Federal Circuit gives patent eligibility relief to life sciences sector

By Gene Quinn
July 5, 2016

Chief Judge Prost, Federal Circuit.

Chief Judge Prost, Federal Circuit.

Earlier today the United States Court of Appeals for the Federal Circuit issued a decision in Rapid Litigation Management LTD v. Cellzdirect, Inc., which arrived to the Federal Circuit on appeal from the United States District Court for the Northern District of Illinois. The patent owner appealed the decision of the district court, which concluded on summary judgment that claims of U.S. Patent No. 7,604,929 were ineligible because they were directed to a law of nature. The Federal Circuit, with Chief Judge Prost writing for the majority, joined by Judge Moore and Judge Stoll, vacated and remanded the case after ruling that the ‘929 patent claims are not directed to a patent-ineligible concept.

“This is very heartening since the Supreme Court denied cert in Sequenom,” said Bob Stoll, former Commissioner for Patents at the United States Patent and Trademark Office and current partner at Drinker Biddle in Washington, DC. “It is great to see the CAFC apply the Supreme Court decisions more narrowly, as intended by that Court, and provide some relief to innovators that will help them to attract funding to develop their inventions.”

I couldn’t agree more! This decision could well mark a significant turning point and give real relief to innovators in the life sciences arena. Up until now the Federal Circuit has seemed reluctant to narrowly read the Supreme Court’s recent precedent in Mayo v. Prometheus and AMP v. Myriad Genetics. It is difficult to know exactly why that has been the case, but one strong possibility is that the Federal Circuit was looking to the Supreme Court to narrow the overly broad and unnecessarily expansive language that they used in Mayo and Myriad.

In fact, Judge Dyk, who has been on the wing of the Federal Circuit much more likely to find patent claims to be ineligible shared concerns of the other Judges writing in Sequenom that the Supreme Court’s test in Mayo was too restrictive. Dyk concluded, however, that it was for the Supreme Court, not the Federal Circuit, to set the record straight. See CAFC denies Sequenom en banc petition.

With the Supreme Court recently denying certiorari in Sequenom, perhaps at least some of the Judges on the Federal Circuit believe enough is enough and it is time for them to start to apply their own independent judgment and not blindly follow the extraordinarily overbroad language of the Supreme Court that has led to truly bizarre rulings on patent eligibility in the life sciences sector – where groundbreaking innovations have been ruled patent ineligible despite everyone agreeing the innovation was of extreme importance.

The Invention

Hepatocytes are a type of liver cell that have a number of attributes useful for testing, diagnostic, and treatment purposes. Prior to the invention of the ’929 patent, scientists developed “cryopreservation” techniques to preserve hepatocytes for later use. These methods generally comprised freezing hepatocytes at frigid temperatures; then, when needed, thawing them and recovering the viable cells using density gradient fractionation.

The inventors of the ’929 patent discovered that some fraction of hepatocytes are capable of surviving multiple freeze-thaw cycles. As inventor Dr. Hardy testified, “initially we just proved that you could twice freeze the cells and still have viable cells… [T]he unexpected outcome was that cells twice frozen behaved like cells that were once frozen.”

Armed with this discovery, the inventors developed an improved process of preserving hepatocytes, claimed in the ’929 patent. In general, the improved process comprises: (A) subjecting previously frozen and thawed cells to density gradient fractionation to separate viable cells from non-viable ones; (B) recovering the viable cells; and (C) refreezing the viable cells. The claims specify that the resulting hepatocyte preparation can be thawed and used immediately, exhibiting 70% viability after the second thaw.

Patent Eligibility Two Step

Step One

The district court explained that the claims are directed to a “natural law,” namely the cells’ capability of surviving multiple freeze-thaw cycles and, therefore, not patent eligible. The Federal Circuit disagreed because the claims are not directed to the ability of hepatocytes to survive multiple freeze-thaw cycles, but rather, the claims of the ’929 patent are directed to a new and useful laboratory technique for preserving hepatocytes. In other words, the inventors employed their natural discovery to create a new and improved way of preserving hepatocyte cells for later use.

