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October 15, 2014

Comments

Don,

Ms Knowles comments are spot on. The Royal Nine on patent-eligibility under 35 USC 101 has acted ultra vires, by judicial fiat, contrary to Congress' intent, and has overreached their constitutional authority. And people wonder why patent law professionals are generally upset with the Royal Nine, and why patent law jurisprudence is such a mess now?

Interesting and courageous post showing the continuing importance of patents in the area of natural products.

I am heartened by the insights offered here - among many other items, one fore example that I do hope continues to gain traction is that the heart of the argument used by the Supreme Court is steeped in forward looking conjecture of what MIGHT happen - that such conjecture begs the question of whether there is a PRESENT case or controversy for which the Court may even deign to act on that "legal principle" that they seek to tie into a constitutional question.

The Court has had it out for "scriviners" - let's see what happens when the Court's own scrivining is put in the spotlight.

As I have said in a number of postings on this blog, to find the correct rule of law in these decisions it is necessary to read the patent(s) in issue and especially the claims. It is then necessary to read the statute and figure out which limb of section 101 the Court is talking about (composition and manufacture not always being equivalent).

Then you need to read the decision at first instance, the decision of the Federal Circuit, possibly some of the more pertinent briefs, what was said in oral argument (particularly the more significant questions from the Justices) and the opinion(s) handed down by the Supreme Court. You may need to read some of the more important cases cited in the opinion(s) and thoroughly understand their holdings: e.g. in Myriad you need to read American Fruit Growers, Chakrabarty and Hartranft (in increasing order of significance). When you have done that you might realise that manufacture, not composition of matter, is the key word in the section and why that is the case.

When you have that knowledge, and if you are also armed with the skill in legal analysis that should have been learned in law school you can work out what the holding is. In the case of Myriad that it not so difficult because Justice Thomas says what it is in very clear language at least twice (but the Federal Circuit opinions and the oral argument are also illuminating). You are then in a position to appreciate that the rule of law governing later cases might be different from what you get merely by considering the outcome in terms of the facts of the particular case e.g. full length gene vs cDNA. You will have an understanding of what the rule of law actually is, not just what it is reputed to be. A lay person can figure out the outcome from the facts: it takes a lawyer to correctly identify the governing rule of law relied on by the Court.

The Hitchhikers Guide to the Galaxy has the words DON'T PANIC inscribed on its cover in big freiendly letters. Unfortunately some people within the USPTO seem to have panicked, which is unfortunate when careful legal analysis reveals that the grounds for panic are illusory.

Paul Cole: Why are American Fruit Growers or Hartranft relevant to the interpretation of 35 USC. 101?

The decisions in American Fruit Growers and Hartranft both pre-date 35 USC 101 and, therefore, 35 USC 101 could be considered to have been effectively overruled by 35 USC 101.

A Rational Person,

The case of Hartranft is an extremely poor case for patent law, as it is concerned with taxation matters. The case of American Fruit Growers comes from a similar era of Supreme Court anti-patent mindset (pre-1952, in the age of "the only valid patent is one that has not yet appeared before us") and is also an extremely poor case, as it ignores the fact that the surface treatment of the fruit did indeed change the surface of the fruit.

I find Mr. Cole's excessive optimism a form of Alfred E Neuman "What me Worry" mindset a bit out of touch with the reality of how the Court's decision is being played out. While his advice on the surface is technically accurate, he overlooks the historical and philosophical battles under way in the US.

Then again, I am...

...and to mirror what I think that you are saying, is that the law prior to 1952 - even as the section that became 101 with the Act of 1952 is nearly the same word for word - cannot track eligible subject matter cases given the intent of Congress to remove common law evolution of the definition of "invention" that the Congress had previously given to the courts. This is a thought expressed by Ms. Knowles (and others) that Mr. Cole simply ignores in totality.

@ A rational person and Skeptical

If you read Chakrabarty you will see that the standard is set by Hartranft. Nor is that case anti-patent - what you can get from it is that novelty (including novelty of form) + new utility = eligibility. You will find that this maps rather well into the new and useful language of Section 101. From my European standpoint I have no problem with that, and it is OK under TRIPS as well (see the note to Section 27 of TRIPS.

However, we should not forget Ms Knowles and acknowledge once again her efforts and useful information.

Paul,

I suggest that you apply your own advice and re-read Hartranft directly, and then understand the historical context of the Court that cited that case for its rather poor legal position in American Fruit Growers.

And yes - you SHOULD worry - the "What me Worry" line is just way too pollyanna for the reality that the US jurisprudence is in.

