A Matter of Patent Law Despotism: The Nonsensical Reasoning in the Supreme Court’s Mayo Collaborative Services Decision Part 2*

By Eric Guttag
March 26, 2012

Our patent world was fairly “rocked” last week by the Supreme Court’s decision in Mayo Collaborative Services v. Prometheus Laboratories, Inc.  See Eviscerating Patent-Eligibility of Drug Testing Methods: The Nonsensical Reasoning in the SCOTUS Prometheus Decision* .  Now that the dust is starting to settle (and hopefully the “verbal vitriol” being thrown is starting to subside), I’ve reflected more on what this decision means for the patent-eligibility of analytical and diagnostic method specifically, and the informed interpretation of patent law generally.  What I see expressed by Breyer’s opinion in this case is both ominous and alarming.  Frankly, for the past 5 or 6 years, I’ve witnessed “patent law despotism” and “patent hostility” being expressed by the Supreme Court like I haven’t seen since the 1970’s.

For those who have “cheered” Breyer’s opinion in Mayo Collaborative Services, the end result, the invalidation of Prometheus’ claimed drug dosage calibration method as patent-ineligible under 35 U.S.C. § 101, is the least bothersome to me.  That Prometheus’ claimed method would satisfy 35 U.S.C. § 101 was problematical to me after the Supreme Court’s decision in Bilski v. Kappos based on the final “determining step” and the “wherein clauses” which inform you (indirectly) when the dosage of the administered thiopurine drug  is too high or too low.  What Prometheus’ claimed method needed to do was use the measured metabolite levels gained by the “determining step” and, as guided by the “wherein clauses,” to achieve a useful result.  As Steve Hansen has kindly pointed out on this blog, Claims 1 and 13, respectively, of Prometheus’ related U.S. Pat. No. 6,987,097 do exactly that by stating that the drug dosage should be increased (if the metabolite levels measured are too low) or should be decreased (if the metabolite levels measured are too high).  If Claims 1 and 13 of the ’097 patent can’t pass the “patent-eligibility” bar under 35 U.S.C. § 101, then I don’t know what method or process claim can.


For other articles on this important decision visit IPWatchdog: Mayo v. Prometheus


But what remains troubling to me is the nonsensical and logically flawed reasoning in Breyer’s opinion.  What Breyer’s opinion tries to do is determine the “patent-eligibility” question under 35 U.S.C. § 101 in a vacuum, divorced from any consideration of the other relevant patent statutes such as 35 U.S.C. § 102, and especially 35 U.S.C. §§ 112 and 103.  That’s what Breyer’s opinion essentially does when he dismisses the approach suggested by the U.S. Solicitor General which I, Professor Michael Risch, Chief Judge Rader, and many others believe is the only way you can make rational, logical, and objective determinations of what is or is not “patent-eligible” under 35 U.S.C. § 101.  That’s also why the Flook case that Breyer’s opinion so heavily relies upon for precedential support is so logically flawed:  (1) it forces you to treat previously unknown “laws” (or relationships) as if they’re part of the prior art; (2) it dissects the claim language to try to separate out the supposed “law of nature” from the rest of the claim context.  When you employ either of these techniques with the claim, you do so in contravention of what 35 U.S.C. § 103 explicitly says (especially that the claimed invention should be considered “as a whole”), as well as what is implicit in 35 U.S.C. § 112, second paragraph (that the claim defines what the invention is).  Put differently, unless you’re willingly to address the claimed invention in the context of all of the relevant patent statutes (which Breyer and his 8 Supreme Court colleagues appear to be unwilling to do), I would be just as objective determining patent-eligibility under 35 U.S.C. § 101 using a Ouija board.

What has also finally dawned on me is that using the “law of nature” approach is one of (if not the most) fatal logical flaws in Breyer’s opinion.  I frankly find the whole “law of nature” reference in Breyer’s opinion to be inappropriate for evaluating Prometheus’ claimed method.  We’re not talking about Einstein’s “theory of relativity” or Newton’s discovery of the “law of gravity”, to use Breyer’s hypotheticals.  Instead, we’re talking about administering a specific man-made thiopurine drug, measuring the levels of metabolites generated (which only humans can do, even if they use instruments), and evaluating (with human insight) the measured metabolite levels to decide whether the drug dosage needs to be adjusted because it’s too high or too low.  You may rightly fault how Prometheus’ claimed drug dosage calibration method was written (the “draftsman’s art” as Breyer disdainfully calls it).  But doing so on the basis of this claimed method being essentially nothing more than a “law nature” in the guise of “routine, conventional activity” is totally unpersuasive and illogical reasoning to me.

In fact, and without getting into whether Prometheus’ claimed method is patentable under 35 U.S.C. §§ 102/103 (of which the U.S. Solicitor General raises some very reasonable “doubts”), this claimed method is also highly vulnerable to attack under 35 U.S.C. § 112, second paragraph, as not “particularly pointing and distinctly claiming” what the invention is.  Prometheus’ claimed method, as written, is analogous to what we used to call improperly describing a machine as “so many elements in box,” but not saying how those elements are connected and/or function together.  Admittedly, the crux of what is unique (if anything) in Prometheus’ claimed method is the specifically identified ranges in the “wherein clauses” telling you whether the drug dosage is too high or too low, but those specific ranges recited in the “wherein clauses” are simply a “theoretical” exercise unless you do something to convert those ranges (and based on measuring the actual level of metabolites generated) into a useful result as Claims 1 and 13 do in the ‘097 patent.  In fact, I would be perfectly fine with describing Prometheus’ claimed method, as written, as being too “abstract” under 35 U.S.C. § 101 in view of Bilski, or “indefinite” in view of 35 U.S.C. § 112, second paragraph.

Instead, Breyer’s opinion drops the equivalent of an atomic bomb on Prometheus’s claimed method because he and his 8 colleagues are too patent law ignorant, too “patent hostile” (and frankly too arrogant) to use a targeted “smart” bomb that the U.S. Solicitor General and others suggested (i.e., consider 35 U.S.C. §§ 102, 103, and especially 112 first before diving into the 35 U.S.C. § 101 “quagmire”).  Not only does Breyer’s opinion use the wrong weapon to invalidate Prometheus’ claimed method, but the choice of that “wrong weapon” also causes, as Kevin Noonan has correctly pointed out on Patent Docs, severe and unnecessary “collateral damage” to IP protection for other analytical and diagnostic methods, both existing and in the future.  Even worse, Breyer’s opinion is so full of logical inconsistencies and conflicting statements that all we know is that Prometheus’ claimed method didn’t make the patent-eligibility grade.  We “mere mortals” are left with absolutely no rational and understandable guidance by Breyer’s opinion as to how to determine what analytical and diagnostic methods might reach the patent-eligibility zone.  Unfortunately, since at least 2007, the Supreme Court has burdened us “mere mortals” with this “no rational and understandable guidance” problem over and over again, starting with KSR International v. Teleflex, then Bilski, and now Mayo Collaborative Services.  Our Judicial Mount Olympus frankly shirks its responsibility when it continues to hurl “thunderbolts” at the Federal Circuit in patent cases without ever trying to render some patent law “order” out of the “damage” caused.