The Federal Circuit explained that the proper analysis requires the first inquiry to be whether the claims are directed to a patent ineligible concept. If the answer is no, the inquiry is over and the claim is patent eligible. In this case, the Federal Circuit found that the claims were not directed to a patent ineligible concept and, therefore, the 101 inquiry ended with a finding that the claims were patent eligible.

The Federal Circuit explained:

At step one… it is not enough to merely identify a patent-ineligible concept underlying the claim; we must determine whether that patent-ineligible concept is what the claim is “directed to.” Here, the plain claim language shows that it is not. The ’929 patent does not simply claim hepatocytes’ ability to survive multiple freeze-thaw cycles. The ’929 patent instead claims a “method of producing a desired preparation of multi-cryopreserved hepatocytes.” ’929 patent col. 19 l. 56-col. 20 l. 20. This new and improved technique, for producing a tangible and useful result, falls squarely outside those categories of inventions that are “directed to” patent-ineligible concepts.

Step Two

Notwithstanding, the Federal Circuit went on to say that even if they were to agree that the claims were directed to a patent ineligible concept the claims would still be patent eligible under the second step, which asks whether, considered both individually and as an ordered combination, the additional elements transform the nature of the claim into a patent eligible application. In order to be patent eligible under step two more than well-understood, routine, conventional activity already engaged in by the scientific community is required in order to transform the claim into something significantly more than a patent upon the concept itself.

Prost explained that the claims covered an invention that provided a significant improvement for a variety of reasons, and also because the discovery was used to achieve a new and useful preservation process. The Federal Circuit also pointed out that while the individual steps of freezing and thawing were well known, the repeated steps of freezing and thawing where far from routine and conventional. In fact, the Court pointed out that the prior art taught away from multiple freezing and thawing steps, which was believed to severely damage the hepatocyte cells and result in lower cell viability. Thus, with the prevailing wisdom being that hepatocyte cells could only be frozen and thawed once there was nothing well-understood, routine or convention about multiple freezing and thawing cycles.

Important Caveats

The Federal Circuit also made to important statements at the end, which could be viewed as dicta, but which like the many similar statements in recent patent eligibility cases are starting to paint a clearer picture of the way the Court is viewing patent eligibility challenges.

First, the Court explained, “patent-eligibility does not turn on ease of execution or obviousness of application. Those are questions that are examined under separate provisions of the Patent Act.” Interestingly, the Court cited Mayo for that proposition, which is really a stretch. Mayo purposefully conflates novelty and obviousness with patent eligibility and turns the patentability inquiry into a nearly one-inquiry test for software and life science related innovations. This statement by Chief Justice Prost is an important one that seems to signal that the Federal Circuit may be ready to apply the Statute rather and allow the different sections of the Patent Act to do the work for which they were designed, as required by the Supreme Court in Diamond v. Diehr, and ignore the purposeful conflation foisted upon the industry by the Supreme Court in Mayo.

Second, the Federal Circuit explained that pre-emption is no longer the test for determining patent eligibility, but that pre-emption concerns are certainly a key concern of 101 jurisprudence. In this case the defendant has already been able to engineer around the patent, which would suggest that pre-emption concerns are simply not at play. The Federal Circuit used the fact that the defendant had already engineered around as further proof that the conclusion that the claims are patent eligible is, in fact, the correct conclusion.

 

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and founder of IPWatchdog.com. Gene is also a principal lecturer in the PLI Patent Bar Review Course and an attorney with Widerman Malek. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

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 31 Comments comments.

  1. Curious July 5, 2016 5:47 pm

    I am glad that the Court determined that the claims were not “directed to” a law of nature. I believe that this is the most important stage of the two-step inquiry and the stage that the courts (and USPTO) usually get wrong. As stated by SCOTUS in Alice, “all inventions … embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas … an invention is not rendered ineligible for patent simply because it involves an abstract concept.” From my reading, the Courts (and the USPTO) all too often confuse an invention that “involves” an abstract idea with an invention that is “directed to” an abstract idea. There must be a difference between “involves” and “directed to” — otherwise, Step 1 would be rendered superfluous.

