how the Court rationalized the Diehr decision, noting that the steps of “installing rubber in a press, closing the mold, constantly determining the temperature of the mold, constantly re- calculating the appropriate cure time through the use of the formula and a digital computer, and automatically opening the press at the proper time” were “nowhere suggested” as being “obvious, already in use, or purely conventional.” But of course the Diehr court never “suggested” that because the novelty and obviousness of that process was not before the Court then, and it (wisely) did not frame the discussion in that way, no less because it has already stated that it was not going to dissect the claim into old and new parts.  To position Diehr in this way is highly disingenuous of the Court.  Moreover, I have a very strong feeling that even 54 years ago in 1968, putting rubber in mold, putting the mold in the oven, and taking it out of the oven when it was done was pretty well known in the art. 

In any event, if this hint is correct, then there remains a path to patent eligibility, one that seems both relatively straight forward and fraught with complexity, much like any long punt return: just run the ball all the way down the field.  On our playing field, you need only (!) make sure that there are at least some elements that “apply” whatever law of nature is in your claim in an “unconventional” manner.  

Surely, good advice. Alas, there are several problems with such a facile rule. First, once you start dissecting a claim and evaluating each element by itself, it becomes very easy to map each element onto some prior art. That is after all, what many patent examiners do; I’m just sayin’.

Second, some claims, like those in Prometheus, are by designed to reflect the business operation of the inventor and his company, and avoid problems such as multi-actor infringement. For example, had Prometheus added more “unconventional” limitations to the claims, in particular reciting steps relating to the manner of treating the patient based upon the thiopurine level, the claim would have had significantly less commercial value, if any, since Prometheus was in the business of testing for diseases, not in the business of treating them.

This is, of course, something for which the Court does not evidence an understanding or a concern. But it is something that the Court should both understand and care about—since the entire purpose of the patent law is to encourage innovation through economic incentives.  If that is the theory, then the incentives to patent must be aligned with the value proposition that the innovator seeks to exploit.  It follows that reducing the value of the incentive should reduce the level of innovation. (I’m not saying here that in fact this is true; I’m merely stating this as hypothesis).

What is the Law?

The Court has spliced together disparate, essentially contrary opinions into a legal virus, a self-validating meme that cannot be defeated by logic or example. I said earlier that the Court’s analysis was “not even wrong.”  The Court’s reliance on claim dissection, on hand waving rules of “is it enough?” and “does it add something significant?”; its confusing of statistical relationships with “natural laws;” and its shear daftness in believing that Section 101 must lord over Sections 112, 102 and 103 all combine to create a powerful “means for” invalidating any patent, now extant or in the future.  Give me any patent claim, and I can craft an argument using the Court’s Prometheus analysis that it is invalid. And like any theory that is not falsifiable—that is not even wrong—you could not logically defeat my argument: for I could always say: “it’s not enough.” 

Zeus punished Prometheus for stealing fire—knowledge—from the gods of Mount Olympus and giving it to Man: chaining him to a rock so his innards may be eaten by a bird of prey. So too has the Court sat in judgment of the modern Prometheus, for “stealing” a small bit of knowledge from the equivalent—and equivalently false—god, the laws of nature. Like their namesake, this Prometheus has had its innards exposed for the taking, and its discovery is now available for anyone to feast upon.

There may or may not be laws of nature. Even Einstein’s theory of relativity is not immune to criticism. But there is a law which is universal, immutable and everlasting, a law that will be confirmed yet again by this decision: The law of unintended consequences. 


 

Patently-O Bits & Bytes by Lawrence Higgins

Patent, , ,

Are Companies Acting as Government Contractors Immune From Patent Infringement Suits?

  • The CAFC, in Zoltek Corp. v. United States, No. 2009-5135 (Fed. Cir. Mar. 14, 2012), Zoltek was the assignee of a patent for manufacturing carbon fiber sheets with controlled surface electrical resistivity. The carbon fiber at issue was used by Lockheed Martin to build the F-22 fighter jet, pursuant to a government contract. The manufacturing of the fibers started in Japan, and thereafter imported into the US, where the fibers were processed into sheets and used for F-22.

    The court held that when the US is subject to suit under 28 USC 1498(a) for alleged infringement of a patent by a contractor acting by and for the US, the contractor by law is rendered immune from individual liability for the alleged infringement. The court further held that, when a product of a patented process is… imported into the US by or for the US, there is direct infringement under a 1498 action. (In addition the US waives sovereign immunity) Opinion

    28 USC 1498

    • (a) Whenever an invention described in and covered by a patent of the United States is used or manufactured by or for the United States without license of the owner thereof or lawful right to use or manufacture the same, the owner's remedy shall be by action against the United States in the United States Court of Federal Claims for the recovery of his reasonable and entire compensation for such use and manufacture.
    • (c)The provisions of this section shall not apply to any claim arising in a foreign country.

USPTO Will Admit 10 Additional Schools into its Patent Law Clinic Certification Pilot Program

  • The Pilot Program started began in 2008 with 6 schools and expanded in 2010 to 16 schools. Students in the patent program can expect to draft and file a patent application and respond to an office action. Each law school clinical program must meet and maintain the requirements for USPTO certification in order for student practitioners to practice before the USPTO. The program provides real-world experience to students interested in the field of IP. Submissions will be accepted through June 1, 2012. [Link]

Patent Jobs:

  • Hoffmann & Baron is seeking a patent attorney/agent with a minimum of 3-5 years of experience in the areas of computers and business methods to work in their Parsippany, NJ office. [Link]
  • Faegre Baker Daniel's is searching for a patent agent with a degree in EE or CS and patent experience to work in their Chicago office. [Link]
  • Larson Newman is looking for patent attorneys with an EE degree and 3-5 years of experience to work in their Austin office. [Link]
  • Akerman Senterfitt is seeking a chemical patent associate with 1-3 years of experience to work in their Denver office. [Link]
  • Gilead Sciences is searching for patent litigation counsel with a BS in life sciences and 5-8 years of experience to work at their Foster City, CA office. [Link]
  • Carlson, Gaskey & Olds is looking for a patent attorney with 4-8 years of patent litigation experience to work at their Birmingham, MI office. [Link]
  • Klarquist Sparkman is seeking a litigation associate with 1-2 years of experience to work in their Portland office. [Link]
  • Klarquist Sparkman is seeking a patent attorney/agent with an advanced degree in organic chemistry and 3+ years of experience to work in their Portland office. [Link]
  • Cardinal Intellectual Property is looking for a patent search professional with a JD degree and a technical degree to work remotely. [Link]
  • Berkeley Lab is searching for a patent attorney with at least 5 years of experience as a patent attorney/agent. [Link]
  • Faegre Baker Daniels is seeking a trademark litigation associate with 2-3 years of trademark and copyright litigation experience to work in their Minneapolis office. [Link]
  • Cardinal Intellectual Property is looking for a patent search attorney to work at their Evanston, IL location. [Link]
  • Wellstat Management Company is searching for a patent attorney/agent with at least 5 years of experience and a background in biomedical or mechanical engineering to work at their Gaithersburg, MD location. [Link]
  • Stroock
  • Faegre Baker Daniels is looking for a junior patent litigation associate with 1-2 years of experience to work in their Denver or Boulder office. [Link]
  • Nixon & Vanderhye is searching for a patent attorney/agent with experience drafting and prosecuting patent applications to work in their Arlington, VA office. [Link]
  • The DuPont Company is seeking patent agents with experience in preparing and prosecuting patent applications under USPTO TC1600 to work at their Wilmington, DE location. [Link]
  • Covidien is looking for an IP attorney with 4-6 years of experience to work at their New Haven, CT location. [Link]
  • Hagens Berman is searching for a patent litigation attorney with 3+ years of experience to work at their Seattle office. [Link]
  • The USPTO is seeking patent examiners with an engineering degree to work at their Alexandria or Detroit locations. [Link]

Upcoming Events:

  • On April 10th join the United States Patent and Trademark Office Managers, Design Examiners, Design Patent Practitioners and Industrial Designers from across the country in a lively and thought-provoking discussion at the USPTO. They will discuss rules and techniques relating to proper graphic descriptions of design patent claims, confer on best practices aimed at the broadest protection of industrial designs in the United States, and hear from members of the design community on the importance of strong industrial design protection in an increasingly design-conscious world. [Link]
  • The IP Section of the Atlanta Bar Association and Georgia State University Law School will hold its 8th annual SpringPosium at the Barnsley Gardens resort on April 13 &14. Some example seminars will include: the new America Invents Act, Federal Court best practices, IP law and life practice management, and recent developments in damages law. Guest speakers include: Clerk of Court and Chief Deputy Clerk of the US Court of Appeals for the Federal Circuit, Jan Horbaly and Pamela Twiford and Clerk of Court of the US District Court for the North District of Georgia, James Hatten.
  • The European Generic Medicines Association is hosting the 10th EGA International Symposium regarding Biosimilar Medicines on April 19-20 in London. Greenblum & Bernstein is providing a pre-symposium workshop on April 19, 2012 titled: Biosimilars In America: IP Strategy and Due Diligence. The workshop will explore the mechanics of the Biologics Act with an emphasis on how the Act relates to the involved intellectual property and how the intellectual property may impact the biosimilar applicant's strategy for entering the market. [Link]
  • The University of Colorado School of Law will hold a conference on April 24th. The conference, Patents on the Range or Wild Frontier, will discuss the future of patent policy. Guest speakers include: David Kappos, Don Rosenberg, John Thorne, Paul Ohm, Bernard Chao, and many others. [Link]
  • ACI will hold its 6th Annual Paragraph IV Disputes conference on April 24-25 in New York City. The conference will cover topics such as: the impact of the AIA on Hatch-Waxman litigation, claim construction, prior art obviousness and obvious-type double patenting, and many other topics. (Patently-O readers register with PO 200 for a discount). [Link]
  • The World Research Group is holding its 4th Annual Corporate IP Counsel Forum on May 16-17 in NYC. The Corporate IP Counsel Forum will address key issues and uncover latest developments related to IP in the form of case studies and panel discussions. Some of the topics include, but are not limited to: The America Invents Act and its impact on patent litigation and prosecution, IP monetization strategies for small and mid-size companies, Patent valuation, The top 10 most influential court cases in IP this year, Patent eligibility, Invention mining, Divided infringement, Best practices for combating non-practicing entities, Appeals to the U.S. Court of Appeals for the Federal Circuit, Copyright infringement. [Link]
  • The Annual DRI Business Litigation and Intellectual Property Seminar will be held May 16-18, 2012, in New York City. Attendees will learn trial and appellate advocacy skills in business litigation get up-to-date on the last trends in intellectual property and business litigation, and network with in-house counsel, business and intellectual property trial lawyers and experts from across the country. Speakers include: Former ABA President, Dennis W. Archer, Dennis Archer PLLC, and David Leitch, VP and General Counsel of Ford Motor Company. [Link]
  • The San Francisco Intellectual Property Law Association is hosting its annual seminar in Healdsburg, the center of one of California's best wine regions, from June 1-3. Speakers include Hon. Margaret A. (Peggy) Focarino, USPTO Commissioner of Patents, Hon. Robert Stoll, former USPTO Commissioner of Patents, Hon. Gerard F. Rogers, Chief Administrative Trademark Judge of the TTAB, Hon. Randy R. Rader, Chief Judge of Federal Circuit, Hon. Susan Illston, Judge of N.D.CA, Hon. Edward J. Davila, Judge of N.D.CA, as well as professors and leading practitioners. [Link]
  • On May 21-22 Ronald Slusky will hold a seminar in Chicago, the seminar teaches a comprehensive approach to analyzing inventions and capturing them in a sophisticated set of patent claims. The seminar is based on Ronald's book, Invention Analysis and Claiming: Patent Lawyer's Guide. [Link]
  • ACI will hold a Biosimilars conference May 22-23 in New York, NY. The conference will focus on the legal, regulatory, and commercial realities of biosimilars. [Link]

Contact Lawrence.Higgins@patentlyo.com with leads for future Bits and Bytes.

Patently-O Bits & Bytes by Lawrence Higgins

Patent, , ,

Are Companies Acting as Government Contractors Immune From Patent Infringement Suits?

  • The CAFC, in Zoltek Corp. v. United States, No. 2009-5135 (Fed. Cir. Mar. 14, 2012), Zoltek was the assignee of a patent for manufacturing carbon fiber sheets with controlled surface electrical resistivity. The carbon fiber at issue was used by Lockheed Martin to build the F-22 fighter jet, pursuant to a government contract. The manufacturing of the fibers started in Japan, and thereafter imported into the US, where the fibers were processed into sheets and used for F-22.

    The court held that when the US is subject to suit under 28 USC 1498(a) for alleged infringement of a patent by a contractor acting by and for the US, the contractor by law is rendered immune from individual liability for the alleged infringement. The court further held that, when a product of a patented process is… imported into the US by or for the US, there is direct infringement under a 1498 action. (In addition the US waives sovereign immunity) Opinion

    28 USC 1498

    • (a) Whenever an invention described in and covered by a patent of the United States is used or manufactured by or for the United States without license of the owner thereof or lawful right to use or manufacture the same, the owner's remedy shall be by action against the United States in the United States Court of Federal Claims for the recovery of his reasonable and entire compensation for such use and manufacture.
    • (c)The provisions of this section shall not apply to any claim arising in a foreign country.

USPTO Will Admit 10 Additional Schools into its Patent Law Clinic Certification Pilot Program

  • The Pilot Program started began in 2008 with 6 schools and expanded in 2010 to 16 schools. Students in the patent program can expect to draft and file a patent application and respond to an office action. Each law school clinical program must meet and maintain the requirements for USPTO certification in order for student practitioners to practice before the USPTO. The program provides real-world experience to students interested in the field of IP. Submissions will be accepted through June 1, 2012. [Link]

Patent Jobs:

  • Hoffmann & Baron is seeking a patent attorney/agent with a minimum of 3-5 years of experience in the areas of computers and business methods to work in their Parsippany, NJ office. [Link]
  • Faegre Baker Daniel's is searching for a patent agent with a degree in EE or CS and patent experience to work in their Chicago office. [Link]
  • Larson Newman is looking for patent attorneys with an EE degree and 3-5 years of experience to work in their Austin office. [Link]
  • Akerman Senterfitt is seeking a chemical patent associate with 1-3 years of experience to work in their Denver office. [Link]
  • Gilead Sciences is searching for patent litigation counsel with a BS in life sciences and 5-8 years of experience to work at their Foster City, CA office. [Link]
  • Carlson, Gaskey & Olds is looking for a patent attorney with 4-8 years of patent litigation experience to work at their Birmingham, MI office. [Link]
  • Klarquist Sparkman is seeking a litigation associate with 1-2 years of experience to work in their Portland office. [Link]
  • Klarquist Sparkman is seeking a patent attorney/agent with an advanced degree in organic chemistry and 3+ years of experience to work in their Portland office. [Link]
  • Cardinal Intellectual Property is looking for a patent search professional with a JD degree and a technical degree to work remotely. [Link]
  • Berkeley Lab is searching for a patent attorney with at least 5 years of experience as a patent attorney/agent. [Link]
  • Faegre Baker Daniels is seeking a trademark litigation associate with 2-3 years of trademark and copyright litigation experience to work in their Minneapolis office. [Link]
  • Cardinal Intellectual Property is looking for a patent search attorney to work at their Evanston, IL location. [Link]
  • Wellstat Management Company is searching for a patent attorney/agent with at least 5 years of experience and a background in biomedical or mechanical engineering to work at their Gaithersburg, MD location. [Link]
  • Stroock
  • Faegre Baker Daniels is looking for a junior patent litigation associate with 1-2 years of experience to work in their Denver or Boulder office. [Link]
  • Nixon & Vanderhye is searching for a patent attorney/agent with experience drafting and prosecuting patent applications to work in their Arlington, VA office. [Link]
  • The DuPont Company is seeking patent agents with experience in preparing and prosecuting patent applications under USPTO TC1600 to work at their Wilmington, DE location. [Link]
  • Covidien is looking for an IP attorney with 4-6 years of experience to work at their New Haven, CT location. [Link]
  • Hagens Berman is searching for a patent litigation attorney with 3+ years of experience to work at their Seattle office. [Link]
  • The USPTO is seeking patent examiners with an engineering degree to work at their Alexandria or Detroit locations. [Link]

Upcoming Events:

  • On April 10th join the United States Patent and Trademark Office Managers, Design Examiners, Design Patent Practitioners and Industrial Designers from across the country in a lively and thought-provoking discussion at the USPTO. They will discuss rules and techniques relating to proper graphic descriptions of design patent claims, confer on best practices aimed at the broadest protection of industrial designs in the United States, and hear from members of the design community on the importance of strong industrial design protection in an increasingly design-conscious world. [Link]
  • The IP Section of the Atlanta Bar Association and Georgia State University Law School will hold its 8th annual SpringPosium at the Barnsley Gardens resort on April 13 &14. Some example seminars will include: the new America Invents Act, Federal Court best practices, IP law and life practice management, and recent developments in damages law. Guest speakers include: Clerk of Court and Chief Deputy Clerk of the US Court of Appeals for the Federal Circuit, Jan Horbaly and Pamela Twiford and Clerk of Court of the US District Court for the North District of Georgia, James Hatten.
  • The European Generic Medicines Association is hosting the 10th EGA International Symposium regarding Biosimilar Medicines on April 19-20 in London. Greenblum & Bernstein is providing a pre-symposium workshop on April 19, 2012 titled: Biosimilars In America: IP Strategy and Due Diligence. The workshop will explore the mechanics of the Biologics Act with an emphasis on how the Act relates to the involved intellectual property and how the intellectual property may impact the biosimilar applicant's strategy for entering the market. [Link]
  • The University of Colorado School of Law will hold a conference on April 24th. The conference, Patents on the Range or Wild Frontier, will discuss the future of patent policy. Guest speakers include: David Kappos, Don Rosenberg, John Thorne, Paul Ohm, Bernard Chao, and many others. [Link]
  • ACI will hold its 6th Annual Paragraph IV Disputes conference on April 24-25 in New York City. The conference will cover topics such as: the impact of the AIA on Hatch-Waxman litigation, claim construction, prior art obviousness and obvious-type double patenting, and many other topics. (Patently-O readers register with PO 200 for a discount). [Link]
  • The World Research Group is holding its 4th Annual Corporate IP Counsel Forum on May 16-17 in NYC. The Corporate IP Counsel Forum will address key issues and uncover latest developments related to IP in the form of case studies and panel discussions. Some of the topics include, but are not limited to: The America Invents Act and its impact on patent litigation and prosecution, IP monetization strategies for small and mid-size companies, Patent valuation, The top 10 most influential court cases in IP this year, Patent eligibility, Invention mining, Divided infringement, Best practices for combating non-practicing entities, Appeals to the U.S. Court of Appeals for the Federal Circuit, Copyright infringement. [Link]
  • The Annual DRI Business Litigation and Intellectual Property Seminar will be held May 16-18, 2012, in New York City. Attendees will learn trial and appellate advocacy skills in business litigation get up-to-date on the last trends in intellectual property and business litigation, and network with in-house counsel, business and intellectual property trial lawyers and experts from across the country. Speakers include: Former ABA President, Dennis W. Archer, Dennis Archer PLLC, and David Leitch, VP and General Counsel of Ford Motor Company. [Link]
  • The San Francisco Intellectual Property Law Association is hosting its annual seminar in Healdsburg, the center of one of California's best wine regions, from June 1-3. Speakers include Hon. Margaret A. (Peggy) Focarino, USPTO Commissioner of Patents, Hon. Robert Stoll, former USPTO Commissioner of Patents, Hon. Gerard F. Rogers, Chief Administrative Trademark Judge of the TTAB, Hon. Randy R. Rader, Chief Judge of Federal Circuit, Hon. Susan Illston, Judge of N.D.CA, Hon. Edward J. Davila, Judge of N.D.CA, as well as professors and leading practitioners. [Link]
  • On May 21-22 Ronald Slusky will hold a seminar in Chicago, the seminar teaches a comprehensive approach to analyzing inventions and capturing them in a sophisticated set of patent claims. The seminar is based on Ronald's book, Invention Analysis and Claiming: Patent Lawyer's Guide. [Link]
  • ACI will hold a Biosimilars conference May 22-23 in New York, NY. The conference will focus on the legal, regulatory, and commercial realities of biosimilars. [Link]