Another astute point made by Kevin Noonan on Patent Docs that I totally agree with is that the current Supreme Court pays far too little credence to those having more informed and experienced views on what the patent law actually is, and how those laws should operate (i.e., be administrated).  In particular, these 9 technologically-challenged and patent law-ignorant Justices in our “court of last” resort literally exert “veto power” over 30 years of Federal Circuit precedent, the court which was intended by Congress (back in 1982 when the Federal Circuit was created) to be the true arbiter of patent law jurisprudence.  So much for considering what the Legislative Branch mandated.  As also noted above, the current Supreme Court even ignores a very cogent suggestion from the U.S. Solicitor General that it might be a better approach to look at the other patent statutes (i.e., 35 U.S.C. §§ 102, 103, and especially § 112) before jumping into the patent-eligibility “quagmire” of 35 U.S.C. § 101.  So much for listening to the thoughtful advice from the Executive Branch.  Instead, the current Supreme Court deliberately chooses to be “deaf, dumb, and blind” to any informed patent law advice of others.

What is really sad (and appalling) about the current situation was that the Supreme Court did let the Federal Circuit carry out the role it was mandated by Congress in 1982 to do for about 25 years, up until around 2006 or 2007 (i.e., starting with the eBay and KSR International cases).  Every once and awhile in those 25 years, the Supreme Court exerted some gentle (and appropriate) “correction” such as occurred in 2001 with Festo.  But what we now have with this almost endless “vetoing” of Federal Circuit patent law decisions is, in effect, “patent law despotism” being exerted by the Supreme Court.  If you won’t accept the jurisprudence of the court (the Federal Circuit) designated by Congress to be the prime arbiter of patent law, if you won’t listen to the Executive Branch (i.e., the U.S. Solicitor General) about what might be better approach to resolving patent claim validity, if you simply render decisions as if the patent statutes enacted by Congress (the Legislative Branch) don’t exist, then what else, pray tell, do we have?

In fact, the current Supreme Court brings back some very unpleasant memories from the 1970’s (i.e., the era of the Gottschalk v. Benson and Flook cases).  Frankly, I haven’t seen a Supreme Court as “patent hostile” as this one is (and Justice Breyer is now the “new” Justice Douglas in terms of “patent hostility”) since that time.  (I also know those who are “cheering” Breyer’s opinion will “mentally hyperventilate” at me suggesting that the current Supreme Court is “patent hostile.”)  Fortunately, back in the 1970’s, Congress realized that this “hostile” patent law jurisprudence was having a damaging impact on promoting and encouraging American innovation, thus creating the Federal Circuit in 1982.  Unfortunately for us now, Congress, as expressed in the AIA (the Abominable Inane Act) is starting to become as “patent hostile” as the current Supreme Court.

Frankly, the only hope we likely have to overcome this “patent law despotism” by the current Supreme Court is how resistant the current Federal Circuit is to being “vetoed” on patent law jurisprudence.  Given what I’ve seen the Chief Judge say recently, I’m hopeful that Rader will lead to the charge to try to “cabin” decisions like Mayo Collaborative Services to lessen their illogical impact and avoid significant “collateral damage” to patent law jurisprudence.  In other words, the Federal Circuit needs to engage in a “battle of attrition” to wear down this “patent law despotism” by the current Supreme Court, and thus render some “balance” and “logical order” in patent law jurisprudence authored by a court (the Federal Circuit) that was mandated by Congress to do so and, which knows (exponentially) far more about patent law then does 9 technologically-challenged and patent law-ignorant Justices.

The Federal Circuit can also win such a “battle of attrition.”  The late Chief Judge Markey did so back in the 1980’s when he first led the Federal Circuit to “cabin” some of the more atrocious and illogical Supreme Court patent law decisions authored at least as far back as the 1950’s.  The fact is the Supreme Court can’t take every single patent law decision by the Federal Circuit that they might disagree with.  I also know this sounds “Machiavellian” to suggest the Federal Circuit could (and should do) pursue this course.  But with the current Supreme Court exerting such unprincipled “patent law despotism,” we’re also now in a “battle for survival” to make sure our patent law jurisprudence is based on a logical, rational, and balanced, and especially an informed (not deliberately ignorant) interpretation of our patent statutes and case law precedent.  Because the Federal Circuit was mandated by Congress in 1982 to be the prime arbiter of patent law jurisprudence, the Federal Circuit is in by far the best position to retard, minimize, and control (gently, tactfully and over time) the impact of such Supreme Court “patent law despotism.”

Those supporting the reasoning in Breyer’s opinion repeatedly “crow” that Mayo Collaborative Services was a 9-0 decision.  But the fact that 9 technologically-challenged Justices reached a unanimous decision based on nonsensical, as well as logically and legally-flawed, reasoning does not impress me, or persuade me.  That those 9 Justices simply chose to “trounce” the Federal Circuit’s decision without leaving any understandable guidance in its place for us “mere mortals,” chose to deliberately ignore a thoughtful suggestion from the U.S. Solicitor General, and simply determined patent-eligibility under 35 U.S.C. § 101 in a vacuum divorced from any consideration of the relevant context of other patent statutes just makes Breyer’s opinion result-driven and despotic.  Such “patent law despotism” does not earn my respect, only my scorn.

*© 2012 Eric W. Guttag.  Posted March 26, 2012 on IPWatchdog.com

The Author

Eric Guttag

Eric Guttag  
Mr. Guttag has over 38 years of corporate and private intellectual property law experience on patent, trademark, copyright, trade secret and unfair competition matters, computer and Internet law, including patent application drafting, prosecution, and patentability studies; infringement and validity studies; international patent prosecution; patent and know-how licensing; consulting, confidentiality, clinical study and research agreements; trademark searches and opinions; trademark registration and prosecution; trademark freedom-to-use studies and trademark litigation and dispute resolution.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 58 Comments comments.

  1. step back March 26, 2012 12:40 pm

    Gene,
    With due respect, I do not agree that the vitriol has yet died down.

    How else can a “rational” & scientifically-trained person react when he sees that the government has been taken over by clueless actors plucked straight out of the movie, “Idiocracy”?

    The first reaction is shock and disbelief, then anger (and vitriol), then grieving and finally we may get to the “acceptance” stage (where acceptance means here that we realize we live in Idiocracy times and not that we can ever swallow the all-you-can-eat of nonsense buffet that the SCt. has served up in Mayo. v. Promo).

    At the end of the day, it becomes clear that that the Supremes do not understand what a “step” inside a method claim is (the “wherein” clause of Promo’s Claim 1 did not include a process step), do not understand what a “Law of Nature” is, do not understand the science of medical dosaging and do not understand what science itself is.