    While much of the Court’s language could be considered dicta and limited to life sciences, I believe that there is language in this decision that could be more expansively applied to non-life science applications.

    Who knows — perhaps the pendulum has started to slow down and we can expect to see some more common sense injected into these decisions.

  2. Jim Ruttler July 5, 2016 5:54 pm

    Nice summary, thanks Gene.

  3. step back July 5, 2016 6:14 pm

    I for one am disappointed that this decision makes excuses for the voodoo science of the earlier medical diagnosis decisions.

    It is not a “law” handed down by none other than Mother Nature herself that the physiological state(s) of each genetically and nurture-wise unique human being will make it/themselves miraculously known to physicians by mere mental jiggery jockery and abstractionism.

    Instead, real concrete physical acts must take place at each diagnostic step for arriving at a scientifically plausible diagnosis or further medical treatment result (i.e. the thawing of twice frozen cells).

    That the Fed. Cir. dared to get right at least this one case does not make up for their earlier misdeeds.

  4. Curious July 5, 2016 6:25 pm

    That the Fed. Cir. dared to get right at least this one case does not make up for their earlier misdeeds.
    Beggars can’t be choosy. For the longest time, we used to have only one Federal Circuit decision (DDR Holdings), to hang our hats on. However, we now have Enfish, Bascom, and now this decision to work with. No matter our wishes, the Federal Circuit isn’t about to throw under the bus, in one fell swoop, all their prior analysis regarding 35 USC 101. It may take awhile before the Federal Circuit cleans up the mess that they (and SCOTUS) created, but at least they are working towards that direction.

  5. Appearance of ... July 5, 2016 7:03 pm

    While things are being sorted out, perhaps we could persuade the USPTO and the Courts to replace their present attempts at 35 USC 101 analysis with a simple roll of the dice?

    I suspect that one or two sets of 12 sided dice would reproduce the present 101 statistics. Rolling dice would be faster and cheaper, and would also have a sounder logical basis.

  6. step back July 5, 2016 10:41 pm

    Beggars?

    Why are we beggars?
    We are victims.
    Victims of a SCOTUS and Fed. Cir. gone wild (ala the “natural” and laws of same, pathways).

    http://patentu.blogspot.com/2016/06/spirit-town.html

  7. Curious July 5, 2016 11:39 pm

    Why are we beggars?
    Why? Because we are asking for handouts from the Federal Circuit and SCOTUS and we have little recourse to do much else. We don’t have the money and/or connections that the likes of Google et al. have with Congress and this Administration.

    It is what it is. We may quibble over what word(s) best describe our plight, but that doesn’t change how little power we have to change things.

  8. step back July 6, 2016 2:15 am

    We have THE POWER TO SHOUT !

    To proclaim to all under our 1st Amendment rights what a bunch of incompetent and irrational doles our Supreme Fearless Leaders are when it comes to science, technology and patent law.

    Maybe they have no shame.
    But still we cannot stand by and be silent.
    History will record them as shameful sycophants of the amici curie owners of the bought and paid for Court.

    History will note that our SCOTUS elite allowed non-expert, unsworn and un-cross-examined opinions of so-called “friends” to influence them into to making de novo findings of fact at the appellate level with respect to plucking DNA leaves (or banana fruit) from trees, with respect to generic computers and java-juiced 2nd year students at the coffee shop, with respect to laws “of nature”, with respect to fundamental Lego blocks of “human ingenuity” and with respect to how patents might “stifle” their precious “innovation”. What a crock of BS. All of it.

    We cannot shrink back and beg.
    We must step forward (not back) and yell from the tops of our tenements. We are mad as heck and … we won’t take it any more.

  9. step back July 6, 2016 2:34 am

    Stick your head out your window and SHOUT!

    http://patentu.blogspot.com/2016/07/beg-or-stand-defiant.html

  10. Paul Cole July 6, 2016 4:04 am

    There are perhaps two significant legal holdings in this case.

    In the first step of Mayo/Alice the mere fact that claimed subject matter involves an ineligible element such as a discovery does not mean that it is directed to that discovery. From now on, the words “directed to” are likely to be construed more narrowly than in the past.

