Is DNA patent-ineligible because it is like software?
By Kevin E. Noonan --
Recently, in CyberSource Corp. v. Retail Decisions, Inc., a panel of the Federal Circuit invalidated claims to software directing the performance of a process for preventing fraud in Internet purchases. While this type of decision is generally not germane to the topics discussed on Patent Docs, the majority's rationale for its decision affirming the District Court, and its make-up (comprising author Judge Dyk and Judge Bryson), in view of their views on the patent-eligibility of DNA, suggest that a closer look at this decision is warranted. This is particularly the case in view of the penchant for pundits, commentators, and advocates (particularly the ACLU) to take literally the metaphor that DNA is like software, ignoring the many ways in which it is not.
The case involves U.S. Patent No. 6,029,154, containing inter alia the following method and software ("Beauregard") claims:
2. A computer readable medium containing program instructions for detecting fraud in a credit card transaction between a consumer and a merchant over the Internet, wherein execution of the program instructions by one or more processors of a computer system causes the one or more processors to carry out the steps of:
a) obtaining credit card information relating to the transactions from the consumer; and
b) verifying the credit card information based upon values of plurality of parameters, in combination with information that identifies the consumer, and that may provide an indication whether the credit card transaction is fraudulent,
wherein each value among the plurality of parameters is weighted in the verifying step according to an importance, as determined by the merchant, of that value to the credit card transaction, so as to provide the merchant with a quantifiable indication of whether the credit card transaction is fraudulent,
wherein execution of the program instructions by one or more processors of a computer system causes that one or more processors to carry out the further steps of:
obtaining information about other transactions that have utilized an Internet address that is identified with the credit card transaction;
constructing a map of credit card numbers based upon the other transactions; and
utilizing the map of credit card numbers to determine if the credit card transaction is valid.
3. A method for verifying the validity of a credit card transaction over the Internet comprising the steps of:
a) obtaining information about other transactions that have utilized an Internet address that is identified with the credit card transaction;
b) constructing a map of credit card numbers based upon the other transactions and;
c) utilizing the map of credit card numbers to determine if the credit card transaction is valid.
The District Court granted summary judgment of invalidity that the claims were patent-ineligible under Bilski, based on the method claims reciting, in the Court's opinion, "an unpatentable mental process for collecting data and weighing values [which did] not become patentable by tossing in references to [I]nternet commerce." Claim 2 was patent-ineligible, according to the District Court, because "simply appending 'A computer readable media including program instructions . . .' to an otherwise non-statutory process claim is insufficient to make it statutory."
Considering the lower court's decision on the method claim first, the panel agreed that this claim was patent-ineligible because it failed the Bilski "machine-or-transformation" test. Relevant to this determination was the patentee's concessions that "the 'Internet address' recited in step (a) of claim 3 'may be, for example, an Internet protocol (IP) address or an e-mail address for the particular credit card transaction;'" the "'map of credit card numbers' recited in step (b) can be as simple as a list of credit card transactions relating to a particular IP address;" and that "step (c) does not limit claim 3 to any specific fraud detection formula or mathematical algorithm, but rather broadly purports to encompass any means of 'utilizing the map of credit card numbers to determine if the credit card transaction is valid.'" As in Bilski, the panel found that the claimed methods were merely directed to "obtain[ing] and compar[ing] intangible data pertinent to business risks." The claims "plain language" did not involve any machine, and "[t]he mere collection and organization of data regarding credit card numbers and Internet addresses is insufficient to meet the transformation prong of the test," said the Court. And the recitation of "the Internet" as a limitation was a "mere data-gathering step" according to the panel that did not render the claim patent-eligible.
At this point in the opinion, there is little that is surprising to anyone following the Federal Circuit and Supreme Court decisions in Bilski. Claims such as claim 3 in the '154 patent have been at risk since the Federal Circuit's en banc Bilski decision, since such claims recite neither a transformation of an article into a different state or thing nor reciting a particular machine. The panel extends this analysis by considering whether this claim recites an invention that is patent-eligible, despite failing the machine-or-transformation test, pursuant to the Supreme Court's holding that the test is not exclusive. The panel concludes that this claim does not fall into that exceptional category; rather, the claim recites "an unpatentable mental process -- a subcategory of unpatentable abstract ideas," citing Gottschalk v. Benson, 409 U.S. 63 (1972), and Parker v. Flook, 437 U.S. 584 (1978). "[M]ethods which can be performed mentally, or which are the equivalent of human mental work, are unpatentable abstract ideas -- the 'basic tools of scientific and technological work' that are open to all," in the panel's opinion, citing Benson at 67. To the panel, it was "clear that unpatentable mental processes" are what is claimed in claim 3 of the '154 patent ("[a]ll of claim 3's method steps can be performed in the human mind, or by a human using a pen and paper"), and hence the claim was not patentable.
