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September 20, 2011

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"Deciphering the Patent-Eligibility Message in Prometheus, Myriad and Classen"

Oh come come Kev, the message is clear. The CAFC simply doesn't like the USSC's analysis and the results to which it leads.

You don't need more than a paragraph to flesh that out.

Kevin,

A valiant effort at trying to render "order" out of utter "chaos." As you observed, SCOTUS is the primary "culprit" in the "tragedy" that patent-eligibility determinations have become. (And I've said as much in the article I posted on the Classen remand: http://ipwatchdog.com/2011/09/01/cafc-patent-eligibility-firestorm-of-opinions-in-classen/id=18927/ .) Frankly, SCOTUS would do well to simply "torch" Gottschalk v. Benson, Parker v. Flook, Bilski v. Kappos, and even Diehr v. Diamond, and replace the nebulous, undefined (and apparently undefinable), and completely subjective "abstract idea" standard, and replace it with the objective "tangible, concrete, and useful result" standard unfortunately discarded by the Federal Circuit in Bilski. In fact, SCOTUS would do us all a big favor by ditching the "abstract idea" standard and adopting/resurrecting the TCU standard (and I realize we've probably got a "snowball's chance in hell" of that happening).


"In fact, SCOTUS would do us all a big favor by ditching the "abstract idea" standard and adopting/resurrecting the TCU standard (and I realize we've probably got a "snowball's chance in hell" of that happening)."

Excepting of course all those of ordinary skill in the art that would like to practice on abstract ideas unencumbered whom EG desires power over.


Dear 6:

I think the Federal Circuit is trying (with little success sometimes) to put into practice the Supreme Court's teachings on patent eligibility. That means trying to distill Benson, Flook, Diehr and Bilski, which frequently contradict one another, and looking over their shoulders at Labcorp. It isn't always pretty, but showing the Court how hard it has made the process is necessary if the problem is ever going to get fixed.

Look at the government's amicus brief in Prometheus (post coming) - the argument is that the Court should not use 101 to invalidate claims just as easily invalidated using 102 or 103. (I have heard an academic talk about how efficient it would be to use 101 as a scythe, having in mind (I think) reducing the burdens on the Office. Aphorisms about babies and bathwater inevitably come to mind.)

Thanks for the comment

"I have heard an academic talk about how efficient it would be to use 101 as a scythe, having in mind (I think) reducing the burdens on the Office. Aphorisms about babies and bathwater inevitably come to mind."

Way to go, Kevin! Couldn't have said it better myself.


"but showing the Court how hard it has made the process is necessary if the problem is ever going to get fixed."

Well it isn't that hard. At least not in the cases they've had so far. And they get paid enough to bother themselves for a whole hour or so per case.

"Look at the government's amicus brief in Prometheus (post coming) - the argument is that the Court should not use 101 to invalidate claims just as easily invalidated using 102 or 103."

A very lawlyerly argument. The USSC will have none of it. The lawl is the lawl is the lawl. It doesn't matter which statute you use "first", and even more so relevant to me, it doesn't matter which statute the office uses "first".

Also, I note that even should we lose some thousand babies it is worth it in this case to get rid of the tens of thousands of bathwater drowning the other ~390k babies (per year). The needs of the many and the needs of the one and all that. Especially since these aren't really babies. They're just poorly drafted applications at worst that could undesirably be lost. Who gives a dam? Hire a better lawyer.


Hey 6, I would be careful about what you say in response to Kevin's points. I've warned you before about the Harry Callaghan Principle of Patent Law: "a man's got to know his limitations." You're stepping into deep patent legal "water." Over your head in my opinion.