    Secondly and inescapably, the numerous references to new benefit or new result point to this being a significant factual basis pointing towards eligibility.

    Both of these arguments are to be found in the CIPA and the EPI briefs in Ariosa, and indeed in the brief that I filed at the Federal Circuit during that case.

    It seems that now the Ariosa petition has been rejected by the Supreme Court, the Federal Circuit is beginning to appreciate that the onus has passed to them to clear up the mess, and that they have started to do so. The appointment of Judge Stoll who started her career as an examiner at the USPTO and subsequently became a partner in a well-known patent law firm, and who was a member of the present panel, provides grounds for hope that more positive attitudes are starting to prevail.

  11. Anon July 6, 2016 8:38 am

    I cannot get excited by one panel decision, especially given that any next panel decision can have extremely different results, and that there remains no true “North Star” to divine the mess that the Supreme Court has created with its own attempt at “scrivining” statutory patent law.

  12. Night Writer July 6, 2016 10:29 am

    “directed to a law of nature” just depends on how easy it is for the judges to understand what the law of nature is.

    The claim isn’t really that different from a claim to purifying steel.

    @8 I agree with Step Back. We should really be finding our voice and pushing back with moral authority.

    Just consider this: Breyer has the mental model that there are millions and millions of invalid patents out there with a thicket that is preventing innovation. And yet–reality–the U.S. has the best software industry in the world by a factor of 10 and it grew-up with patents. Breyer should at least have to account for this before vilifying patents. What we are getting is the same thing as in finance where we had a good situation for 50 years and then a vilification and then destruction. The power of K street and the fact that Breyer and his likes just have no basis to understand innovation or science–none, and similar people had no basis to understand the finance industry–none. Clinton didn’t understand finance at all.

  13. step back July 6, 2016 10:33 am

    Anon @11,

    Note that under the guidance of our Supreme Fearless Leaders and their chain towing Circuiteers (read as ‘Circus Cheers’), a Federal District Court judge found that the twice thawing (because once thawing was not good enough) a bunch of physical cells by the hand of man was still a “natural phenomenon” and an “abstract idea” as opposed to being a new and useful physically transformative process under the statutory law of section 101.

    What has our country come to? What blinding spell has been cast on all our nuevo enlightened witch hunters?

    Can’t they just wake up from the hypnotizing Beelzebub babble of Bilski, Alice and Mayo and say this is enough? This is where the it all stops? I march no more in Clarence the Clown’s parade?

    Sorry. But the excuse making in this case of Rapid Litigation Management LTD v. Cellzdirect, Inc. does not amount to a step in the right direction. The courts are still caving in to the insanity.

  14. step back July 6, 2016 10:37 am

    Agree with Night Writer @12.

    These people (and I do mean these people) are so incompetent in the areas of science, logic and avoiding the mesmerizing effects of their so-called “friends” of the court that they don’t and can’t undrestand that they are incompetent.

  15. step back July 6, 2016 10:41 am

    Indeed I venture to guess that aside from the English major judges, there are large swaths of patent practitioners who don’t truly understand what “science” is and don’t realize that phrases like “laws of nature” are just BS poetry made up for consumption by the general public and by the easily manipulated Supremes.

  16. confused July 6, 2016 11:25 am

    The same reasoning used to find this invention patent eligible is equally applicable to Sequenom’s invention. I would like to see this decision as a ray of hope, but it’s way too early to call.

  17. Gene Quinn July 6, 2016 1:14 pm

    confused-

    Agreed on your Sequenom point. That is why I think this could be a sign that at least some of the Judges have had enough. With SCOTUS refusing Sequenom the Federal Circuit is going to have to step in and start doing the right thing despite what Mayo and Myriad say or large segments of the life sciences sector is going to be destroyed. If I were on the Federal Circuit I would have elected to do what was correct and then if SCOTUS wants to overrule and create a body of asinine law let them own the destruction of the life sciences sector. If SCOTUS did that it would also force Congress to step in and fix the problem. Instead, the CAFC has allowed important innovations to lose patent protection and given Congress no incentive to need to fix a run away SCOTUS.