If you do so - and if you understnad the context of In re Bergy subsumed into Chakrabarty (paying attention to the players involved in Chakrabarty - who says what [i.e., the dissent], you would not be so "glib" in your advise not be worried.

One cannot be in your "camp" and be in the "camp" that Ms. Knowles and I represent - these are mutually exclusive camps.

Do not be lukewarm, less I spit you out - be hot or cold, but choose a side.

Skeptical,

Thanks for your analysis with which I agree. Another issue not addressed by Paul's 35 USC 101 analysis is the issue of what the term "new" means in light of the fact that term "discovers" is used in this section.

The term "new" can be interpreted in a number of ways. For example, "new" could be interpreted to refer to only something that had never existed before. However, "new" can also refer to not having been previously known.

I would further argue that given the use of the phrase "whoever invents or discovers" that both meanings of the term "new" provided above apply with respect to 35 USC 101, because the term "discovers" normally refers to someone who "discovers" something that had existed before but was not previously known.

Therefore, I think the Myriad decision improperly requires ignoring the term “discovers” in 35 USC 101.

@ Skeptical

The side I am on is trying to make things as tolerable as possible in the situation that we find ourselves. I think that reason applied to the Supreme Court decisions can narrow them usefully, with great benefit e.g for the patenting of natural products. That is a lot easier than either (a) bringing fresh cases before the Supreme Court or (b) promoting legislative change. Furthermore, the Courts may subvert purported legislative change by paying attention to the older authorities.

And yes, I have read Hartranft very carefully more than once and maintain my position that it is a helpful, not a harmful, opinion.

As a lawyer I decline to be in any "camp" because my objective is to arrive at a true but favorable view of the law. I am working towards the same ends but perhaps by different means, and believe that care and subtlety are also useful weapons.

Paul,

I am going to politely - and firmly - disagree with you - in this particular situation (yes, often care and subtlety can be useful - but their place is not here).

You are aiming for a Chamberlain solution when it is clear that a Churchill one is needed.

While I admire your personal desire to apply narrow reasoning - such is simply not happening in the US world of jurisprudence. You are not in touch with the reality that such careful, thoughtful and restrained reasoning that you personally would apply is NOT in fact being applied.

One legislative change that I have proposed is to eliminate patent cases from the review power of the Supreme Court - this is within the constitutional power of our Congress and would resolve - in a Churchill manner - the repeating history we see of a Court who harbors animus to patents.

As I have also noted, my view on our practically worthless Congress being up to the task: well, I remain...

A Rational Person,

I have not entertained deeply the notion you put forth as to "discovery," but would note that 35 USC 100(a) can be read in your favor:

(a) The term “invention” means invention or discovery.

Had this definition been written differently, for example:

(a) The term “discovery” or "invention" means invention.

then one may argue that "discovery" is being used in a special manner and discount your view. However, the fact that Congress acted to write the law in this manner does seem to indicate that the term discovery is one that retains a different meaning from the word invention (on its face) but that Congress is taking a shortcut throughout the rest of the statute and not writing "invention and discovery" wherever "invention" is later used.

Further, your view is in fact strengthened with the passage of the AIA and the recalibration of section 102. Now, trade secrets which may still be new to everyone else in the world count as being "new." In other words, "new to you" is still "new" and the personal block of "not new to me, the inventor" is gone.

Skeptical,

Thanks for your analysis. One of the many problems with the Supreme Court's legislating from the bench with respect to 35 USC 101 is that the justices don't even understand how 35 USC 102 and 35 USC 103 work together with 35 USC 101 to prevent many of the hypothetical problems that the Supreme Court attempts to remedy by rewriting 35 USC 101.

For example, with respect to the Supreme Court's fear of an inventor potentially patenting "a natural law," the court ignores the fact that with a newly discovered natural law, many of the applications may have been performed prior to discovery of the natural law.

For example, people had been using prisms to produce spectra long before Newton discovered the natural law that produced spectra. Had Newton hypothetically tried to claim producing a spectrum from white light using a prism in the U.S. (an admittedly difficult feat, because the U.S. did not exist during Newton's lifetime), his claimed invention would have been anticipated under 35 USC 102 by everyone else who had used a prism to produce a spectrum.

The Supreme Court also provides no examples of a claim that would monopolize a law of nature and not been anticipated under 35 USC 102.

From beginning to end, the Alice Corp. v. CLS Bank decision is the Supreme Court legislating from the bench with no concern for interpreting 35 USC 101 and no understanding of how the various sections of 35 USC work together with each other.

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