Kevin:

This whole debate is dumb. There is no possible way that a process comprising an old "determining" step and a new "inferring" step is eligible for a patent under current law. None. Saying otherwise is the product of mental incapacity. If you and EG want this to be the law, then lobby Congress to create a statute that says so. And all this weirdness about scythes and babies and bathwater is just that -- weirdness. Relying on 101 to keep out this stuff is perfectly fine. By the way, did you catch the latest episode of Real Time? At the end of the show, Bill and his guest Keith Olbermann did a skit called "Typical Republican Voter." Bill and Keith came out to the front part of the stage and began shouting things like "Taxes are at their lowest level in 50 years" and "Reagan raised taxes 11 times" and "Wrestling is fake" to a guy on stage (the purported "Typical Republican Voter") who was sitting on a chair inside a literal bubble. Very good stuff, and reminded me of much of the debate on these patent-related blogs about Benson/Flook/Diehr/Bilski, "claim dissection," mental steps, Beauregard claims, etc. I mean, the truth just doesn't matter to some people. They literally believe that some dude lived inside the belly of a whale. It's all quite amusing.

"There is no possible way that a process comprising an old "determining" step and a new "inferring" step is eligible for a patent under current law. None. Saying otherwise is the product of mental incapacity."

GJ,

For those of us of alleged "mental incapacity," it might be nice to say what the "current law" (i.e., case law) is that supports your position instead of simply making the bald statement/conclusion that you did. I'm open to your differing point of view, but only if you support that point of view appropriately (i.e., with case law), not simply state it.

Also, questioning the "reasoning capability" of those who hold different views is totally unnecessary and doesn't help your credibility (not in my book at least). I don't mind debating with you, but please leave out the "personalities."

Dear Gary:

Your position may be the correct one. Until it is the one adopted by the Supreme Court we will need to deal with (and apply) Benson/Flook/Diehr/Bilski.

EG, there is no point in debating with you. For you it's a matter of belief. I can't convince you that a woman was not created from the rib taken from a man if that's what you believe, however delusional your belief is. The bottom line is that these "old determine/new infer" processes are not processes by any definition of that term. They are abstractions. They seek to exclude others from thinking. I'm pretty sure that's not constitutional. The best hope for exclusivity for diagnostic/theranostic methods is a marketing exclusivity such as for NCEs and orphans.

"They literally believe that some dude lived inside the belly of a whale. It's all quite amusing."

Are you implying that Jonah did not in fact live in the belly of a whale?

" I'm open to your differing point of view, "

No you're not bro, you spend entire articles telling us how not open you are to that differing point of view.

Kevin, back in August I asked you some questions arising out of the Classen facts (a similar issue arises out of the Prometheus facts). You indicated that you would get around to answering the question after you had completed your analysis of Classen. Well, here we are.

Here's my original comment, which I've edited for clarity. The quoted part at the beginning is a quote from your analysis of Classen. The key question is highlighted by "++" before and after the question.

Thank you for your consideration.


----------
"[T]he '139 and '739 patents in suit are directly infringed when a physician, hospital or other health care provider reads the relevant literature and selects an immunization schedule and immunizes a patient in accordance with the schedule which appears to have minimal risk."

In fact, according to Classen, the claims are infringed by a "reader" of the "relevant literature" even if the "reader" has been practicing the same immunizing schedule with "minimal risk" for decades and doesn't change the schedule.

Have you thought about this much, Kevin? Does anything about that result strike you as problematic? Does that result appear to raise any issues related to the eligibility of claims under 101? It certainly raises some flags for me, and I believe Judge Moore was also troubled.

What do you think?

++Do you think that one should be liable for patent infringement merely because one has *considered* a patent-ineligible "new" fact but has otherwise not engaged in any novel acts?++

I suppose one could shrug this "hypothetical" off and say that nobody would ever sue you if you were practicing the prior art while "considering" some new discovery. Except that Classen did exactly that, and he's still doing it.

What do you think, Kevin?

Dear Tim:

What I think was in the post - what Classen (the inventor) thinks is irrelevant. The Federal Circuit construed the claim so that merely thinking about the correlation doesn't satisfy Section 101 - that would be the claims in the '283 patent - while doing something after you thought, like immunizing people according to the schedule you thought about in the first place - that would be the claims in the '739 and '139 patents - would satisfy the section. Judge Moore doesn't see the difference, because for her the distinction drawn by the majority is a distinction without a difference.