  18. step back July 6, 2016 1:28 pm

    Gene @17

    The question of real interest is whether and which of the judges on the Fed. Cir. bench actually buy into this Bilski/Alice/Mayo blunder-bake and which of them are merely sheeple cowards who find themselves “bound” by cowardice to not stepping up to the plate and calling out the Supremes (and their fellow Fed Cir colleagues) on their blatant destruction of rational patent law as we knew it (back in the day).

  19. Anon July 6, 2016 2:49 pm

    I would be all for a call-out from the CAFC for the ultra-vires actions of the Supreme Court in the Court’s re-writing of statutory law.

    It would be worth the slap down, and just might (finally) provide the wake up call to Congress to take back its authority and employ jurisdiction stripping of the non-original jurisdiction of patent appeals away from the Supreme Court, once and for all removing that (apparently unstoppable) temptation of mashing the nose of wax.

    As it is, the cataclysm that already exists at the Constitutional level is just too esoteric for all but the most astute legal minds. This last translates (sadly) to the observation that most people just don’t understand (or care) for patent law and the issues of separation of powers, and the intrusion of common law over an area of law that has been set by the Constitution to be statutory law.

    Congress rose up once before when the Supreme Court reached a point of “the only valid patent is one that has not yet appeared before us.” We live in a time reflective of that virulent anti-patent mindset. Unfortunately, this is also a time of apathy and of Corporate “voices” carrying far more “volume” due to Citizen’s United.

  20. Paul Cole July 6, 2016 4:26 pm

    One of the problems is that most people in the profession have forgotten or failed to apply what they learned in law school about how to “parse” a decision to find the applicable rule of law. The problem applies all the way through raw recruits to senior litigators and judges.

    If that is done, plausible interpretations can be found which are much narrower than commonly supposed. The problem arises not at the Supreme Court level but in the district courts and the federal circuit where up to now very broad interpretations of Prometheus and subsequent decisions have been applied when these interpretations are simply not supported if the Supreme Court decisions are carefully read and analysed.

    The present case represents a step in the right direction which it is hoped will be followed in subsequent decisions. But Judge Prost the Ariosa decision is simply WRONG for the reasons explained by the various amici before the Supreme Court. It may be politic to say it was right, it may sometimes be politic to say that black is white, but legally and factually the decision is objectively WRONG.

    It is much hoped that this better decision will be the one to follow.

  21. Anon July 6, 2016 5:48 pm

    Mr. Cole,

    The problem is that the Supreme Court does not write “to be parsed down to a suitable level of the Rule of Law.”

    No purse from the sow’s ear here.

    And attempting to do as you suggest, while indeed “polite,” is polite to a fault and simply avoids the necessary conclusions (as messy as those conclusions may be). As I mentioned when the disappointing Alice decision came out – it is time to stomp on the gas pedal that the Court has provided and crash this thing, because attempting a “soft landing” is a fool’s quest.

  22. Paul Cole July 7, 2016 2:21 am

    @ Anon

    “The problem is that the Supreme Court does not write “to be parsed down to a suitable level of the Rule of Law.””

    Although of the highest status in the US judicial pyramid the Supreme Court is nevertheless a court, not a group of autocrats and operates in the Common Law system which is shared by the UK, the US and most Commonwealth countries including e.g. Australia, Canada, India and South Africa.

    For the proper practice of law, there is no alternative to “parsing” the decisions the Court hands down and identifying the rule of law that the judges have applied to reach the particular outcome that they did. Sometimes this is a straightforward process and the level of legal analysis needed is only slight. On other occasions it is more difficult.