Contact Lawrence.Higgins@patentlyo.com with leads for future Bits and Bytes.

Self-Replicating Inventions: Supreme Court asks for Government’s Views in Monsanto Patent Exhaustion Case

Patent, ,

By Dennis Crouch

Bowman v. Monsanto (Supreme Court Docket No. 11-796, 2012)

In 2011, the Federal Circuit again affirmed that Monsanto’s genetically modified seeds patents can be used to stop farmers from saving and replanting the GM seeds. The farmer, Vernon Bowman, then petitioned the Supreme Court asking for a writ of certiorari – presenting the following question:

Patent exhaustion delimits rights of patent holders by eliminating the right to control or prohibit use of the invention after an authorized sale. In this case, the Federal Circuit refused to find exhaustion where a farmer used seeds purchased in an authorized sale for their natural and foreseeable purpose – namely, for planting. The question presented is:

Whether the Federal Circuit erred by (1) refusing to find patent exhaustion in patented seeds even after an authorized sale and by (2) creating an exception to the doctrine of patent exhaustion for self-replicating technologies?

In its brief-in-opposition, Monsanto reformulated the question as follows:

Whether the Federal Circuit correctly ruled that Monsanto’s patent rights in biotechnology related to genetically modified plants (here, patented technologies that make soybeans resistant to glyphosate-based herbicides) are independently applicable to each generation of soybeans embodying the invention, such that a grower who, without authorization from Monsanto, creates a new generation of genetically modified soybeans infringes Monsanto’s patents.

CVSG: Now, the Supreme Court has invited the Solicitor General to file briefs expressing the views of the United States in the case. This is a significant step toward grant because it shows some interest in the case. Typically a call for the views of the Solicitor General (CVSG) requires the vote of at least four justices. However, those votes appear to be easier to obtain than a vote to grant certiorari or a vote to reverse the lower court. A study of 30,000 petitions reported that a petition on the paid docket is four times more likely to be granted once the Court calls for a response. Thompson and Wachtell, An Empirical Analysis of Supreme Court Certiorari Petition Procedures: The Call for Response and the Call for the Views of the Solicitor General, 16 George Mason L. Rev. 237 (2009). In his study of patent cases, Professor Duffy found that the SG’s opinion is extremely important in predicting whether the Supreme Court decides to hear a case on the merits. John F. Duffy, The Federal Circuit in the Shadow of the Solicitor General, 78 Geo. Wash. L. Rev. 518 (2010).

DOJ – USPTO – FTC – ETC.: The USPTO would almost certainly agree with the Federal Circuit’s opinion and recommend against a grant of certiorari. Of course, the Supreme Court is not asking the opinion of Raymond Chen (USPTO Solicitor General), but rather the opinion of Solicitor General of the United States (acting on behalf of the US). In the power struggle, the USPTO is only one voice and may well lose-out here to other interests (as it has in other recent cases). In 2005, the SG (then Paul Clement) filed a brief in the parallel case of McFarling v. Monsanto recommending that the petition be denied. The McFarling petition did not focus on exhaustion. However, in a footnote the SG brief noted that “whether (and, if so, to what extent) the patent-exhaustion doctrine applies to restrictions on the use of a materially identical patented product that was produced by the patented product sold by the patentee” is “novel.”

Mark Walters of Frommer Lawrence & Haug is lead counsel for Bowman. Seth Waxman is counsel of record for Monsanto.

London Masterclass: The Real, Dramatic and Ongoing Changes to United States Patent Law and their Impact on the Practice of Patent Law

Patent

London_underground_logo
By Dennis Crouch

This summer, I will be leading a professional summer course (masterclass) on U.S. Patent Law at the University College of London (UCL) Faculty of Laws. The event is sponsored by UCL and chaired by the Rt Hon Prof. Sir Robin Jacob. In three two-hour sessions, we will look at recent changes to the US patent law and their impact on the practice of law – with a particular focus on issues involving UK and European patent law professionals and their clients.

The three sessions are as follows:

  • Monday 18 June – 6-8pm: Changes in the Way Patents are Prosecuted in the US.
  • Thursday 28 June – 6-8pm: US Patent Litigation Structure and Changes to the Process.
  • Wednesday 4 July – 6-8pm: Litigating at the USPTO (Pre and Post-Grant); Subject Matter Eligibility.

The course is geared toward patent law professionals, experienced users of the patent system, and others considering entering the field. I am looking forward to meeting you there and perhaps the pub after.

UCL is offering an early-bird special for those who sign-up early:

Guest Post: Prometheus v Mayo – A European view

Patent, , ,

Guest post by Paul Cole, European Patent Attorney, Lucas & Co.

How is the Prometheus invention viewed by the EPO, and what are the differences between the reasoning of EPO appeal boards and of the US Supreme Court concerning patent eligibility?

An indication is that the EPO granted EP-B-1114403 (Seidman) which corresponds to US 6355623 and has a main claim that reads:

An in vitro method for determining efficacy of treatment of a subject having an immune-mediated gastrointestinal disorder or a non-inflammatory bowel disease (non-IBD) autoimmune disease by administration of a 6-mercaptopurine drug, comprising

determining in vitro a level of 6-thioguanine in a sample from said subject having said immune-mediated gastrointestinal disorder or said non-inflammatory bowel disease (non-IBD) autoimmune disease,

wherein said treatment is considered efficient if the level of 6-thioguanine is in the range of about 230 pmol per 8×108 red blood cells to about 400 pmol per 8×108 red blood cells.

The above claim is not an outlier. The forward references of the '633 patent include US 7524851, whose equivalent EP-B-1695092 has a main claim that reads:

A method for monitoring azathioprine therapy in an individual, said method comprising

measuring the level of 6-thioguanosine diphosphate and 6-thioguanosine triphosphate in a sample from said individual, and

calculating a concentration ratio of 6-thioguanosine triphosphate to 6-thioguanosine triphosphate and 6-thioguanosine diphosphate,

wherein a concentration ratio greater than 0.85 is indicative of superior clinical responsiveness to azathioprine therapy, and wherein a concentration ratio less than 0.85 is indicative of inferior clinical responsiveness to azathioprine therapy.

In a communication dated 26 October 2007 and available in the EPO's online file the Examining Division decided that the '851 claim was novel and inventive based on the technical effect of improved therapeutic efficiency. In accordance with EPO practice, from that effect a technical problem based on the Seidman disclosure as starting point could be reconstructed which was to provide an improved method of monitoring azopurine therapy.

If the '403 patent had been challenged e.g. in an opposition the EPO would have been bound to follow established case law and hold that the claimed method was patent-eligible firstly because it is carried out on a sample from the subject and secondly because an in vitro measurement is made, see the Enlarged Appeal Board decision in G 3/08 PRESIDENT'S REFERENCE in which the long-standing practice of the Appeal Boards was approved. An argument that the "wherein" features should be disregarded for assessment of novelty or inventive step taking into account the exclusions under art. 52 EPC as a mere discovery or mere presentation of information would have been likely to fail because, as seen above, improvement in therapeutic efficiency is treated at least at first instance as a technical effect.

The CAFC in its opinion on remand of 17 December 2010 reasoned in broadly similar terms to what would be expected from an EPO Appeal Board dealing with patent-eligibility. It held that treatment and optimization formed part of an inherently patent-eligible treatment protocol (opinion, page 20) and continued:

We agree with the district court that the final "wherein" clauses are mental steps and thus not patent-eligible per se. However, although they alone are not patent-eligible, the claims are not simply to the mental steps. A subsequent mental step does not, by itself, negate the transformative nature of prior steps. Thus, when viewed in the proper context, the final step of providing a warning based on the results of the prior steps does not detract from the patentability of Prometheus's claimed methods as a whole. The data that the administering and determining steps provide for use in the mental steps are obtained by steps well within the realm of patentable subject matter; the addition of the mental steps to the claimed methods thus does not remove the prior two steps from that realm.