    We have to accept that sad state of affairs as our current situation and we have to work harder at educating them who had taken over the reigns of power in this country.

    (No Virginia, our technological farm lands will not produce more if we kill patents like weeds and instead water those lands with Brawno Electrolytes. Benjamen Franklin and other science minded ones of our Founding Fathers are already spinning fast and furious in their graves.)

  2. Gene Quinn March 26, 2012 1:06 pm

    Step-

    I tend to agree with you that we are quite a way from the verbal vitriol really subsiding. I also agree that it was (and still is) correct for the patent and technology communities to respectively be very angry with this decision. It demonstrates just how little the Supreme Court understands about patents. They could well have done away with this claim without setting all of patent law ablaze. They ignore Judge Newman’s constant reminder that when you cut with patentable subject matter under 101 you kill an entire industry from every evolving, all without ever asking whether the subject innovation is new and nonobvious.

    I am extremely dismayed by the utter lack of understanding and the arrogance. As if these 9 know everything about everything. And these are the folks that are going to decide the fate of our health care system and liberties under the Commerce Clause? God help us all!

    -Gene

  3. Bemused March 26, 2012 1:36 pm

    Gene,

    I’m with you on the shock and dismay by this latest patent law blunder by the SC. Any thoughts on the basis for the anti-patent bias that this SC has exhibited over these past few years? Also makes me wonder how the patent community was able to dodge the bullet with the i4i v Microsoft case.

    Bemused

  4. Gene Quinn March 26, 2012 2:05 pm

    Bemused-

    I agree with you on i4i. I think we have Seth Waxman to thank for that… without stellar representation the patent community would have been sunk.

    I don’t know why the Supremes are following such an anti-patent agenda, but the Roberts Court is certainly going to go down as perhaps the most anti-patent Supreme Court ever. I think a lot of it is because they are just plain arrogant. They think they know everything about everything. They should stick to the Constitution and Congress should remove their patent jurisdiction, which they Constitutionally have a right to do.

    Will be working on that article soon!

    -Gene

  5. EG March 26, 2012 2:14 pm

    Bemused,

    Why the recent “patent hostility” is hard to figure, but this “hostility” is consistent with the Justices being antitrust driven (that’s where their legal education and experience comes from). In the past 60 or so years, SCOTUS has only upheld the validity or enforceability of patent rights in 4 cases: (1) U.S. v Adams (1966); (2) Diamond v. Chakrabarty (1980); (3) Daimond v. Diehr (1981); and (4) Microsoft v. i4i. U.S. v. Adams is part of what we could call the “trilogy”: on either side of Adams are two cases (one is Graham v. John Deere) that didn’t uphold the validity of the patent rights. Chakrabarty and Diehr are 5-4 decisions which barely upheld the patent rights involved. A different outcome in Microsoft v. i41 would have required SCOTUS to overturn about 80 year old precedent by a SCOTUS “titan” (Justice Benjamin Cardozo), as well as ignore the views of the one Federal Circuit Judge (the late Giles Rich) that SCOTUS still respects, so that wasn’t going to happen.

    What you’ll also notice in these 4 cases is that they involved an affirmance of the lower court’s ruling. At no time in this 60 year period has SCOTUS granted certiorari to overturn a lower court ruling of invalidity or unenforceability of patent rights. That does not speak well for SCOTUS rendering “balanced” justice when it comes to the validity or enforceability of patent rights.

  6. EG March 26, 2012 2:17 pm

    SB,

    My comment on “verbal vitriol” being thrown was a “hope,” not a “fact.” As you know, it’s still going on (unfortunately).

  7. Renee Marie Jones March 26, 2012 5:18 pm

    The irrationality is on the part of the people who want to patent everything. In software, for example, it is an absolute FACT that EVERY computer program is nothing more than a mathematical function. NOTHING MORE. The nonsense of courts trying to group software into mathematical and non-mathematical algorithms, those that cannot be patented and those that can, is internally inconsistent and can only lead to more nonsense. Every algorithm is pure mathematics. Period. If you disagree, then you as ignorant as if you claimed that 2+2=5.

  8. Sympathetic March 26, 2012 5:35 pm

    I can agree the level of guidance offered by the court was less than ideal, but I cannot disagree with the need for a change in direction. Having worked in the software field for several decades, I have been repeatedly appalled by the aggressive expansion of patents into the realms of algorithms and mathematics. This expansion has been ill advised and increasingly costly in terms of innovation and progress in the fields. Today it would bankrupt any software firm to do full patent searches on the products they produce and this situation seems unlikely to change any time in the near future. The sole alternative, to simply ignore competing products and the algorithms they might be employing, has led to the rise of tolls from third parties who provide NO useful products, but merely tax those who do with a bludgeon of costs without useful recourse.
    My wish would be that the court would recognize the growing flaw where ideas are described in a manner which no inventor would understand or seek out for guidance. A patent system that cannot be utilized by the engineers and craftsman that are threatened by it is a dead weight on innovation, not a boon.
    If you want stop this kind of high-handed justice from the highest court in the land, then please stop making our patent system a burden on those who produce improvements and innovations. Choose whatever manner you like. A requirement that a tradesman would WANT to use a patent. A relaxation on penalties for those producing the same idea independently. A limit on the potential costs to infringement.
    Just do something so that I don’t have to sleep every night in fear that my products will be so successful that the black wizardry of patent lawyers will destroy me with some piece of paper barely connected with what I produced through months and years of effort.

  9. EG March 26, 2012 5:42 pm

    “The irrationality is on the part of the people who want to patent everything.”

    With all due respect Renee, you’ve gone completely off the deep end in saying. My beef is with Breyer’s reasoning in this case, not the end result. Please notice that I said up front that the end result in this case, invalidity of Prometheus’ claimed method, was OK by me. How does suggest I support “patent[ing] everything”?

    You description of how software works would even make most software developers laugh. Software is more than just algorithms. It’s what causes the hardware of computers to work as they do. Without software, most computers are just “dumb machines.” That I disagree with such an ill-informed description of software as yours has nothing to do with 2+2=5.

  10. step back March 26, 2012 6:26 pm

    Dear Renee Marie,

    It is self-evident that you do not understand the definitions of basic words like “function”, “computer” or the difference between “program” and “software”.

    For the technical definition of “function” as used in the math arts, I respectfully direct your attention here:
    http://en.wikipedia.org/wiki/Function_%28mathematics%29

    For the difference between “program” and “software”, I respectfully direct your attention here:
    http://en.wikipedia.org/wiki/Software

    As far as what a “computer” is and whether all easily-changeable controls on its functions need to be digital data stored in physical media, I respectfully direct your attention here:
    http://en.wikipedia.org/wiki/Analog_computer

    More generally, “computer” is an ambiguous term and so is “software”:
    http://en.wikipedia.org/wiki/Computer_%28disambiguation%29

    http://en.wikipedia.org/wiki/Software_%28disambiguation%29

    Leaving aside your misuse of the word, “function”, mathematical ideas are cognitions that reside only in the minds of people who qualify as mathematicians.