    One of the cases that falls into the extreme difficulty category is Funk Brothers v Kalo written by Justice William O. Douglas whose decisions were renowned for being hasty, especially after he had been passed over as a vice-presidential candidate. If the decision is analysed carefully, it will be seen that the main reason for rejecting the claim was that an invention directed to mere packaging did not amount to the level of inventive advance that justified patent grant, and that a greater step forward e.g. changing the bacteria and their mode of action on leguminous plants would have been needed. But his famous finding that a principle of nature was being claimed needs more understanding than is commonly shown. The patent claims ALL mixtures of Rhizobium bacteria that were mutually non-inhibitive, but if you study the written description there is NO disclosure of ANY particular strains of the bacteria that meet this criterion, nor is there an example of testing particular bacteria and their mixtures to select particular strains that can be mixed together and provide the desired mutually non-inhibitive properties. All that the patent discloses is the existence of the non-inhibitive bacteria, it then being left to the skilled reader to find them if desired. The novelty was therefore only in the abstraction that the non-inhibitive strains existed. In mathematical terms, the patentees had proved the existence of a solution to the problem of non-inhibition, but had not disclosed any specific solution of that problem. That is the basis of the remark by Justice Douglas that the patentees were claiming a principle of nature, which should be understood against the background that the only novelty in the claim was the abstraction that non-inhibitive strains existed, but nothing more. Subsequent authors parrot out the language of Justice Douglas’ objection without appreciation of what he was objecting to, which amounts to a poor level of scholarship disrespectful of his memory.

    Analysis of the recent Prometheus decision is similarly defective. As a matter of first impression on reading the decision it was difficult to identify any workable rule of law from it, see Cole, Prometheus v Mayo, a European view, http://patentlyo.com/patent/2012/04/guest-post-prometheus-v-mayo-a-european-view.html. But whatever the correct rule of law was (and I am still not convinced that the debate has reached a fully workable conclusion), the repeated comments of the Supreme Court judges about the need for caution in not eviscerating patent law has been much overlooked. Recent decisions were, and were intended to be, cautious and narrow.

  23. step back July 7, 2016 6:16 am

    @Paul

    Exactly when and why the American Supreme Court (SCOTUS) started accelerating their choo choo down the wrong track is of little import.

    The point is that they have been doubling down on their insanities ever since. One can see a clear trail from Benson to Bilski to Alice and from Prometheus to Mayo and now Ariosa.

    At the heart of it are a bunch of frightened little men (and little women too). Frightened of the ghost in the machine, frightened of the Frankenstein monster that may emerge from all this modern mucking with Mother Nature, her “laws” and her “phenomenon.”

    The truth is that they are ill equipped to deal with modernity. Why they can’t even operate their own emails. The best they can do is to rely on the one side of the amicus briefs whom they believe to be their true “friends” of the Court whilst the other side are clearly deceptive troliish draftspersons hell bent on challenging Mother Nature’s domain and preempting the Lego blocks of human ingenuity. It’s all about King Tut’s abacus man you see. You see? Solved and solvent. Now we can all host smug smiles on our faces like that supreme among the Supremes, Breyer J. Simple is as simple thinks.

    http://patentu.blogspot.com/2016/07/beg-or-stand-defiant.html

  24. Anon July 7, 2016 6:18 am

    Mr. Cole,

    Thank you for the lesson, and I do know and understand the “way it is supposed to be.”

    The point though, is that in practice, our Supreme Court does think of itself to be above the law and operates according to its own “Rule of Law.”

    They ARE autocrats.

    Those who are “Subsequent authors parrot out the language of Justice Douglas’ objection without appreciation of what he was objecting to” include the Justices themselves.

  25. Paul Cole July 7, 2016 6:39 am

    @ Anon

    I have seen remarkably few articles, postings and opinions where the relevant Supreme Court jurisprudence is properly analysed. So my comment on this point should stand.

    However, the only weapon available to me, with the dual disadvantages of being a private citizen and alien, is reasoned legal argument. I cannot approach a representative or congressman since I am not a US citizen. And Washington is a bit of a long way to travel to and then parade up and down waving a placard. In any event, I fear it would be a solo effort.

    So far as I am concerned, the only hope is that the courts will become embarrassed by student level error in their opinions and will adopt a more reasoned approach.

  26. Night Writer July 7, 2016 7:15 am

    @25> So far as I am concerned, the only hope is that the courts will become embarrassed by student level error in their opinions and will adopt a more reasoned approach.

    The problem with that reasoning is that you are assuming that the courts are not intentionally making up this nonsense to achieve their policy goals.