As to the overall significance of the "wherein" clauses in the context of the claim as a whole, the CAFC appears to have accepted that they helped define a technical result (opinion at pp.22-23):

Although the wherein clauses describe the mental processes used to determine the need to change the dosage levels of the drugs, each asserted claim as a whole is drawn to patentable subject matter. Although a physician is not required to make any upward or downward adjustment in dosage during the "warning" step, the prior steps provide useful information for possible dosage adjustments to the method of treatment using thiopurine drugs for a particular subject. Viewing the treatment methods as a whole, Prometheus has claimed therapeutic methods that determine the optimal dosage level for a course of treatment. In other words, when asked the critical question, "What did the applicant invent?," Grams, 888 F.2d at 839 (citation omitted), the answer is a series of transformative steps that optimizes efficacy and reduces toxicity of a method of treatment for particular diseases using particular drugs.

From a European standpoint the key ruling of the Supreme Court is that the reasoning of the CAFC and the EPO Appeal Boards should not be followed. Its reasons are set out in the slip opinion pp. 20-21:

Third, the Government argues that virtually any step beyond a statement of a law of nature itself should transform an unpatentable law of nature into a potentially patentable application sufficient to satisfy §101's demands… The Government does not necessarily believe that claims that (like the claims before us) extend just minimally beyond a law of nature should receive patents. But in its view, other statutory provisions—those that insist that a claimed process be novel, 35 U. S. C. §102, that it not be "obvious in light of prior art," §103, and that it be "full[y], clear[ly], concise[ly], and exact[ly]" described, §112—can perform this screening function.

This approach, however, would make the "law of nature" exception to §101 patentability a dead letter …

What role would laws of nature, including newly discovered (and "novel") laws of nature, play in the Government's suggested "novelty" inquiry? Intuitively, one would suppose that a newly discovered law of nature is novel. The Government, however, suggests in effect that the novelty of a component law of nature may be disregarded when evaluating the novelty of the whole… But §§102 and 103 say nothing about treating laws of nature as if they were part of the prior art when applying those sections. Cf. Diehr, 450 U. S., at 188 (patent claims "must be considered as a whole").

If the CAFC/EPO approach is to be abandoned, what is the alternative? The rule followed by the Supreme Court is that the claimed combination of features must amount to significantly more than the natural law itself and that limiting the law to a particular technological environment or adding insignificant post-solution activity does not suffice. The Court was aware of the need for caution and warns in its opinion:

The Court has recognized, however, that too broad an interpretation of this exclusionary principle could eviscerate patent law. For all inventions at some level embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas.

In effect the Mayo rule corresponds to the "contribution approach" suggested at first instance in the UK in Merrill Lynch's Application [1988] R.P.C. 1 which was to consider whether the inventive contribution resided only in excluded matter. That approach also has its difficulties and it was rejected by the UK Court of Appeal in Genentech's patent [1989] R.P.C. 147 where it was observed that:

Such a conclusion, when applied to a discovery, would seem to mean that the application of the discovery is only patentable if the application is itself novel and not obvious, altogether apart from the novelty of the discovery. That would have a very drastic effect on the patenting of new drugs and medicinal or microbiological processes.

The Supreme Court acknowledges that the rule ought not to be interpreted to cover newly discovered first or subsequent medical indications for a known substance (slip opinion at page 18):

Unlike, say, a typical patent on a new drug or a new way of using an existing drug, the patent claims do not confine their reach to particular applications of those laws.

It is, however, less than clear by what logic new drugs escape the rule in Mayo but the Prometheus test is caught by that rule. For example, nitroglycerin was first synthesized in 1847 and was used as an explosive. In 1878 it was introduced as a treatment for angina by Dr William Murrell. Suppose Dr Murrell had claimed a pharmaceutical composition for the treatment of angina or other heart conditions comprising nitroglycerin and a pharmaceutically acceptable carrier or diluent. The anti-angina activity of nitroglycerin could be regarded as a mere phenomenon of nature "though just discovered", the reference to treatment of cardiac disorder could be a mere limitation to a particular technological environment and formulation into tablets or other forms for convenient administration to the patient could be regarded as an insignificant post-solution activity since the incorporation of active ingredients into tablets or other dosage forms was well known long before 1878. The pharmaceutical composition claim which is in standard form for a first medical indication would block research into further formulations and further medical indications for nitroglycerin. Indeed, blocking further development was an objection raised in the 1790's to James Watt's patent for a steam engine. It might be said that the hypothetical Murrell claim confines the reach of what has been discovered to the particular application of pharmaceuticals but it might equally be said that the Prometheus claim confines the reach of what has discovered to the particular application of a blood test for metabolites of drugs of a particular family. If there is a distinction, arguably it is no more than pragmatism.

Such a conclusion is consistent with the arguments of Robert Sachs in Part III of his Guest Post, where he singles out relative terminology and conclusory statements. A question expressed as "doing significantly more" or "adding enough" is a matter of degree rather than of kind, and provides no unequivocal forward guidance. Indeed the Supreme Court accepted the limitations of its guidance (slip opinion at page 24) where it said:

In consequence, we must hesitate before departing from established general legal rules lest a new protective rule that seems to suit the needs of one field produce unforeseen results in another.

Perhaps the wisest course is to take the opinion at its word and accept that beyond disapproving the CAFC/EPO approach Mayo makes no new rule and does nothing positive to explain what is patent-eligible and what is not.

Paul Cole wrote more on the topic in a recent guest post on Warren Woessner's blog Patents4Life.

 

Means-Plus-Function: Invalid as Indefinite

Indefinite, Patent, ,

by Dennis Crouch

Ergo Licensing v. CareFusion 303 (Fed. Cir. 2012)

In a split opinion, the Federal Circuit has affirmed a lower court ruling that Ergo's asserted claims are invalid. Judge Moore explains in her opinion, that the claims are indefinite under 35 U.S.C. § 112 (2) because the means-plus-function limitations are not supported by any corresponding structure disclosed in the specification.  Judge Linn joined Judge Moore's opinion.  Judge Newman dissented. 

Describing, Enabling, and Defining: 35 U.S.C. § 112 (1) requires that a claimed invention be fully described and enabled. In addition, the claims must be drafted in a manner that particularly identifies the scope of rights being claimed.  35 U.S.C. § 112 (2).  Although overlapping, these three requirements—written description, enablement, and definiteness—are separate and distinct requirements. Thus, a claim may fail the definiteness requirement even though the invention sought to be patented was fully described in the original specification in "full, clear, concise, and exact terms" and in a way that "enables any person skilled in the art … to make and use the same."

Means-Plus-Function: Patent claims ordinarily recite particular "structure, material, or acts" as elements that both provide for the inventive step and limit the scope of rights. 35 U.S.C. § 112 (6) allows a patentee to alternatively draft limitations as "a means or step for performing a specified function without the recital of structure, material, or acts in support thereof." To a lay reader, these means-plus-function claims appear quite broad. For instance a claimed "means for connecting elements A and B" seemingly covers any method or structure that accomplishes the claimed function. However, the statute itself require that means-plus-function claims be given a much more limited scope. Under § 112 (6), a means-plus-function claim "shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof." Thus, to know the meaning of a claimed "means for connecting," we must look to the patent specification to see what particular connecting means were disclosed and the scope of the claim would be limited only to those disclosed structures and their equivalents. The result here is that means-plus-function claims typically have a scope that is much narrower than one might expect on the initial reading.

Undefined Means: In recent years, a number of means-plus-function claims have been invalidated as lacking definiteness under § 112 (2). (I.e., invalid as indefinite). Courts follow the following approach: (a) The statute requires that a means-plus-function element be defined according to corresponding structure found in the specification. (b) If no corresponding structure is found then the term cannot be defined and (c) is therefore invalid as indefinite.

This case offers yet another example of claims being held invalid based upon means-plus-function claim elements that lack corresponding structure in the specification. The claims recite a "control means for controlling [an] adjusting means." The patentee argued that its disclosure of a general purpose computer was sufficient structure because a computer would be able to accomplish the task-at-hand. On appeal, the court rejected the patentee's argument and affirmed that such a computer was insufficient structure since a general purpose computer could not accomplish the function required by the claim. The court wrote that the patentee could have satisfied the requirement by additionally including the algorithm that the computer would use to accomplish its task."

If special programming is required for a general purpose computer to perform the corresponding claimed function, then the default rule requiring disclosure of an algorithm applies. It is only in the rare circumstances where any general-purpose computer without any special programming can perform the function that an algorithm need not be disclosed.

Thus, the means-plus-function limitation has no corresponding structure in the specification because "there is no algorithm described in any form for the function of 'controlling the adjusting means.'" As a result, the claim is invalid as indefinite.

In an extended dissent, Judge Newman argued that the ruling amounts to a formalistic technicality that is unfair to patentees – especially when the enablement and written description tests are not offended by the claim.

Disfavored by Patentees: Because of their narrow scope and high-likelihood of invalidity, "means for" claiming has been on a steady decline for the past two decades. The chart below shows a time series of the percent of patents that include at least one "means for" claim limitation. (Note – my search was for "means for" and so some MPF claims are not counted). These days, the only ones being caught in this trap are either (1) being poorly advised or (2) attempting to improperly extend the scope of their patent beyond what was actually invented. In my view, prudent patent applicants today never rely on MPF claims as their broadest or strongest claims. However, many still find some role for those claims and it is important to recognize that means-plus-function claim scope varies dramatically on the international level.

Device for: The majority opinion suggests the next frontier of challenge – patent claims that rely heavily on functional language but that do not use the magic "means" language. Here, the court at least suggests that an equivalent claim drafted as a "device for controlling" would have been invalid under the same analysis. The court wrote "The [hypothetical] recitation of 'control device' provides no more structure than the term 'control means' itself, rather it merely replaces the word 'means' with the generic term 'device.'"

