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« Senate Cloture Vote on H.R. 1249 Scheduled for Tuesday | Main | Senate Votes to Invoke Cloture on H.R. 1249 »

September 06, 2011

Comments

Sure, the claims are awfully broad. But why does Judge Moore have to torture herself like this - and cut down whole swaths of research by declaring claims of this sort patent-ineligible? The '139 and '739 patents recite processes - so let them through the gate, and assess them under 112, 102 and 103. I'm betting that in view of the broad scope the patentee says these claims have, they're going down in flames once substantive analysis is undertaken. The majority clearly hinted in that direction.

"For Judge Moore, 'this case is not even close" regarding patent-eligibility'."

Kevin,

Judge Moore is truly myopic when it comes to understanding the difference between the claims in the '739/'139 patents and those in the '283 patent. If she can't see the difference between these two sets of claims, she is truly blind on claim construction specificially, and patent-eligibility generally. The hope that I had that she was "maturing" after her opinion in AMP v. USPTO has now been dashed. She's simply reverting to her former stance at the beginning of her tenure on the Federal Circuit.

Looks section 101 is like a "policy gate" for the dissenting judges who reach for section 112-type arguments.

"her dissent ignores the alternative that the correlation is valuable in itself and potentially protectable as a trade secret, with equally (or greater) deleterious effects on "the Progress of Science and the Useful Arts.""

So what if she ignored this? Every idea or piece of information claimed in any form is not eligible for patenting, and that remains true regardless of how useful or valuable the ideas or information is. Of course trade secret protection exists.

Don't forget, Kevin:

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* an unpatentable fact but is otherwise not engaging in any novel or non-obvious 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?

"Even a patient could be jointly liable for infringement, the opinion suggests, if the patient receives an immunization and then "wonder[s]" why a friend got sick even though he got the same immunization (this is a reach)."

Why do you say so, Kevin? You think Classen wouldn't "stoop that low"?

Tim G.

You quoted only part of Kevin's statement and left of the important remainder which puts that statement in context. What Moore does with respect to the "correlation" (as did SCOTUS in Parker v. Flook with regard to the algorithm on the "alarm limit") is treat what is the true "inventive discovery" (the correlation) as being irrelevant to patent-eligibility of the claim "as a whole," thus ignoring and violating (as did SCOTUS in Parker v. Flook) the language of 35 USC 103 which says the claim is to be considered "as a whole." That's what makes the "it can't be post-solution activity" proscription so non-sensical. And why Kevin is correct that 35 USC 101 is being used as too blunt an instrument.

You think Classen wouldn't "stoop that low"?

Tim G.,

You've now "crossed the line" from the debatable to the absurd in suggesting that because Kevin or anyone else would suggest that at least some of Classen's claims are patent-eligible, we must therefore agree with Classen's postulated "thinking" theory for infringement (even the Newman and Rader didn't buy that infringement theory, not should they). It's OK to debate and disagree, but I suggest dropping the "attitude" manifested by that remark.

EG,

I suspect migration from Patently-O.

A shame, really.

Skeptical,

Could be a case of Patently-O Klingons (or Romulans) crossing through the Neutral Zone.

All:

OK, let's start with the easiest question first.

The reason Classen is unlikely to sue the individual patient is the first rule you learn in law school: never sue anyone who doesn't have any money. So unless the hypothetical patient is named Gates or Buffett, I don't think as a policy matter (as opposed to a philosophical matter) that the claims should be patent-ineligible merely to protect the public. As a side note, the "that's a reach" comment was something I put in my notes and in hindsight would not have published; I mean no disrespect to Judge Moore, but I think even she was trying to think of the most absurd results she could using her understanding of the majority's opinion.

Regarding trade secret, I would like Judge Moore or anyone who tackles the issue of using Section 101 to preclude patent-eligibility to address the pros and cons of patenting versus trade secret. I don't think (necessarily) that just because something could be kept as a trade secret it should be eligible for patenting. But Judge Moore went into some detail about what inventor Classen could do and how there are sufficient incentives to invent that judging these claims to be patent-eligible would strike the right balance between patents that promote innovation and those that retard it (although I must say the latter species is mythical in my view). If the court is going to make policy judgments my point is just that they consider all the alternatives and address them; I don't care that much if we disagree about the outcome.

In my opinion, the parallel that is most telling is the one between Classen's claims and the claims in Funk Bros. (which were composition claims). That's why I included the section from Justice Frankfurter's concurring opinion - and frankly I think Judge Moore thinks so, too. As always, it is the way the invention is claimed that causes these problems - and I note that Classen's statements on the record of what his claims mean are to be given no weight under well-established Federal Circuit precedent. So while including the inventor's sentiments certainly illustrate the lengths to which such claims could be taken, the fact that inventor Classen thinks so doesn't bother me.

I think that if you read these claims as Tim G and Judge Moore do, then they clearly are so overbroad as to preempt the use of "the scientific method" for studying immunology. However, I'm not sure you need to read the claims of at least the '139 and '739 so broadly, and the majority did not. The question then (for a future post) is whether the distinctions Chief Judge Rader and Judge Newman see are legitimate grounds for distinguishing the claims of those patents from the claims of the '283 patent. Judge Moore doesn't think so.