  27. Anon July 7, 2016 8:43 am

    Mr Cole,

    I agree with you fully that there exists at the highest levels of our judicial system this “student level error,” and I also agree with Night Writer that this “error” is deliberate.

    The problem of course is that this error being deliberate, this will NOT be subject to self-correction, and thus the “voice” to be heard (content and audience) is not to the Court to “change their minds,” but should be rather to Congress to apply jurisdiction stripping of this non-original jurisdiction area of law away from the body that has placed itself above the separation of powers and insists on policy-setting and legislating from the bench on this explicitly designated statutory (not common) law domain.

    Your voice, while indeed reasoned (and patient), is wasted given the curcumstances. Thus, my counter points to your otherwise sage posts continue to stress that a different path is necessary, and that the problem is NOT how the lower courts are applying the Supreme Court writings, but rather, lie directly with the Supreme Court writings themselves.

    This factor too can be seen in the pattern of actions from the Supreme Court in addition to the content of their writings, given the nigh constant “chastisement” of the lower court set up by Congress with the direct mandate of bringing clarity to judicial decisions concerning patent law. My view of the long history of interaction between the lower (Congress sanctioned) court and the Supreme Court is that we have had a (pardon the language) pissing match between the proxy of Congress and the judicial body that has used its “court of last resort” standing to enforce its will (rather than attempt to ‘do justice’ to the actual words of Congress).

    Asking an addict to stop abusing its “drug” of power from the bench simply will not work. No matter how nicely you ask, or how clearly you point out the addiction (and let me add that there are plenty of “friends” asking the Court to enjoy that addiction).

  28. step back July 7, 2016 12:44 pm

    Anon @27

    Thank you for repeating in your last sentence about the judicially flawed practice of letting “friends” (amici) brief the Justices on matters that should instead be explicated by way of expert and cross-examined testimony.

    There is no excuse for allowing such materials in for the purpose of “educating” the Justices about how “generic” computers work, about how one can find a 2nd year student in a Silicon Valley coffee shop and Harry Potter out the magic “apply it” words, about how one can wander through Mother Nature’s DNA garden, spot a banana (or leaf) and pluck it off the tree and about how “science” operates with aid of fundamental Lego building blocks as well as unleashed “human ingenuity”. When reading the final opinions and listening to the oral hearings one gets a clear picture of how damaging this amicus briefing process truly is.

  29. Night Writer July 7, 2016 5:48 pm

    Breyer has opening admitted he gets his views on patents from the amici briefs. Breyer’s statements should be sufficient to impeach him.

  30. step back July 7, 2016 6:33 pm

    Scalia openly admitted he didn’t understand any of the molecular biology stuff in Myriad, but what the heck. Go along to get along (with your favorite “friends” of the Court).

  31. staff July 18, 2016 4:36 pm

    ‘Step two is described “as a search for an ‘inventive concept.’”’

    We agree that the court got it right, but we believe from a practical and legal standpoint there is a far simpler path which is less likely to confuse lower courts who are not nearly so experienced with the technologies and applicable laws, and is far more consistent with the intent of the founders.

    President James Madison wrote in Federalist no 10:

    “The diversity in the faculties of men, from which the RIGHTS OF PROPERTY originate, is not less an insuperable obstacle to a uniformity of interests. The protection of these faculties is the FIRST object of government.”

    As in the Constitution, the simplest and most direct test is 1) does the invention ‘promote the Progress of Science’, and 2) is it ‘useful’. These unnecessarily complex and vague guidelines used presently by the courts which ignore the clear wording of the Constitution not surprisingly lead to unpredictable results. Whether the fault lies with SCOTUS’s recent decisions such as Alice, may be viewed as immaterial. The end result is the same…weak at best, property rights. We suggest the courts and Congress revert to the unambiguous and simple approach of our Constitution to clarify and restore the correct protections for what President Madison called, ‘the faculties’ of America’s inventors.

    For our position and the changes we advocate to truly reform the patent system, or to join our effort, please visit us at https://aminventorsforjustice.wordpress.com/category/our-position/
    or, contact us at aifj@mail.com