Punishing Prometheus: Part IV – Machine or Transformation, We Hardly Knew Thee…

Patent,

Guest Post by Robert R. Sachs of Fenwick & West LLP
Read Part I; Part II; and Part III. 

It seems like only yesterday the Court told us that the “machine or transformation” test was “a useful and important clue, an investigative tool, for determining whether some claimed inventions are processes under § 101.” The Court’s reasoning suggested that while passing MoT was not necessary, it was still a sufficient condition for patent eligibility, and if nothing else indicated that the invention was not an abstract idea, law of nature, or natural phenomena.

Now, less than two years later, the Court diminishes the test further: “we have neither said nor implied that the [machine-or-transformation] test trumps the ‘law of nature’ exclusion.” What this means in practice is that even if a claim satisfies the MoT test, it could still be deemed unpatentable subject matter, especially by a fact which follows this Court’s method of a) stripping claims down to ”instruction manual” glosses, and b) finding the presence of “natural relations” to be dispositive evidence of a “natural law” in the claim.

In short, before Prometheus, you could assert that your claim was patentable subject matter because it satisfied MoT.  Now MoT does you little if any good—it’s gone from a sufficient condition to a mildly interesting one.

Standing Up for the Patent Bar

For some reason the Court seems to delight in denigrating the role of patent counsel in drafting claims, treating patent attorneys as either mere scriveners or crafty manipulators of words and phrases, clauses and conjunctions. “Those cases warn us against interpreting patent statutes in ways that make patent eligibility depend simply on the draftsman’s art.”  Indeed, in calling patent attorneys draftmen, apparently the Court believes that all we do is make fancy pictures.   Name me another legal discipline in which there is a special bar exam, not to mention to a requirement of an engineering or science degree.  What is it about patent law that makes the Court think we’re not lawyers? 

Second, I ask you: what’s wrong with making patent eligibility depend on our skill?  The patent is a contract, a quid quo pro:  disclose the invention and in exchange obtain the exclusive right.  The patent act requires patents to recite claims that define the invention, the USPTO examines the claims, and infringement is based on the claims. The validity of every other legal document depends on the “draftsman’s art,” upon the skill of the lawyer—just ask any licensing attorney, securities lawyer, or trusts and estate attorney.  Why are patent attorneys somehow not given the same level of recognition by the Court, that what we do is a legal activity, that claims are first and foremost legal definitions? That we are charged not just with describing the implementation of an invention to meet the legal test of an enabling disclosure—but with defining by way of a claim the “metes and bounds” of the invention.  We are trusted with carefully carving out a space for the broadest yet most precise statement of the invention, surrounded on all sides by the prior art, using nothing more than a single sentence.  Where other legal writers suffer no consequence for employing laundry lists of verbs, nouns, adjectives—to throw in the kitchen sink of do not fold, spindle, mutilate, tear, shred, distort, etc.—we are compelled by case law to consider every word as critical.  A misplaced comma, the use of “the” instead of “a,” “at least one” instead of “each,” can spell the difference between a patent worth millions and patent worth less than wallpaper.  The California Civil Code includes a section of codified Maxims of Jurisprudence; my favorite is “Superfluidity does not vitiate.”  True for every attorney but patent attorneys.  Show me another area of legal drafting that is as highly constrained in both form and substance as patent claim writing.

The Court also seems to think that inventors arrive at the patent attorney’s door step with their inventions fully formed, fully understood, and fully explained and explainable. In some cases, in some fields, that may be true—say for those funny hats with fans, beer cans, and scrolling LEDs. But for the majority of technologies, the patent attorney is an active and necessary participant in the creation of the patent and its value. Many inventors simply do not know what they have invented, they lack the framework for understanding their inventions, first in the context of the prior art, and second in the context of how the USPTO and the courts analyze inventions under the law.  Senior patent attorneys often have significantly more exposure and breadth of experience in their particularly technology areas than the inventors that they advise. They combine their understanding of the patent law, the technology, and the business goals of the inventor to create something that did not previously exist: an intellectual property right. This is no mere scrivener’s recording, from the inventor’s lips to the patent examiner’s ear to the court’s gavel.  This is legal counseling and crafting at its best. 

3M v. Avery: Walking the Line of Declaratory Judgment Jurisdiction

Patent

By Jason Rantanen

3M Company v. Avery Dennison Corporation (Fed. Cir. 2012) Download 11-1339
Panel: Rader, Lourie (author), Linn

There's a fine (and perhaps rather fuzzy) line between engaging in patent licensing discussions that are sufficient to trigger declaratory judgment jurisdiction and those that are not.  In 3M v. Avery, the court perhaps made that line a bit clearer for those trying to stay on one side of it.

According to 3M's declaratory judgment complaint, in March 2009 Avery's Chief IP Counsel called 3M's Chief IP Counsel to tell him that a new 3M product "may infringe" two of Avery's patents and "licenses are available."  3M subsequently rejected Avery's licensing offer, and in the course of that discussion was told that Avery had performed an analysis of 3M's product in connection with the two patents and that Avery would send claim charts.  No claim charts were ever sent.

Over a year later, 3M filed an action seeking a declaratory judgment of noninfringement, invalidity, and intervening rights as to the two Avery patents.  The district court dismissed the action, concluding that "'even accepting the facts as set forth by 3M,' subject matter jurisdiction did not exist at the time 3M filed its declaratory judgment complaint."  Slip Op. at 5.  In response to 3M's appeal, the Federal Circuit vacated and remanded for factual determinations.

Defining the line: In general, establishing the existence of a case or controversy for purposes of declaratory judgment jurisdiction requires something more than just "a communication from a patent owner to another party, merely identifying its patent and the other party's product line."  Slip Op. at 11 (citing Hewlett-Packard Co. v. Acceleron LLC, 587 F.3d 1358, 1362 (Fed. Cir. 2009)).  How much more is determined "on a case-by-case basis,"  Slip Op. at 11, although 3M v. Avery provides an important data point for identifying behavior that goes too far. 

In vacating the district court's dismissal, the CAFC concluded that the facts alleged by 3M in this case amounted to Avery "effectively charg[ing] 3M with infringement of [the patents-in-suit]."  Id.  That Avery's counsel (who initiated the communication) said "may infringe" rather than "does infringe" was immaterial in light of the license offer, the representation that Avery had analyzed 3M's product, and the statement that claim charts would be forthcoming. Especially in light of the facets of the case that the court held to be immaterial discussed below, the opinion suggests that there is a narrow gap indeed between the non-case or controversy creating communication discussed in Hewlett Packard and communications sufficient to establish jurisdiction.

Immaterial Facts: The CAFC considered several other facts in reaching its ultimate decision to vacate, but concluded that all were immaterial or equivocal. Two related to time: Avery had not provided a deadline for responding to its licensing offer and 3M's declaratory judgment action was filed more than a year after the parties' discussions.  Neither fact significantly favored the conclusion that a case or controversy was lacking.  "[W]e note that, as part of a pre-filing investigation, it takes time to review a set of asserted patents, the record generated before the PTO, and the accused products before a potential infringer can make an informed decision to file a declaratory judgment complaint."  Slip Op. at 15. 

On the other side of the equation, neither the history of litigation between the parties nor the fact that Avery had initiated reissue proceedings for the patents weighed strongly in favor of a finding a case or controversy.  Here, while there was much prior litigation between the parties, it involved different products and patents, and thus was not the type of pattern of litigation leading to the reasonable assumption that the patentee will bring suit based on the patents in suit.  Similiarly, as to the reissue proceedings, the court commented that "[t]he purpose of reissue proceedings is to correct errors in an issued patent…and, in this case, even with the unrelated litigation between the parties, there is no evidence that an objective observer in 3M's position would conclude that Avery initiated reissue proceedings for the purpose of bringing a lawsuit against 3M accusing [its product] of infringement."  Slip Op. at 14. 

Remand for factfinding: Because the district court concluded that 3M failed to allege a justiciable controversy on the fact of its complaint, it had not resolved two key factual disputes: the actual content of the statements made by Avery's counsel and whether the parties' discussions were covered by a confidentiality agreement that precluded their use to establish jurisdiction.  Given the disputed nature of these facts, the CAFC remanded to the district court for resolution.

District Court Concludes Therasense Patent Unenforceable On Remand

Patent,

By Jason Rantanen

Therasense, Inc. v. Becton, Dickinson and Company (N.D. Cal. 2012) Download 2012-03-28 Therasense v Becton Dickinson

Following the Federal Circuit's remand in Therasense v. Becton Dickinson, the district court has concluded that Patent No. 5,820,551 is unenforceable due to inequitable conduct under the higher standards for intent and materiality articulated by the en banc court.  Specifically, the judge found that the withheld briefs were material under the "but for" test for materaliality, that the Abbot attorney and scientist knew of that but-for materiality, and that they possessed specific intent to deceive the patent office. 

While all of the district judge's intepretations of Therasense are worth discussing, I find the characterization of Therasense as a whole to be the most interesting:

"Under the new standard, therefore, an applicant or attorney may knowingly and deliberately withhold from the PTO any reference known to be inconsistent with a position takeny by him or her before the PTO so long as the withholder does not know that the reference itself would lead to a rejection.  It would not be enough to prove that the applicant or attorney expected that the concealment would help win an allowance or expected that, if revealed to the examiner, the reference would cause the examiner to merely question patentability.  Rather, the applicant or attorney must know – and it must be later proven that he or she knew, that the item, if revealed, would lead to a rejection."

Slip Op. at 3. 