    A digital electronic computer cannot execute its operations using mathematical ideas that reside only in the minds of people. Instead there must be some physical means that physically guides the physical operations of the physically real machine. A transistor does not flip states merely because you or I have an “idea” in our heads.

    The problem with you people (and I do mean you people) is that you don’t know what you’re talking about and yet you feel 101% confident that you do.

  11. step back March 26, 2012 6:28 pm

    Gene, I’m stuck in spam-blocking jail. Please release me and delete this request.

    Thanks. 🙂

  12. jon March 26, 2012 7:30 pm

    inventors and patent attorneys work hard to ensure that applications comply with the law but its turns out that judges don’t care much about the law. i think anti-patent judges should be removed.

  13. Marvin March 26, 2012 8:16 pm

    Don’t the Supreme Court Justice’s have any common sense? Everybody knows that patents encourage innovation – with no patent protection, no new technology is developed. It’s just that simple. Debating patents with these anti-patent people is like talking to a brick wall. If patent protection in the medical diagnostic art is not permitted or heavily restricted, then new advances in the medical diagnostic and device industry will just not occur – it’s just so logical. It’s unbelievable that people do not understand this simple concept. The subject matter eligible for patent protection needs to be greatly expanded and patent term lengthened to encourage innovation. Patent terms should be increase in length, just like copyright term length – Technological innovation in America would explode!

  14. Doug Webb March 26, 2012 8:50 pm

    Pull your head out of your butt Eric. SCOTUS knows the law a lot better than you, that is why they are there and you are next to nothing.

  15. doug March 27, 2012 6:52 am

    EG. “You[r] description of how software works would even make most software developers laugh. Software is more than just algorithms. It’s what causes the hardware of computers to work as they do. Without software, most computers are just “dumb machines.” That I disagree with such an ill-informed description of software as yours has nothing to do with 2+2=5.”

    MSCS here, 30 years experience from programming robots at nasa, to computer games for retail, to 3D training systems. If the assertion that computer programs are mathematical equations make any programmer laugh, that programmer should be fired. Probably a COBOL programmer anyway.

    What the [REDACTED BY EDITOR] do you think causes the hardware of computers to do what they do? Software algorithms. What do software algorithms do? They define a sequence of arithmetic and logical operations on data. Period.

    But hey, convince me. What else is software besides arithmetic and logic? magic?

    Every single software patent should be struck down. There is copyright and trade secrets to use. You cna protect your code with copyright, but you protect your algorithms as a trade secret. Or take patent term back to 7 years.

    Software patents are only used in an anti-competitive way anyway which is Patent Abuse.

  16. EG March 27, 2012 7:54 am

    Doug,

    As far as “know[ing] the law a lot better than” me, let me educate you on some facts. Come June of this year, I’ll have been practicing law for 35 years. That’s longer than 3 of the Justices of the Supreme Court (Roberts, Sotomayor, and Kagan).

    In terms of patent law, that has been the focus of my practice up to now, primarily doing patent application drafting and prosecution, which means I’ve written several hundred patents and thousands of patent claims. I’m willing to bet that my patent law experience far exceeds that of the of the 9 Justices of the Supreme Court combined.

    Also for your information, I study Federal Circuit cases constantly, as well as those by the Supreme Court relating to patent law (and sometimes outside of patent law). I speak from knowlege and experince, not uninformed opinion.

    As far as “why [those Justices] are there,” that’s a polticial nomination by the President which is then confirmed by Congress. One of the greatest judges of all time, Judge Learned Hand, who should have made it to the Supreme Court (and understood patent law quite a bit better than the current 9) never made it for political reasons. Would you also like me to point out the political travesty that happened to former Judge Robert Bork?

    I’m also not saying the current 9 Justices aren’t bright, they are. But those 9 Justices knowledge of patent law is scant, uninformed, and overly driven by an antitrust approach.

    I would also suggest avoiding such ad hominem attacks as you’ve made here. I’m not asking you to agree with me (there are many who don’t) or not to express contrarian views (you are free to do so). But please don’t insult my experience, intelligence, or competence when it comes to patent law.

  17. Gene Quinn March 27, 2012 8:24 am

    Doug,

    You really think you can protect software with trade secrets? Either you don’t understand software or you don’t understand trade secrets. My guess is it is both.

    I’m at a conference today, so I can’t educate you via iPhone commenting, but suffice it to say that once you release the software trade secret protection is lost. And don’t give me the line about securing code. That us irrelevant in a trade secret analysis because it can always be unlocked.

    Also, watch your language. You are entitled to your opininion but you do not have an absolute right to comment on IPWatchdog. If you need to curse go elsewhere. That is unacceptable here.

    -Gene

  18. EG March 27, 2012 8:48 am

    SB,

    Thanks for the link to the definition of “software”: a collection of computer programs and related data that provides the instructions for telling a computer what to do and how to do it.

    Doug: I don’t see the word “algorithm” in this definition of “software.” Now I do realize that “algorithms” are necessary in computer programs so that those programs will work and cause the computer to operate (“function”). But my point was that “software” is more than just “algorithms” in a vacuum. Those “algorithms” have to cause “function” or the “software” is useless to the computer. Try telling a pilot of a B-2 bomber that the “software” keeping his plane from crashing is a bunch of nonfunctional “algorithms.”

  19. Alan Stewart March 27, 2012 9:17 am

    I do have one question to propose to Mr. Guttag, Gene, the Solicitor General, etc., who are proposing a “smart bomb” approach of addressing §§102 and 103 first before trying to determine if a patent claim covers patent eligible subject matter under §101.

    If we address 102 and 103 prior to addressing 101, are we not setting up the next argument to be, well, SCOTUC/FedCir only addressed novelty and obviousness, so they must have tacitly approved that the subject claim is eligible under 101? Is there not a threshold of patent eligibility that is inherent in 101 and 112 that must be passed before we even consider if something is novel and/or non-obvious?

    I have real trouble with the logical construct suggested here. I see this as more of a NASCAR pre-race inspection before we let the cars go out on the track to see who is the fastest. If you don’t pass inspection, you don’t get on track.

    With these particular claims, I think there was no step that actually did something with the results. Merely looking at the level of metabolites is not enough and the wherein step did not fix this. The parallel patent included these steps and I agree with the conclusion above that these are obviously patent eligible. Whether they are novel and non-obvious, that is a whole different story. As an examiner, I like to think that I would have held out for something more to be placed in the claims before issuing the NOA, assuming the 102/103 hurdles were overcome. As to whether this should be based on 101 or 112, I tend to fall toward 101 since this appears to be a natural reaction that would be well known to human biological experts. If I could get over the 101 Law of Nature aspect and a possible 112 issue, I think a Bilski machine or transformation issue may also have to be addressed.