Now, I would have bet that these claims were not patent-eligible in view of how they were drafted, but I was wrong (according to the majority). I think claims to merely thinking are not patent-eligible, and all the judges on this panel agree. Whether the active step of immunizing according to the schedule should be enough will depend on what the Supreme Court says when and if they grant cert.

I certainly think that reciting an active step, like immunizing, according to a schedule should pass Section 101. Whether it is novel or non-obvious is another matter entirely, but that is the basis for the categorical versus specific argument. While it is possible that claims that would fail the categorical test may get past the Section 101 filter, there is little chance they will get past the other parts of the statute unless they are in fact inventions.

And, you will note that the case is based entirely on Section 101 - on remand the claims may clearly fail for precisely the reasons you mention - that they are not novel. In fact, if the preferred immunization schedule was in the prior art, the claims are anticipated even if the art did not recognize that, or if, the immunization method was preferred.

Which is what I think.

Thanks for the comment.

Do I hear you right that your position is that we simply ignore the mental steps in deciding novelty (and presumptively obviousness as well)?


6:

No; like the court in Prometheus, the mere inclusion of a mental step is not sufficient to make a claim patent-ineligible under Section 101. A claim that recites only mental steps, on the other hand, probably does have Section 101 problems (I can't be definitive since I don't subscribe to the categorical viewpoint).

On the other hand, if the prior art taught practice of the claimed method (including mental steps or not) that certainly implicates novelty and obviousness standards. Which may be why, ultimately, these claims are not valid. But that's a different, albeit inportant, question.

Kevin, I didn't see an answer to my question. Here it is again:

++Do you think that one should be liable for patent infringement merely because one has *considered* a patent-ineligible "new" fact but has otherwise not engaged in any novel acts?++

In case you didn't notice, it's a "yes" or "no" question. You can provide additional explanation of your direct answer, if you like (i.e., "Yes, because ..." or "No, because ..."). I'm rather shocked that you didn't answer directly because you promised you would. Okay, I'm not shocked. I think you have a conflict that prevents you from answering forthrightly. That's okay.

You also write: "like the court in Prometheus, the mere inclusion of a mental step is not sufficient to make a claim patent-ineligible under Section 101."

We also know from the court in Prometheus (and Classen) that the mere inclusion of a transformative step is not necessarily sufficient to turn an ineligible mental process into an eligible claim.

The more interesting and obvious question is the following: is the mere addition of a novel mental step EVER sufficient to turn an unpatentable but eligible method into a patentable method (unpatentable method = a method in the prior art)? Yes or no, Kevin? Please explain your answer. I believe the answer must be "no" because such claims are indistinguishable from claims to mental steps, at least when asserted against those who are practicing the prior art. They therefore can't be both eligible and patentable ... unless they are also held to be unenforceable per se.

"In fact, if the preferred immunization schedule was in the prior art, the claims are anticipated even if the art did not recognize that"

The only transformative step in Prometheus' broadest claims (determining level of the metabolite in blood) was also in the prior art (see the background section of Prometheus' patent). According to your own logic, then, Prometheus' claims are therefore anticipated because it doesn't matter what one "thinks" about the result of the transformative step. Isn't this true in all such cases, Kevin, where the prior art teaches the identical transforming step but not the mental step? If you disagree, please explain why or provide an example of a claim that survives the analysis.

"A claim that recites only mental steps, on the other hand, probably does have Section 101 problems (I can't be definitive since I don't subscribe to the categorical viewpoint)."

Kevien, is your view that a completely mental process is eligible for patenting in the United States? If that is not what you are saying, what do you mean by "a claim that recites only mental steps PROBABLY has 101 problems"? What is the "categorical viewpoint" you refer to? Are subscriptions free? Where do you sign up?

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