 

Punishing Prometheus: Part III – Conclusions Masquerading as Analysis

Patent, ,

Guest Post by Robert R. Sachs of Fenwick & West LLP; Read Part I and Part II. 

Patent attorneys are trained to draft claims using clear and precise language, and in particular to not rely upon relative terminology to define an invention–terms like “about,” “substantially,” “superior,” “better,” “good,” “sufficient” etc.  See, Manual of Patent Examination Procedure (MPEP), § 2173. After all, claims are definitions and indefiniteness is fatal.

So when the Court articulates expresses what is ostensibly a rule of analysis—a definition of what is patentable—patent attorneys naturally look for precision and clarity. Alas, we find a jumble of relative terminology and conclusory statements masquerading as legal reasoning. Consider the following samples:

The question before us is whether the claims do significantly more than simply describe these natural relations. To put the matter more precisely, do the patent claims add enough to their statements of the correlations to allow the processes they describe to qualify as patent-eligible processes that apply natural laws? We believe that the answer to this question is no.

[T]hose steps, when viewed as a whole, add nothing significant beyond the sum of their parts taken separately. For these reasons we believe that the steps are not sufficient to transform unpatentable natural correlations into patentable applications of those regularities.

The Court has repeatedly emphasized this last mentioned concern, a concern that patent law not inhibit further discovery by improperly tying up the future use of laws of nature.

What is “significant” or “enough” or “sufficient?” What would be “properly tying” up future uses? It is “not enough” to say that what’s in Prometheus’s claim is “not enough,” especially when, at the same time, the Court makes sweeping statements that the presence of “entirely natural processes” indicate that the patent recites a “natural law.”  These various statements or criteria are not functional tests—they are conclusions and nothing else.  This leads us to the next problem.

So Long Technology, Hello Business Methods!

The Court pays lip service to the principle that “all inventions at some level embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas.”  Indeed, any invention in the “hard sciences” of electronics, physics, chemistry, biology, engineering, etc. would perforce comply with the laws—or more properly—descriptive paradigms of the domain. An invention for a new electronic circuit clearly operates according to Maxwell’s equations. An invention for a new way of making a chemical compound necessarily recites steps that in essence are nothing more than chemical reactions—laws of nature in the Court’s book.

Let’s take a look the core of the Court’s analysis of the Prometheus claim and see what happens when we transport it to the domain of electronics, to a simple device such as loudspeaker:

Prometheus

While it takes a human action (the administration of a thiopurine drug) to trigger a manifestation of this relation in a particular person, the relation itself exists in principle apart from any human action. The relation is a consequence of the ways in which thiopurine compounds are metabolized by the body—entirely natural processes. And so a patent that simply describes that relation sets forth a natural law.

A loudspeaker

While it takes a human action (the activation of the amplifier) to trigger the output of the sound from the loudspeaker in response to an electrical signal, the relation itself exists in principle apart from any human action. The relation is a consequence of the ways in which electrical impulses are converted to mechanical movement—entirely natural processes. And so a patent that simply describes that relation sets forth a natural law.

There are—or should I say, were—by my estimate, approximately 10,000 patents on various types of loudspeakers. This is only one example, and a trivial one at that. A similar example could be constructed in any field of technology. And if that is the case, then no patent is immune from this line of attack. Well, no patent except one for a business method.

Business methods, being entirely the province of arbitrary human behavior such as advertising, finance and the like, are the one class of inventions clearly not based upon or using laws of nature and natural phenomenon. Yes, all inventions comply with the law of thermodynamics, etc., and perhaps all human behavior could be explained if we truly could model the regularities that govern the behavior of all fundamental particles, and as result we divorced ourselves from a persistent macro-phenomenon as free will and consciousness.   If we get that far, then we will have a more difficult problem on our hands, whether we can patent non-obvious applications of those laws.   Whether these methods are “abstract ideas” is another matter—but as should be clear from the above, it is my view that a method used in a business is not an abstract idea. If you can sell it, it’s patent-eligible. 

 

Punishing Prometheus: Part II – What is a Claim?

Patent, , , , ,

Guest Post by Robert R. Sachs of Fenwick & West LLP; Read Part I

Yes, I said that: the Court does not understand the nature of patent law—more precisely, it does not understand what claims do. Reading the Court’s treatment of Prometheus’ claim, one would think that claims are some type of qualitative instruction manual, a recipe that speaks to “audiences” such as doctors, about which things are “relevant to their decision making.” Claims are no such thing: they are definitions that articulate a specific combination of steps or structures. They are objective in form and design, not subjective or advisory. The notion that the claims here “trust” doctors to “use those laws” is at best silly, and at worst badly misguided. Reducing the claim to this “instruction manual” allows the Court to analogize the claim to Einstein “telling linear accelerator operators about his basic law”—a low point in modern legal reasoning.

In this decision, as well as in Bilski, Benson, and Flook, the Court simply does not “get” what claims are about. The entire preemption analysis, born of a conflation of “algorithms” with “scientific truths” in Benson, is based on this misunderstanding. By definition claims preempt, that is what they are designed to do: to preclude one from making, using, selling, etc., the invention. A broadly drafted claim preempts broadly. And it is this further confusion—between “breadth” or “abstraction” and “abstract ideas”—that is the second damaging mistake the Court made (and continues to make).

(more…)

Gene Patents: AMP v. Myriad Genetics

Patent

The Supreme Court today vacated the Federal Circuit’s decision in AMP v. Myriad Genetics and has ordered the appellate court to reconsider the case in light of the recent Supreme Court decision in Mayo v. Prometheus. To be clear, the Supreme Court’s move here is not a ruling on the merits but rather merely a recognition that the validity of Myriad’s human gene patents may be impacted by the Mayo decision.

I previously wrote that one reasoned result of the Mayo decision is that Myriad’s claims directed toward isolated human DNA are now invalid.

Following Mayo, the court could logically find that the information in the DNA represents a law of nature, that the DNA itself is a natural phenomenon, that the isolation of the DNA simply employs an isolation process already well known and expected at the time of the invention, and ultimately that the isolated DNA is unpatentable because it effectively claims a law of nature or natural phenomenon. One distinguishing point is that Prometheus claimed a process while Myriad claims a composition of matter. As we have seen in recent cases, the Federal Circuit already largely rejects formalistic distinctions between process and composition claims. Here, that distinction is further minimized by the reality that the claimed DNA is functionally characterized by the already well known process of isolating human DNA.

 

Supreme Court: Solving Claim Construction?

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032312_0335_ClaimConstr1
by Dennis Crouch

Retractable Techs., Inc. v. Becton, Dickinson & Co. (on petition for certiorari 2012)

As its company name suggests, Retractable Technologies makes safety syringes that retract after completing a drug injection. Retractable sued BD for patent infringement and won $5 million in damages and permanent injunctive relief. This was the second time that Retractable had filed a lawsuit to enforce its patent. In both cases, the district court interpreted the claim term syringe "body" as encompassing a body "composed of one or multiple pieces." (In the first case, the accused infringer agreed to stop making its product and to pay a $1 million settlement).

On appeal here, BD was able to convince a two-member majority of its Federal Circuit panel to modify the claim construction in a way that limits the "body" element to a "one-piece body." (Majority opinion by Judges Lourie and Plager). The appellate panel narrowly construed the term based upon its reading of the patent specification and the notion that the claims should be limited to what "the inventor actually invented." In dissent, Chief Judge Rader argued that the majority had improperly confined claim scope to the specific embodiments of the invention." Chief Judge Rader also argued in favor of giving more weight to the doctrine of claim differentiation. Here, some of the non-asserted claims in the patent included an explicit "one-piece body" limitation – suggesting that the asserted claim without the "one-piece" limitation must be broader.

After losing the appeal, Retractable filed a petition for rehearing and rehearing en banc. The petition was denied, but Judges Moore and O'Malley each filed dissents.

Supreme Court Petition: Retractable has now filed a petition for writ of certiorari to the United States Supreme Court. The petition raises two questions:

1. Whether a court may depart from the plain and ordinary meaning of a term in a patent claim based on language in the patent specification, where the patentee has neither expressly disavowed the plain meaning of the claim term nor expressly defined the term in a way that differs from its plain meaning.

2. Whether claim construction, including underlying factual issues that are integral to claim construction, is a purely legal question subject to de novo review on appeal.

First Question Goes Nowhere: In my view, the first question presented is not well stated. Of course a court can use context to provide meaning to claim language. A formalistic and restrictive view of patent doctrine was rejected by the Supreme Court in virtually every recent decision, including Mayo, Bilski, KSR, eBay, and MedImmune. Further, many members of the Supreme Court have identified a problem with vague and over-broad claim limitations, and the majority opinion here provides a simple tool for limiting scope: interpret the claims within the context of what was demonstrably understood by the inventor and the examiner and by what would have been known by a reasonably skilled artisan.

Use Specification to Narrow (or Broaden): There are times when the context of the specification is used to broaden the scope of a claim term beyond its ordinary meaning. However, the Federal Circuit judges appear to believe that greater reliance on the specification will usually result in a narrowing of claim scope. Thus, the debate on the role of the specification in claim construction is at least partially a proxy for the debate on whether patents should be given a broad scope or narrow scope. I would again criticize the petition – this time for wholly agreeing that reliance on the specification results in a narrowed scope. Retractable frames the debate on trying to understand "the circumstances in which the language of the specification should narrow the plain meaning of a claim term."