    Regardless, I still see thresholds that need to be overcome BEFORE addressing 102/103. An examiner has to take a logical construct, and provide a 102/103 discussion even if he/she finds issues in these threshold determinations. Should a court do the same? Should a court say that they think it fails on a threshold issue and even if it passes the threshold, we think it fails on novelty/obviousness? Or shoudl a court stop at the threshold?

    ars

  20. American Cowboy March 27, 2012 9:52 am

    As to the contention that software is nothing but math, I have to respectfully disagree as to software as it is patented.

    Yes, at the machine language level a bunch of math is done, but patents on software are almost always couched in terms of layers way above the machine language layer of a software stack. At that level, there are businesses being run or organized, machines being controlled, etc., not math.

  21. American Cowboy March 27, 2012 9:53 am

    Why is the Roberts Court so anti-patent?

    I have a suspicion that some patent lawyer dissed Roberts at a cocktail party some years back and he is getting his revenge.

  22. EG March 27, 2012 10:10 am

    To address your question, Alan, what I’m suggesting is that you consider what other patent statutes shape the context of how to determine patent-eligibility under 35 USC 101. That context includes, at minimum, considering 35 USC 112, especially the second paragraph (claim defines the invention) and 35 USC 103 (the claimed invention must be considered “as a whole”). When you try to judge patent-eligibility under 35 USC 101 divorced from the other patent statutes that provide the context, as Breyer’s opinion does, you immediately cause logical inconsistencies, including significant inconsistencies with 35 USC 103 which the Flook case is fraught with. That becomes even more glaring when you read what the claim says in Flook (updating the value of at least one alarm limit on at least one process variable involved in a process comprising the catalytic chemical conversion of hydrocarbons): three “determining steps” followed by an “adjusting step” which changes the alarm limit value. Perhaps this Flook claim could have been written differently (such as moving some or all of the preamble language into the body of claim to clearly set out that what those steps to is to control the catalytic conversionj proces), but the ruling by SCOTUS that the Flook subject matter is patent-ineligible under 35 USC 101 is manifestly and utterly WRONG. That’s why I view the Diehr decision as an effort by a majority of SCOTUS to “‘cabin” and exert “damage control” over the Flook decision without overulling it.

  23. Alan Stewart March 27, 2012 10:17 am

    Eric:

    Ok, I see where you are coming from with regard to addressing 103 in the threshold issue. Taking the claim as a whole seems so obvious to those of us who work in this world that I was assuming that into the evaluation under 101. What seems obvious to me was clearly not obvious to SCOTUS. I am really uncomfortable with the idea that just because a claim has some aspect that might be defined as a “Law of Nature” that nothing can rescue it. Taking the claim as a whole, as stated in 103, would seem to address that concern but the decision clearly does not read that way. With your clarification, I think I am generally in agreement with your post.

    ars

  24. Mike Zall March 27, 2012 10:20 am

    If you have not seen this, please view. You will laugh your head off. Only for those who understand the patent situation…..
    http://www.youtube.com/watch?v=MYi5SQ0sEfw

  25. Jim O. March 27, 2012 12:30 pm

    The arrogance of patent practitioners on this topic is simply breathtaking. You think that deep knowledge of patent precedent and procedure gives you some divine right to dictate how patent law should be interpreted, in defiance of the arbiters appointed to the task under the Constitution. You further think that insubordination to higher authority is a judicial virtue. Do you really think these postions tend to raise the reputation of the patent bar?

  26. CK March 27, 2012 12:55 pm

    “…what I’m suggesting is that you consider what other patent statutes shape the context of how to determine patent-eligibility under 35 USC 101. That context includes, at minimum, considering 35 USC 112, especially the second paragraph (claim defines the invention) and 35 USC 103 (the claimed invention must be considered “as a whole”). When you try to judge patent-eligibility under 35 USC 101 divorced from the other patent statutes that provide the context, as Breyer’s opinion does, you immediately cause logical inconsistencies, including significant inconsistencies with 35 USC 103 which the Flook case is fraught with.”

    I could not disagree with you more. The fact that the justices used 103 in their 101 analysis is the heart of the problem. Your reasoning is exactly the same reasoning that the Mayo decision uses-a conflation of 35 USC 101 and 103. It essentially says that if all you claim an obvious process plus a naturally occurring phenomenon, that is not patent eligible under 101. The problem isn’t that the justices should consider all the other statutes in their 101 analysis, it’s that they have conflated different portions of patent law to begin with. If SCOTUS had ruled that the claims were ineligible under 103, without considering 101, I don’t think anyone would have a problem with that (except the patent owner).

  27. step back March 27, 2012 1:59 pm

    MZ, thanks for the link.
    Couldn’t we have picked someone other than the Furious Fuehrer to be the spokesman for those who ‘dreamed their whole lives of growing up to be patent attorneys’?

    I mean, we could have had Tom Cruise and Jack Nicholson doing the delivery in that classic, A Few Good Patent Prosecutors: “You want the truth about Laws of Nature? You can’t handle the truth!”

  28. EG March 27, 2012 2:01 pm

    CK,

    Let’s be clear: I’m not disagreeing that with you that Breyer’s opinion conflates section 101 with issues in sections 102/103. But what I’m saying is, that, if you’re to be consistent with the language in and analysis under section 103 (the invention to be patented be “considered as a whole”), you must likewise consider the subject matter “as a whole” under section 101 as well. That’s the logical inconsistency of not considering the entire context of patent claim validity: you can’t consider the claimed invention “as a whole” under 103, yet then permit the claimed invention to be picked apart under section 101 to separate the so-called “law of nature” portions from the rest, including so-called “post-solution activity.” That’s what Flook does so illogically, and is now repeated by Mayo Collaborative Services. Also, you’re essentially required to consider section 112 first, especially the second paragraph, because that section defines what the invention is that is to be evaluated for eligibility under section 101, i.e., that which as recited in the one or more claims.

    Again, the reasoning in Breyer’s opinion tries to judge patent-eligibility under section 101 in a vacuum, and as if the other patent validity statutes don’t exist. And by doing so, you’re treating the claimed invention differently depending on which patent validity provision you’re looking at. That simply won’t work logically.

  29. EG March 27, 2012 2:29 pm

    “With your clarification, I think I am generally in agreement with your post.”

    Thanks, Alan. As my response to CK hopefully makes clear, my “contextural position” about considering the other patent validity statutes is to make sure the claimed invention is treated and characterized the same (not differently) whether its judged under section 101, 102, or 103 (or even section 112). I’ll admit that I’ve been a proponent (like the U.S. Solicitor General, Professor Risch, Chief Judge Rader, and others) of looking at sections 102, 103, and 112 first for determining patent claim validity before resorting to a patent-eligibility analysis under seciton 101. That was primarily driven by the “fuzzy” standard for patent-eligibility (“I know an abstract idea when I see even if I can’t define it) that came out of Bilski, and has led to several of Federal Circuit decisions, both “yea” and “nay” on patent-eligibility, that are very hard to reconcile.