The panel then turned to the "computer-readable medium" claim, which it characterized as a "Beauregard" claim (derived from In re Beauregard, 53 F.3d 1583 (Fed. Cir. 1995)) that is "a claim to a computer readable medium . . . containing program instructions for a computer to perform a particular process." The panel considers this claim to be "nothing more than a computer readable medium containing program instructions for executing the method of claim 3." CyberSource contended that an important distinction between claims 2 and 3 of the '154 patent was that claim 3 was directed to a process and claim 2 was directed to a manufacture. The panel rejected this distinction as being meaningless for patent-eligibility, despite the fact that claim 2 clearly does not claim a "law of nature, physical phenomenon or abstract idea." Instead, the opinion says that the Court "looks to the underlying invention for patent-eligibility purposes . . . [r]egardless of what statutory category . . . a claim's language is crafted to literally invoke" (a statement seemingly at odds with the principle that a patentee is free to claim an invention in any language that satisfies the requirements of 35 U.S.C. § 112, second paragraph. In re Steppan, 394 F.2d 1013 (CCPA 1967). In this case, the Court based its decision on In re Abele, 684 F.2d 902 (CCPA 1982), where a claim directed to "an apparatus for displaying data" was equivalent to held to be an unpatentable method claim. And the panel distinguishes its decision in this case with the extensive line of cases, represented by In re Alappat, 33 F.3d 1526, 1545 (Fed. Cir. 1994), to the effect that programming a general-purpose computer to perform a specific algorithm "creates a new machine, because a general purpose computer in effect becomes a special purpose computer once it is programmed to perform particular functions pursuant to instructions from program software." Further, the panel imposes the machine-or-transformation test on claim 2 of the '154 patent, a test heretofore only used to determine the patent-eligibility of method claims.
But as with method claims, at least part of the panel's difficulty with determining that claim 2 was patent-eligible is that it recites no specific algorithm and thus does not "impose meaningful limits on the claims scope." "[M]erely claiming a software implementation of a purely mental process that could otherwise be performed without the use of a computer does not satisfy the machine prong of the machine-or-transformation test," the opinion concludes, citing Benson as controlling authority. The opinion also distinguished its own precedent, including SiRF Tech., Inc. v. Int'l Trade Comm'n, 601 F.3d 1319 (Fed. Cir. 2010), and Research Corp. Techs., Inc. v. Microsoft Corp., 627 F.3d 859 (Fed. Cir. 2010), on the grounds that, unlike in those cases the use of a computer was not required to practice the method ("the method could not, as a practical matter, be performed entirely in a human's mind").
The relevance of the Court's decision in CyberSource to the question of the patent-eligibility of DNA is rooted in two aspects of that decision: first, that the Court is empowered to look to the "underlying invention" untethered to the expressly recited claim language, and to the argument that DNA is nothing more than information, essentially the software that directs protein production in a cell. To develop the analogy, here the "computer" would be a cell that produces a protein according to the instructions contained in the DNA, so that a claim such as Myriad's claim to the BRCA 2 gene in U.S. Patent No. 5,837,492 could be cast in the following language:
An isolated DNA molecule coding for a BRCA2 polypeptide, said DNA molecule comprising a nucleic acid sequence encoding the amino acid sequence set forth in SEQ ID NO:2, wherein said molecule is capable of directing a cell to execute a genetic program comprising the steps of:
a) transcribing the DNA molecule to produce mRNA; and
b) translating the mRNA to make the BRCA2 polypeptide.
The fact that such a claim is not asserted (or even contained) in the Myriad patents-in-suit in AMP v. USPTO is unavailing to preclude such an analysis, since the "underlying invention" is isolation of a gene that has the capacity to direct the production of a BRCA polypeptide in a cell. This capacity is another one of the essential biological features inherent in any nucleic acid encoding a complete BRCA polypeptide; indeed, the same arguments that have been made regarding the requirement for the "information" in an isolated DNA to be identical to the "information" in the gene in situ in a chromosome could be made for the capacity to direct production of the encoded protein. And the same argument that the distinctions recognized by the majority opinion in the Myriad case should be ignored, substantially because the information is the "underlying invention" (or perhaps more in the language of patent law, provides the molecule's utility) could be made here.
DNA is not a software program, of course: the information content is not patented (as opposed to the patenting of a program) and said information is embodied in a biological molecule having a distinctive structure that is different from its structure as found in nature (including the difference that useful quantities of the isolated DNA can be specifically made). Perhaps the analogy can be extended by treating the specific disclosed sequence (SEQ ID NO. 2 for BRCA 2 in the '492 patent as a specific algorithm, and thus limiting the scope of the claim to be sufficiently definite and specific to avoid the conclusion the Court reached for the software claims in the '154 patent in CyberSource.
But the metaphor/analogy between DNA and software is not something that will go away, especially in view of 50 years of molecular biologists presenting the metaphor as a way to explain to the layman the significance of the discoveries and inventions that have resulted from this still relatively new science. If the Myriad and CyberSource decisions have taught us anything, it is that it is time to move past facile and inapt analogies in making decisions on patent eligibility.