The Second Question is more well framed, although I would have tweaked it slightly to ask: "Whether claim construction, including underlying factual issues that are integral to claim construction, is a purely legal question [that is therefore] subject to de novo review on appeal." The tweak here is important because Retractable is not challenging the Supreme Court's Markman decision but rather challenging the Federal Circuit's Cybor decision. In Markman, the Supreme Court recognized the reality that claim construction includes a number of factual determinations – calling the process a "mongrel" of fact and law. However, the court ruled that claim construction should be treated as an issue of law to be decided by a judge. In Cybor, the Federal Circuit applied its usual formalistic if-then approach to rule that appellate review must be de novo because claim construction is an issue of law. From the petition:

In Markman, this Court held that, for purposes of the Seventh Amendment, the task of construing patent claims falls to trial judges rather than juries. Markman did not decide the standard of review that an appellate court should apply to a district court's claim construction. The Court noted, however, that the process of construing a claim is a "mongrel practice," that "falls somewhere between a pristine legal standard and a simple historical fact." In holding that trial judges are "better suited" for this task than juries, the Court recognized that claim construction requires trial judges to exercise a "trained ability to evaluate the testimony in relation to the overall structure of the patent." Accordingly, the Court held that "there is sufficient reason to treat construction of terms of art like many other responsibilities that we cede to a judge in the normal course of trial, notwithstanding its evidentiary underpinnings." Thus, Markman recognized that claim construction involves underlying factual questions, and said nothing to indicate that the Federal Circuit should displace the district court's resolution of those questions.

There are lots of doctrines that receive de novo review that do not have a reversal rate anywhere near that of claim construction. I think that everyone agrees that claim construction is inherently difficult. Claim construction rulings do not provide a yes-no answer like you might find in an obviousness judgment. Rather, a judge is required to identify the best interpretation of all possible interpretations of each contested claim term. And, unlike statutory interpretation, we do not have the benefit of the scope being developed over time through a series of cases. Rather, in most instances, a court's construction is in the first instance. In addition to the inherent difficulty, claim construction is made more difficult because of the open panel dependence of claim construction decisions. For many years the Federal Circuit refused to admit any panel dependence in its decision making, that has changed.

Where to Focus Assurances?: District court judges complain about claim construction because of the high likelihood that their decisions will be reversed on appeal. Giving deference to district court judgments would likely mean fewer reversals. This approach gives us certainty earlier in the process, but only once the district court issues a final claim construction. That date still seems very late. The scope of patent claims is of critical importance to almost all patent monetization transactions. However, very few of those transactions take place in conjunction with a district court claim construction decision. We need a process for substantially understanding claim scope at a much earlier stage and without relying on a federal court.

One answer for an early understanding of claim scope: Define terms during prosecution. If applicants fail to define terms, examiners should provide their own definitions as part of the office action. In the short-term, the focus should be on terms that are (1) frequently debated in court (such as "server" or "coupled to"; (2) used in the specification in a way that is in tension with the ordinary meaning of a term; or (3) inherently imprecise (such as "about").

Notes: 

Punishing Prometheus: The Supreme Court’s Blunders in Mayo v. Prometheus

Patent, , ,

Guest Post by Robert R. Sachs of Fenwick & West LLP

“Not even wrong.” So said Wolfgang Pauli about a proposed analysis by a young physicist, meaning that the arguments were not subject to falsification, the basic tool of scientific analysis. So too it can be said about the Supreme Court’s decision in Mayo v. Prometheus. The Court’s analysis creates a framework for patent eligibility in which almost any method claim can be invalidated. Like so many pseudo-sciences in which every phenomenon can be rationalized and in which there is no test that can show the theory to be incorrect, under Prometheus seemingly anything can be “explained” as being unpatentable subject matter.

Let me say at the outset that I’ve been a student of patent law, and patent eligibility in particular, since 1993. My clients have frequently been those whose inventions bumped up against the boundaries of patentable subject matter—in software, e-commerce, finance, business operations, user interfaces, and bio-informatics to name a few—so I have become intimately acquainted with both the legal and practical implications of this question. As such my personal reaction to this decision is very strong, and I will be quite blunt in what follows.

Over the next several days I will address just some of the logical and legal errors in the Court’s decision.

What’s a Law of Nature?

The first critical mistake is the Court’s assumption that Prometheus’ claims recited a “law of nature:” “The claims purport to apply natural laws describing the relationships between the concentration in the blood of certain thiopurine metabolites and the likelihood that the drug dosage will be ineffective or induce harmful side-effects.” The facile assumption that this relationship is a “law of nature” is incorrect, and potentially the most damaging misstep by the Court.

First, let us assume for the moment that there are in fact such things as “laws of nature.” What would their characteristics be? A first approximation would suggest that a law of nature is immutable and universal, that it is not subject to change, and it applies in all circumstances. See, Evidence Based Science. Thus, gravity and the speed light apply to you and me equally, and under all conditions. (I’m purposely using these two examples, for reasons that will become clear.)  However, this is not the case with the toxicity of any drug, including thiopurines, as acknowledged by the Court: the amount of a toxic dose varies between individuals for two reasons. First, different people metabolize at different rates, thereby producing different metabolite levels for a given dose. Second, individuals have differential responses to a given amount of the metabolites; a given level of the metabolites may be toxic in one person and not toxic in another. Thus, while the patent sets forth metabolite levels for toxicity and effectiveness, these levels are necessarily probabilistic, as some patients could experience toxicity at levels below or above those specified in the patent claims. This is inherent in the way toxicity is determined using a median lethal dose, LD50. This is exactly the same reason that one person can be drop dead drunk after five drinks and another can be stone cold sober at the same level. Indeed, Mayo’s test used a higher threshold for toxicity—evidence that there is no “law of nature” as to what is a toxic dose of thiopurine in all humans.

The “natural relation” that Prometheus claims is, itself, not immutable in an even deeper sense. This relationship is a byproduct of human (or perhaps more generally mammalian) biology, which from a logical point of view is a contingent relationship that could have been otherwise: we could have evolved in such a way that the toxicity range was higher or lower, or the drug was entirely ineffective. That is, it’s an arbitrary and contingent fact that humans evolved so that thiopurine drugs were effective at all for treating immune-mediated gastrointestinal disorders, or that we metabolize them in a manner that makes them toxic at specific dosing ranges. Indeed, given that humans are not exposed to thiopurine in nature, it is hard to understand how it can even be argued that it is a “natural law” that these drugs have a specific range of toxic or effective dosages at all. That these drugs are effective (or toxic) is a classic discovery in the truest sense of the term.

At best, the relationship between the dosage and toxicity level may be a “natural phenomenon.” Let us assume that is the case. Natural phenomena are a different class of things than laws of nature. Lightning, mirages, tornadoes, superconductivity, rainbows, these are natural phenomena: events that take place in nature (or in the lab) under specific and contingent conditions. While these events are of course dependent on the laws of nature, they are different from them in kind. The prohibition of patent claims in this regard is for claims on the phenomenon itself, not on the specific application of a phenomenon. Indeed, most patents in the chemical, biological, and electrical arts are based precisely on this distinction, being able to induce, apply, or control a natural phenomenon for a particular purpose. For example, there are thousands of patents that expressly claim a particular use of the Hall effect, natural phenomena discovered in 1879. The Court’s failure to appreciate this distinction puts many patents that harness natural phenomena at risk.

In short, the relationship of thiopurine dosage to toxicity is a contingent, empirical fact and subject to discovery. Like other empirical facts, it is precisely the type of subject matter that has been patented in this country since the very first patent issued by the USPTO: Samuel Hopkins’ patent on an improved method for making potash, based on the discovery that burning the raw ashes a second time increased their carbonate production. Hopkins’ discovery is no different in kind from Prometheus’ discovery: in both cases empirical “scientific” facts about the world.

But let us return to the core assumption: that there are laws of nature in the first instance. The Court makes the obvious reference to Einstein’s E=mc2 equation as an example. But the great scientist would have readily dismissed this appellation, knowing full well that what he set forth was a theory, a model, a description that was subject to falsification. Indeed, Einstein’s work has been criticized as being incomplete, or valid only in limited circumstances.

The view that there are laws of nature reflects an 18th century view of the world, based no doubt upon the classical, Newtonian view of a reality of absolute space and time governed by the three “laws of motion”—laws that were thought to be immutable and universal—and which Einstein among others showed not to be “laws” at all.

Most modern scientists do not view reality as defined by “laws”—indeed, the very idea that we could “know” what the “laws” are itself begs the very questions that philosophers since Plato have struggled with, the questions of epistemology (what is knowledge, what can we know) and ontology (what exists).

In several places, the Court lumps laws of nature together with “abstract ideas,” for example by leaning on the analysis in Bilski and Benson. But again, this is a category error: abstract ideas are very different from laws of nature, and must be treated separately. “Ideas,” classically speaking, are the “impressions in your head” when you think about something—the thing you think about is a “concept.” When you think about concepts that have instances in the world—cats, dogs, and thiopurine—you are thinking of “concrete” concepts, and your ideas are “concrete.”  Even when you think of a unicorn or a flying purple people eater, you are thinking of a concrete concept because it could have an instance in the world. However, when you think about concepts that do not (or could not) have instances in the world—justice, eternity, infinitesimal, invisible green four sided triangles—or metaphors—All the world’s a stage, and all the men and women merely players—the “idea” in your head is “abstract.” (Of course, I know that this is (1) a gloss, and (2) subject to debate as much as anything else in philosophy. Arguably, there are no “abstract” concepts at all. I’ll leave that debate for another day).