    If the claimed invention (i.e., as defined by the claim) is treated the same under section 101 (no dissecting, no trying to separate out “laws of nature,” no “post-solution activity” nonsense, etc.) as any other patent validity section, I could potentially feel “warm & fuzzy (i.e., comfortable, not confused)” in evaluating patent-eligibily first under section 101. But the nonsensical, illogical approach taken in Breyer’s opinion to evaluating patent-eligibility under section 101 just makes me nauseous.

  30. CK March 27, 2012 2:47 pm

    EG, your logic is strained. Breyer did not do what you are saying he did. conflating two laws cannot reasonably be said to be considering one law “in a vacuum.”

    If you read 103 a, you see that the “as a whole” clause is necessary based on the line preceding it. This is not a direction as to what should be done in 101 analyses, nor is it direction that said clause only applies to 103. I agree with you that a proper 101 analysis requires considering the claimed invention as a whole, but not because 103 says so. The problem with the decision is that it applies 101 to one piece of the claim and 103 to another, then passes that as a 101 invalidity; the problem is not that 103 was not considered in the 101 analysis.

  31. Gene Quinn March 27, 2012 2:52 pm

    Jim-

    Our right to criticize what deserves to be criticized is not divine, it is based on the First Amendment. A strong argument can be made that it is our duty to point out when the Supreme Court or other courts ignore the law, ignore precedent, demonstrate utter ignorance and don’t care.

    So what is your agenda? Why do you want to blindly accept the Supreme Court and all they do as divine and deserving respect?

    The Court deserves respect when Court is in session. They deserve no respect outside that setting, particularly when they are so arrogant and so clueless.

    As for whether I can competently know they are wrong, YES! I know far more about Patent law than any of the Justices. My law students know more about patent law than the Supremes do! You too could become better informed than the Supremes by Opening your mind and reading the writings hear on IPWatchdog. But we both know your mind is closed and you are uninformed.

    I feel sorry for lemmings like you.

    Gene (via iPhone)

  32. American Cowboy March 27, 2012 3:15 pm

    Maybe if we let the Court sneak obviousness issues into the “patent eligible” analysis under 101, they will keep laws of nature, abstract concept and mathematical algorithm disqualifications out of the obviousness analysis under 103.

    But I don’t bet on it.

  33. EG March 27, 2012 5:22 pm

    To all:

    The following quote is taken from Diamond v. Diehr. Breyer’s opinion should be “hung, drawn, and quartered” for it does exactly what this quote from Diehr says not to do in an analysis under section 101:

    In determining the eligibility of respondents’ claimed process for patent protection under 101, their claims must be considered as a whole. It is inappropriate to dissect the claims into old and new elements and then to ignore the presence of the old elements in the analysis. This is particularly true in a process claim because a new combination of steps in a process may be patentable even though all the constituents of the combination were well known and in common use before the combination was made. The “novelty” of any element or steps in a process, or even of the [450 U.S. 175, 189] process itself, is of no relevance in determining whether the subject matter of a claim falls within the 101 categories of possibly patentable subject matter

  34. step back March 27, 2012 8:41 pm

    EG,

    With due respect, you misunderstand. The SCt, like the king, can do no wrong and is not bound by any laws, be they laws of logic, laws of consistency or laws of nature! 😉

  35. EG March 27, 2012 9:39 pm

    SB,
    I guess your right (sigh). But I also can’t resist saying that the “Emperor hath no clothes.”

  36. Jim O. March 28, 2012 6:39 am

    You may have deep knowledge of what patent law _has_been_, and you can certainly have strong opinions of what patent laws _ought_to_be_, but when you say what patent law _is_, to the extent that you differ from relevant Supreme Court decisions you are wrong, and arrogantly so. The same Constitution that provides for the patent system also provides for a Supreme Court to interpret the laws, including the patent laws.

    When you explain how you think the Supreme Court has decided wrongly, you speak of how you think the law ought to be, not how it is. It is lawlessness when lower courts refuse to implement decisions of the Supreme Court, not deserving of praise but of condemnation.

  37. Anon March 28, 2012 8:05 am

    to the extent that you differ from relevant Supreme Court decisions you are wrong, and arrogantly so.

    It is not arrogance to point out that the Supreme Court has boxed itself into a corner with a ridiculous decision.

    You will note that DIehr was not overturned in Prometheus (the SC will expressly note such). By ignoring the mandatory treatment of 101 as laid out in Diehr and not addressing the issue squarely (in fact premising the decision on a stated positive treatment of precedence), the court has provided two different directions AT THE SAME TIME.

    There are two different interpretations active now.

    THAT is one aspect of the last decision being wrong. This is not speaking of laws _ought_to_be_, or law _has_been_, but how law _is_.

    It is telling that this basic recognition is absent from your post and instead you ASSUME that people are upset because the entity did not get their patent. WAKE UP. the issue has been clearly put forth and it is tiring to see anti-patent folk continue to miss why those who know patent law (has been, ought ot be and IS) are upset. Anyone in any area of law should be able to recognize this and be upset.

  38. EG March 28, 2012 9:07 am

    “There are two different interpretations active now.”

    I tip my hat to you, Anon, for that astute observation. And thanks also for pointing out that my problem (as it is with other patent attorneys) is with the REASONING in Breyer’s opinion (and the unnecessary “collateral damage” it may cause), not the RESULT, which was the invalidity of Prometheus’ claimed method.

    What we have now, in essence, are two diametrically opposed precedents from SCOTUS on essentially the same patent-eligibility issue. This will be a litigator’s dream, and a nightmare for prosecuting patent attorneys, their clients, and the Federal Circuit.

  39. American Cowboy March 28, 2012 9:30 am

    Unfortunately, I agree with JimO. We think what the Supremes said is nonsense, but it is the law because they say so. Don’t like that law? Maybe legislation can fix it. Round up the drafting committees to figure out what amendment to Section 101 is needed to restore sanity.

    By the way, I assume that the Immigration law bar also thinks the world is about to end when Scotus issues an immigration decision, the tax bar about taxes, etc. Can anyond shed light on whether this assumption is correct?

  40. EG March 28, 2012 9:43 am

    Bemused,

    I overlooked one other case where the Supreme Court upheld the validity or enforceability of patent rights: the 2001 case of J.E.M. AG Supply v. Pioneer Hi-Bred International which upheld the vailidity utility patents being issued on plants.