Finally, we have tried to keep the discussion civil, and we certainly appreciate those who write to assist in that effort. On the other hand, we have pretty thick skins and so "attitude" doesn't bother us too much (as opposed to calling people "'tards" and other pejoratives). Just remember that we use simple declarative sentences when we state our position; we haven't done that yet for Classen, and when we do you will know it. Until then, don't assume I consider these claims patent-eligible just because I mention inconsistencies in the court's logic.

FInally, does anyone have an opinion on the alternative claims in the post regarding patent-eligibility?

Thanks for the comments.

Kevin,

Thanks much for getting this valuable (and I do mean valuable) debate on this thread back on track. As you correctly note, the issues in Classen on patent-eligibility (and other substantive matters specifically related to the patents in Classen) aren't going away. For example, I await the "thunderbolts" from our Judicial Mount Olympus in the Prometheus case. (Do I hear thunder now?)

Kev you should have said, in leiu of saying she dissented, simply that she applied the law as opposed to the other two applying them up some policy.

"Its acceptance would require, for instance in the field of alloys, that if one discovered a particular mixture of metals, which when alloyed had some particular desirable properties, he could patent not merely this particular mixture but the idea of alloying metals for this purpose, and thus exclude everyone else from contriving some other combination of metals which, when alloyed, had the same desirable properties. In patenting an alloy, I assume that both the qualities of the product and its specific composition would need to be specified. "

What is funny is that in my field, which for all intents and purposes is "alloys" on occasion, I had someone try to patent something by claiming such a result not long ago. Rejected over 112 1st for scope of enablement. He never even told us in his spec which materials had the properties he was claiming, but in his background he did mention some materials, so we eventually let him off by claiming those materials since he was in fact irl making those materials and he did mention them in his background. Whether this is legal or not is up for lolgrabs.

I think you meant to say:

"In doing so, the dissent apparently ignores the distinction that Flook involved an algorithm for resetting the alarm limit, and that the Court was concerned with permitting patent protection for a purely mathematical formula. "

In doing so, the dissetn apparently recognizes the distinctions and similarities to the situation in Flook which involved an algorithm for resetting the alarm limmit, and that the Court was concerend with permitting patent protection for a purely mathematical formula. Whereas the dissent recognizes that the two situations are similar in that the USSC would likewise be concerend with preempting an entire abstract concept where the claim merely has some post-solution activity tacked on (that is, after you solve the riddle of which schedule to use, you then go forth and do your post solution activity of immunization).

" her dissent ignores the alternative that the correlation is valuable in itself and potentially protectable as a trade secret, with equally (or greater) deleterious effects on "the Progress of Science and the Useful Arts." "

Her dissent does not ignore that Kev. Her dissent, or rather explanation of the law for those unfortunate enough to not understand it, notes simply that the law is that such things are not patentable.

I can't speak to your first example because I don't see the difference in the claims, because I only perused it and didn't look at the originals a long time.

However, your second example is a great example of specifically why at least some claims at issue are invalid.

"1. A method of immunizing a mammalian subject with a vaccine specific for an infectious disease-causing organism, the method comprising:
(I) immunizing each of a plurality of treatment groups of mammals with an vaccine effective in provoking a desired immune response according to a plurality of immunization schedules; and
(II) immunizing said mammalian subject according to the immunization schedule in step (i) that produces the lowest incidence, prevalence, frequency or severity of a chronic immune-mediated disorder in said treatment groups."

^That shows off the blatant offending characteristics of the claims in this case.

"Regarding trade secret, I would like Judge Moore or anyone who tackles the issue of using Section 101 to preclude patent-eligibility to address the pros and cons of patenting versus trade secret."

In other words, Kev would totally prefer that everyone who uses 101 according to the law revisit the reasons the law is what it is today. Every. Single. Time.

Nice Kev. Nice.

"So while including the inventor's sentiments certainly illustrate the lengths to which such claims could be taken, the fact that inventor Classen thinks so doesn't bother me.

"

In other words, Kev would prefer that we wait until patentees, sufficiently rebuffed in their assertions of infringement when they draft in this FORM come back in a different FORM and claim infringement again. In other words, form is totally the biggest issue here, substance can be safely ignored.

Idk Kev. I just don't know about that.


"I think that if you read these claims as Tim G and Judge Moore do, then they clearly are so overbroad as to preempt the use of "the scientific method" for studying immunology. "

So then, Kev, your entire position rests on a faulty claim construction? I mean, if that is the stance you wish to take... well, I have no problems with it, but I wonder why you would bother to get up and tell us all about all this hooblah when you could simply say: meh, I disagree with your claim construction, even though you're clearly right, and the patentee thinks you're on the right track, and even if you're not on the right track then other patentees soon will get on that track and we'll have the same issue before us.


"Just remember that we use simple declarative sentences when we state our position; we haven't done that yet for Classen, and when we do you will know it. "

Oh, I'm sorry, we still haven't seen your views. I'm afraid I was seeing your views leaking from around the edges of your previous posts, but sure, go ahead and make them explicit. Feel free to steal my summary of what your view appears to be above.

One problem appears to be that patent prosecutors and inventors are almost always encouraged and incentivized to draft claims in the broadest way possible. This approach often results in needlessly broad claims that present courts with exactly the kind of difficulty seen in this case.
http://www.generalpatent.com/blog/

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