To wit: the abstract idea of say, immortality, is clearly not a “law of nature,” describing something that by definition cannot have examples in the world, since nothing can be immortal (there could be unicorns however, thus the concept of “unicorn” is concrete). Conversely, Ohm’s Law—that the current through a conductor between two points is directly proportional to the potential difference across the two points—describes something inherently and entirely physical and real. Ohm’s Law is a description of the world (and it turns out, not always correct). That the Court attempts to put these two square pegs in the same round hole reveals just how little the Court understands the nuances of science, philosophy and language—let alone the patent law itself.

Tomorrow:  What’s a Claim? and Patent-Eligibility vs. Patentability

 

 

Examining Subject Matter Eligibility under Mayo v. Prometheus

Patent,

By Dennis Crouch

In the wake of the Supreme Court’s decision in Mayo v. Prometheus, the US Patent & Trademark Office has distributed a short memorandum to examiners providing additional guidance. One problem with the Prometheus decision is that it does not appear to consider administrative practicality and there be an ongoing open question as to whether the USPTO will be able to successfully implement the proffered rule of subject matter eligibility. Regardless, the USPTO must follow the law to the best of its abilities and that means that it must examine patents using the Mayo standards.

In the three page “preliminary” document sent to the examining corps, the PTO’s chief examination policy guru Drew Hirshfeld described the USPTO’s conservative new approach:

As part of a complete analysis under 35 U.S.C. § 101, examiners should continue to examine patent applications for compliance with section 101 using the existing Interim Bilski Guidance issued July 27, 2010, factoring in the additional considerations below. The Interim Bilski Guidance directs examiners to weigh factors in favor of and against eligibility and reminds examiners that, while the machine-or-transformation test is an investigative tool , it is not the sole or a determinative test for deciding whether an invention is patent-eligible.

Examiners must continue to ensure that claims, particularly process claims, are not directed to an exception to eligibility such that the claim amounts to a monopoly on the law of nature, natural phenomenon, or abstract idea itself. In addition, to be patent-eligible, a claim that includes an exception should include other elements or combination of elements such that, in practice, the claimed product or process amounts to significantly more than a law of nature, a natural phenomenon, or an abstract idea with conventional steps specified at a high level of generality appended thereto.    

If a claim is effectively directed to the exception itself (a law of nature, a natural phenomenon, or an abstract idea) and therefore does not meet the eligibility requirements, the examiner should reject the claim under section 101 as being directed to non-statutory subject matter. If a claim is rejected under section 101 on the basis that it is drawn to an exception, the applicant then has the opportunity to explain why the claim is not drawn solely to the exception and point to limitations in the claim that apply the law of nature, natural phenomena or abstract idea.

The USPTO is continuing to study the decision in Mayo and the body of case law that has evolved since Bilski and is developing further detailed guidance on patent subject matter eligibility under 35 U.S.C. § 101.

The document describes the Mayo decision as follows:

The Supreme Court found that because the laws of nature recited by the patent claims – the relationships between concentrations of certain metabolites in the blood and the likelihood that a thiopurine drug dosage will prove ineffective or cause harm – are not themselves patent eligible, the claimed processes are likewise not patent-eligible unless they have additional features that provide practical assurance that the processes are genuine applications of those laws rather than drafting efforts designed to monopolize the correlations. The additional steps in the claimed processes here are not themselves natural laws, but neither are they sufficient to transform the nature of the claims.

In this case, the claims inform a relevant audience about certain laws of nature. Any additional steps consist of well-understood, routine, conventional activity already engaged in by the scientific community. Those steps, when viewed as a whole, add nothing significant beyond the sum of their parts taken separately. The Court has made clear that to transform an unpatentable law of nature into a patent-eligible application of such a law, one must do more than simply state the law of nature while adding the words “apply it.” Essentially, appending conventional steps, specified at a high level of generality, to laws of nature, natural phenomena, and abstract ideas cannot make those laws, phenomena, and ideas patent-eligible.

… A claim that recites a law of nature or natural correlation, with additional steps that involve well-understood, routine, conventional activity previously engaged in by researchers in the field is not patent-eligible, regardless of whether the steps result in a transformation. On the other hand, reaching back to Neilson, the Court pointed to an eligible process that included not only a law of nature (hot air promotes ignition) but also several unconventional steps (involving a blast furnace) that confined the claims to a particular, useful application of the principle.

The document does not address whether examiners should use the same analysis when considering claims that include an “abstract idea” such as a mathematical algorithm (i.e., software).

I suspect that the USPTO will wait for additional movement on the Myriad case before releasing a full set of new guidelines to examiners.

Read the memo: /media/docs/2012/03/mayo_prelim_guidance.pdf

Non-Practicing Entities at the USITC

Patent

By Dennis Crouch

RPX today published a study of the increase in non-practicing entity (NPE) activity at the United States International Trade Commission (ITC). The charts above (that come from the RPX article) show annual numbers for ITC investigations on behalf of NPE patent holders and the cumulative number of respondents (i.e., number of defendants). Both figures show a major increase in NPE activity at the ITC. In its study, RPX points-out that “[f]ully 25% of ITC Investigations in 2011 were filed by an NPE and 51% of respondents hauled into the ITC were in response to an NPE complaint.”

The ITC is an agency of the US Government not an Article III court. However, its administrative law judges conduct hearings that look an awful-lot like bench trials. I don’t have the data here, but the number of “investigations” is typically a subset of the total number of complaints filed. It takes votes from three of the six ITC Commissioners to begin an official investigation.

Why the new demand?: (1) In 2010, the ITC generously interpreted the “domestic industry” requirement and ruled that NPEs will ordinarily have standing to pursue a complaint. (2) Although the ITC does not award money damages, the ITC does typically issue injunctive relief since the agency is not bound by eBay v. MercExchange; (3) The ITC is not bound by the new joinder rules that limit the number of accused infringers per action; and (4) The ITC tends to move much more quickly than ordinary patent litigation.

Injunction for an NPE?: In the vast majority of NPE cases, the patent holder is actually seeking money and would receive no direct benefit from the accused infringer ceasing operations. However, despite being of no direct value to an NPE, injunctive relief is a major bargaining chip because of its value to the accused infringer. The ITC’s injunctions are only directed at imports, but most high-tech consumer products are imported and therefore qualify.

Money Damages: Money damages are not available at the ITC for either past or ongoing infringement. However, pursuing an action at the ITC does not foreclose an NPE patent holder from also filing a complaint in a federal district court seeking monetary damages. In this sense, ITC litigation should likely be seen as an additional potential battle-front that may be fought in conjunction with district court litigation; reexamination (and future review) processes at the USPTO; and non-US patent litigation as well.

RPX: I should note here the source of this data is RPX – a company that has built its business on making NPEs appear to be the “bad guys.” RPX is currently defending its market-shaping activities in an antitrust lawsuit filed earlier this month. Although I believe the data presented here is correct, an anti-NPE bent is apparent from the text of the study.

Notes

 

A New Record Number of Patents

Patent

This week the USPTO issued a record number 4,976 utility patent — setting an all time single-week high. As it turns out, the top-ten single week issuance numbers all come from fiscal year 2012. (The top seven come from calendar year 2012 even though we are only 13-weeks into the year).  As the PTO continues to ramp-up examination throughput, we can expect these numbers to continue to rise.  The PTO does not regularly release information regarding the number of abandoned cases and so I have been unable to confirm whether those numbers have risen in parallel.

 
Top Grant Dates Count
3/20/2012 4,976
3/6/2012 4,880
1/10/2012 4,834
1/31/2012 4,831
2/14/2012 4,826
2/21/2012 4,825
2/28/2012 4,818
11/22/2011 4,778
11/15/2011 4,777
12/6/2011 4,777

The newest group of patents include No. 8,141,114 issued to Microsoft.The '114 patent is directed to a "content rating and recommendation system." I wonder whether the claim should be considered dead-on-arrival based upon its failure to claim patent eligible subject matter under 35 U.S.C. 101.  The examiner had initially rejected the claims as subject matter ineligible in a 2008 office action rejection. That rejection was withdrawn after Microsoft amended the claim preambles to include the phrase "computer-readable medium" in the system claims and "implemented using a processor" in the method claims.

The system claim:

1. A content ratings and recommendation system implemented using a computer-readable medium, comprising:

a ratings service configured to compile ratings of programs for a rating system that is associated with a group of viewers where at least one viewer of the group of viewers establishes the rating system including at least one standard of the rating system, and where at least some viewers of the group of viewers use the rating system to rate the programs for the group of viewers, wherein the rating system represents flexible characterization of the media content of the programs based on at least one of any possible descriptive aspect of the program;

a recommendation service configured to provide program recommendations to the viewers of the group of viewers based on the rating system, the recommendation further being configured to monitor viewing selections of a viewer that is not a member of the group of viewers, and to offer a membership into the rating system to the viewer based on the viewing selections of the viewer and the at least one standard of the rating system; and

a rater monitoring service configured to receive a rating of a particular viewer who used the rating system to rate a particular program and to provide the rating of the particular viewer to the viewers of the group of viewers, the rating of the particular viewer relating to a reliability or credibility of the ratings made by the particular viewer.

The patent application was originally filed six years ago in 2006.  The examiner issued a non-final rejection followed by a final rejection. At that point, Microsoft filed a first request for continued examination (RCE) and the examiner issued a non-final rejection followed by another final rejection.  At that point, Microsoft filed a second RCE and the examiner issued two more rejections. The examiner then considered Microsoft's amendment-after-final and allowed the case.  During this time, Microsoft amended the claims six different times before eventually finding a set of claims that the examiner found allowable. During this time, the examiner stuck with the same prior art rejections that were found in the original rejection with the caveat that the examiner added one additional reference to the fifth office action.

It is interesting (at least to me) that none of the three listed inventors work at Microsoft any longer.