    The opinion in J.E.M. AG Supply was authored by Justice Thomas. Of all the current Supreme Justices, and based solely on what opinions he has written, Justice Thomas appears be the most fair-minded on patent law questions. I know the eBay opinion which Thomas wrote has taken a fair amount of static from the patent bar (my problem is more with Chief Justice Robert’s obtuse concurring opinion and Judge Kennedy’s even worse “business method patents are suspect” concurring opinon), but his interpretation of 35 USC 283 (injunctions “may” issue, not usually issue) is a fair one. Thomas even noted favorably the 1908 case of Continental Paper Bag Company v. Eastern Paper Bag Company which says that NPEs are also entitled to injunctive relief under the general principles of equity. Thomas also challenged his philosophical twin, Justice Scalia, by dissenting in MedImmune, arguing (like the Federal Circuit ruled) that a patent licensee in good standing must breach its license prior to challenging the validity of the underlying patent pursuant to the Declaratory Judgment Act.

  41. EG March 28, 2012 10:16 am

    “We think what the Supremes said is nonsense, but it is the law because they say so.”

    I would be very careful going down that road, AC. Of course what the Supreme Court said is the “law of the land,” to the extent you can fathom what that “law” says which is in doubt other than that Prometheus’ claimed method is patent-ineligible under 35 USC 101. As Anon astutely notes we now have two diametrically opposed precedents (Diehr and Collaborative Mayo Services) involving similar patent-eligibility issues. That doesn’t make for rational and objective decision making on patent-eligibility issues in the future.

    Also, the fact that it is the “law of the land” doesn’t mean I have to accept blindly the reasoning behind it and not criticize it. What Breyer said in his opinion IS nonsense, including conveniently “overlooking” binding precedent in Diehr that says otherwise. Treating binding precedent as if it doesn’t exist does not earn my respect and I’m not alone in that regard. As I’ve also said, the Federal Circuit won’t “capitulate” on the patent-eligibility issue under section 101. The Federal Circuit has already smoothed out some of the very rough edges created by the KSR International decision with regard to section 103, and will likely do the same with Mayo Collaborative Services decision with respect section 101. The Federal Circuit can flat out prevail in any “tug of war” on patent law jurisprudence because the Supreme hasn’t got the time (or the will power) to take every patent law decision from the Federal Circuit they disagree agree with. (And frankly the Federal Circuit has a mandate from Congress to do so that the Supreme Court also chooses to conveniently ignore.) If the Federal Circuit does “capitulate” on patent-eligibility under section 101, us patent prosecutors might as well become patent litigators because it won’t be very pleasant to try to prosecute patents in an atmosphere dominated by Supreme Court-induced “patent hostility” and “patent law despotism.”

  42. Mark Guttag March 28, 2012 10:24 am

    American Cowboy,

    Although I agree with your point about what the Supreme Court says being the law of the land, what do we do about the fact that “wherein clauses” are now considered “method steps” and are no longer considered to refer to qualifying any of the other steps in a claim? One could even argue under the holding of Prometheus that all “wherein clauses” should now be considered method steps, even if they occur in apparatus claims or composition claims. Also, based on the holding of Prometheus, multiple wherein clauses in a method claim are considered to be a single method step. How does one even begin to interpret the meaning of a method claim that includes a wherein clause based on the holding of Prometheus.

    From Prometheus:

    “What else is there in the claims before us? The process that each claim recites tells doctors interested in the subject about the correlations that the researchers discovered. In doing so, it recites an “administering” step, a“determining” step, and a “wherein” step. These additional steps are not themselves natural laws but neither are they sufficient to transform the nature of the claim.”

    I wish I could say I was joking about this, but the Court is explicit in referring to a “wherein” step and bases its interpretation of Claim 1 on the assumption that the wherein clauses are a single, separate method step.

    Mark

  43. Paul Cole March 28, 2012 11:10 am

    Mayo is a difficult decision to read and a difficult decision from which to distill any workable rule of law. So WHETHER and HOW the decision should be followed depends on WHAT RULE can be extracted from it. And if there have been conflicting decisions as some commentators suggest, then the authority of this decision is singificantly open to question. No concluded view can be adopted without prolonged study.

    As to the outcome, my first impression was that this was a rubbish claim that was rightly invalidated. When you dig into the factual background, however, the claim looks more reasonable and the justice of the outcome becomes less apparent. Who would want to be a doctor for one of the 0.3% of patients who by reason of genetic makeup happened to be highly vulnerable to the side-effects of one of these drugs and died in consequence, or indeed a family member having to cope with the loss? Or would you rather be a colitis or Crohn’s sufferer waiting vainly for months for your treatment to become effective because the effectiveness level was not known and you are not receiving a therapeutically sufficient dose? The inventors of this patent were distinguished doctors trying to improve treatment of some really quite nasty diseases using drugs that are very difficult to administer safely and effectively. It should be assumed that what was said in the patent specification was an honest reflection of the situation in this treatment field as they saw it. Their results reflect real trials on real patients and the value of their work should not be treated dismissively.

  44. American Cowboy March 28, 2012 11:32 am

    “We think what the Supremes said is nonsense, but it is the law because they say so.” I would be very careful going down that road, AC.

    Eric, all of your points are valid. My point, amplified, is that counsel for infringers will cite the case and District judges nationwide will try to apply it. The PTO will reject claims based upon it.

    What the result is, I agree, is a muddle, since Diehr says the oppositeas, as has been correctly pointed out. But Breyer’s stream of conscious dictation that got transcribed and signed off on by 8 other justices cannot and will not be disregarded by decision-makers. Unfortunately, we patent “draftsmen” are not the decision-makers.

  45. EG March 28, 2012 12:11 pm

    AC,

    I do hear you, and I’ve got a proposed way home for keeping Mayo Collaborative Services from exploding into complete nonsense. It comes from the Classen Immunotherapies remand decision authored by Judge Newman and joined by Chief Judge Rader. See my article on the remand decision at: http://ipwatchdog.com/2011/09/01/cafc-patent-eligibility-firestorm-of-opinions-in-classen/id=18927/ .

    Judge Newman’s opinion very astutely points to the “immunization step” in the two patents (the ‘739 patent and the ‘139 patent) for why they made the patent-eligibility grade, while the ’283 patent did not. These two patents might go down for other reasons (Newman also very carefully noted that the claims of these patents “may not meet the substantive criteria of patentability as set forth in §102, §103, and §112?). But the “law of nature” reasoning from Mayo Collaborative Services is completely inapplicable (and thus distinguishable) as to these Classen claims. There may yet be some “light” in this currently “dark” patent-eligibility tunnel.

  46. Dale B. Halling March 28, 2012 12:43 pm

    Doug,

    Clearly you do not know what software is or does. Software is just a way of wiring a circuit. If you are against software patents then you have to be against patents on electronic circuits.

  47. Anon March 28, 2012 2:40 pm

    Further food for thought in relation to my post at 37):

    Our conclusion rests upon an examination of the particular
    claims before us in light of the Court’s precedents.
    566 U. S. ____ (2012) at 3

    A more detailed consideration of the controlling precedents
    reinforces our conclusion. The cases most directly
    on point are Diehr and Flook, two cases in which the Court
    reached opposite conclusions about the patent eligibility of
    processes that embodied the equivalent of natural laws.
    566 U. S. ____ (2012) at 11

    The presence here
    of the basic underlying concern that these patents tie up
    too much future use of laws of nature simply reinforces
    our conclusion that the processes described in the patents
    are not patent eligible, while eliminating any temptation
    o depart from case law precedent.
    566 U. S. ____ (2012) at 18-19

    I share these to illustrate that Diehr cannot be said to have been overturned by the Prometheus decision, as Diehr is repeatedly emphasized in a positive light, as a case most on point, and that the decision sought to utilize the Court’s past precedents (plural) and eliminate temptaion to depart from them (an utter failure).

    Diehr still IS the law. But so is Prometheus. While we are not the decision makers, apparently the decision makers are not very good decision makers.

  48. step back March 28, 2012 7:57 pm

    What else is software besides arithmetic and logic?

    Doug,
    Laugh all you want, but you left out at least one more thing: data. Data does not have to be either “arithmetic and logic”.

    Software is pretty much any machine control that can be easily set or changed and stored.
    Do you know what an FPGA is?
    Do you know how you change the interconnect configuration of an FPGA?
    Hint: it’s neither arithmetic or logic. You blow interconnect fuses. But it is “software”.

  49. American Cowboy March 29, 2012 10:38 am

    A thought occurred to me. What if the law of nature that is mentioned in the claim is not novel? That is, what if the claim recites a novel and nonobvious combination of elements and also mentions the relationship between them is governed by X law of nature, and X law of nature is very well known, such as Newton’s law of gravity.

    How does the Prometheus/Diehr bunch of cases deal with that?

  50. Anon March 29, 2012 11:05 am

    How does the Prometheus/Diehr bunch of cases deal with that?

    First, you assume that the “Prometheus/Diehr bunch of cases” can deal with it.

    It cannot.

    Not even wrong.

    See my post on the sister thread.

  51. Anon March 29, 2012 11:09 am

    To flesh out my previous post, perhaps a civil disruption is in order, grinding all matters to a halt until the Supreme Court re-issues the Prometheus opinion in a manner that squares with applicable law.

    To put it crudely (my apologies): Tell the Supremes to either shtt or get off the pot.

    Follow the precedent or cleanly set a new one. What we have now is utter nonsense and cannot be followed in good conscience by agents of the court.

  52. EG March 29, 2012 12:37 pm

    “What if the law of nature that is mentioned in the claim is not novel?”

    AC,

    It is interesting you should ask. For that I suggest that you consider the 1923 Supreme Court case of Eibel Process Co. v. Minnesota & Ontario Paper Co. involving a patent to an improvement Fourdrinier papermaking machines. The object of this improvement was “to construct and arrange the machine whereby it may be run at a very much higher speed than heretofore and produce a more uniform sheet of paper which is strong, even and well formed.” The key to achieving this object was “causing the stock to travel by gravity in the direction of movement of the making wire and approximately as fast as the making wire moves, thereby resulting in a ‘gravity feed’ for the machine.” In other words this improvement relied upon Newton’s hundred year old discovery of the “law of gravity.”

    Here’s what the then Supreme Court said about employing the “law of gravity” in this improvement:

    It is next objected that the alleged invention covers only a matter of degree in pitch, which cannot be the subject of a patent. The prior art showed the application of gravity by use of the pitch of the wire to the improvement of the Fourdrinier machine, and Eibel, it is said, merely increased degree of pitch and gravity for the same general purpose. We think this attack upon the patent cannot prevail. Eibel’s high or substantial pitch was directed toward a wholly different object from that of the prior art. He was seeking thereby to remove the disturbance and ripples in the formation of the stock about 10 feet from the discharge, while the slight pitches of the prior art were planned to overcome the dryness in the formed web of the stock at double the distance from the discharge.”

    Obviously, the Supreme Court had no trouble back in 1923 with an improvement in a machine taking advantage of the “law of gravity.” That’s what’s so blasted nonsensical about Breyer’s opinion going down the the mere “law of nature” track: every invention (be it composition, machine, article or method/process) can be ultimately reduced to combining elements and/or steps taken from “nature,” “laws of nature,” or “natural phenomena.” If the Supreme Court back in 1923 had no problem with considering Eibel’s improvement patent-eligible, even though it took advantage of the “law of gravity,” then why is Breyer and the current Supreme Court almost 90 years later having so much trouble with that concept?

  53. American Cowboy March 29, 2012 12:48 pm

    My thought was that Breyer was saying that a subcombination of old elements in a combination with a newly-discovered law of nature is not patentable.

    So, if you an make one of the elements new, you get around Prometheus.

    Or if the subcombination is a novel subcombination and the added law of nature is old, that is patent-eligible.

    It is only when you have only old elements combined with a newly-discovered law of nature that you have patent ineligibility.

    And I guess laws of nature are like obscenity — if you wear a black robe you know it when you see it.
    I agree that it doesn’t make sense, but I daresay the preceding gazillion posts have made that point.

  54. Dale B. Halling March 29, 2012 3:09 pm

    American Cowboy,

    It’s true that “So, if you an make one of the elements new, you get around Prometheus” then you are GOD since you would have to violate conservation of matter and energy. And if you created something “totally” new then you would violate section 112 since you could not describe it so someone skilled the art could build the invention.

    No this is not true “Or if the subcombination is a novel subcombination and the added law of nature is old, that is patent-eligible.” According to the Court. The court looked at each element and determined it was individually old – Of course this is navel gazing since every invention is a combination of old elements for the reasons stated above.

  55. American Cowboy March 30, 2012 9:31 am

    You know, I think this business of there never being anything new is taken a bit too literally. If I am the first to devise a machine having a component with certain specific lobes, protuberances, cavities, etc. and then my attorney writes a claim to that machine with that component described in all of the requisite detail, that component is NEW. Yes, it may be made of steel, which is not new, and may have a protuberance that is not new, but as a component, where the component is recited as an element of the claim, that element is new. And, since my attorney, who happens to be well versed in how to use the English language, is able to write such a claim and corresponding specification and drawing so those of ordinary skill can make and use it and know what is protected by the claim, then I don’t have section 112 problems.

    Here, I am not using the word “element” the way chemists do, as a basic building block of a compound, but rather as history majors who go on to become Federal judges use the word element.

  56. Dale B. Halling March 30, 2012 12:40 pm

    American Cowboy,

    Your patent attorney may be well versed in the English language, but the examiner is not and they are going to require you to write the definition of the new component into claim based on a 112 rejection. Either way your element is not “total new” it is a new combination. Something the Supremes do not understand.

  57. American Cowboy March 30, 2012 2:06 pm

    I agree that it is a new combination, but most combinations are built up from subcominations that may be “new”