While the Supreme Court has done away with the “useful, concrete and tangible result” test from State Street Bank v. Signature Financial, in Bilski v. Kappos, 8 out of 9 Justices (i.e., everyone except Justice Scalia) signed onto an opinion that recognized that the patent claims in State Street displayed patent eligible subject matter. Indeed, the dissenters in Bilski specifically acknowledged that the claims at issue in State Street did not deal with processes, but dealt with machines. See Footnote 40 of the Steven’s dissent.

The import of this is that machines are specifically patent eligible subject matter, so if the claims of State Street are to machines then claims that are similarly configured would also be directed to machines and therefore patent eligible. So if the systems claims at issue in CLS Bank v. Alice Corp. are configured similarly to those that now stand invalid that would mean that Judges Lourie, Dyk, Prost, Reyna and Wallach have ignored the Supreme Court. Any fair comparison of the claims, as shown below, demonstrates this rather conclusively.

Similarly, the United States Supreme Court famously ruled in Diamond v. Diehr, that the United States Patent and Trademark Office inappropriately rejected claims to a computerized process for molding raw, uncured synthetic rubber into cured precision products. Ultimately, thanks to the decision of the Supreme Court the inventors, Diehr and Lutton, received U.S. Patent No. 4,344,142. If the claims in Diamond v. Diehr are similar to those that now stand invalid that would be further proof the Federal Circuit as a whole has ignored the Supreme Court.

By now most are likely already familiar with the unfortunate reality that the United States Court of Appeals for the Federal Circuit issued a non-decision in CLS Bank v. Alice Corporation on Friday, May 10, 2013. There were 10 judges who heard the case en banc, with 7 of the 10 finding that the method claims and computer-readable medium claims were not patent eligible. While there may be reasonable room for a difference of opinion relative to those claims, it was the system claims that specifically and clearly recited tangible structure that has thrown the patent law of software into such disarray. 5 Judges would have found that the systems claims were patent ineligible (Judges Lourie, Dyk, Prost, Reyna and Wallach), and 5 Judges would have found the systems claims were patentable subject matter (Chief Judge Rader, Judges Newman, Moore, Linn and O’Malley). For more see Federal Circuit Nightmare in CLS Bank and 5 CAFC Judges Say Computer Patentable, Not Software and Did the CAFC Ignore the Supreme Court in CLS Bank?

Today, however, I want to write about one of the more bizarre passages I have ever seen in any decision, and then pose an almost unthinkable question: Is IBM’s Watson still patent eligible in the view of Judges Lourie, Dyk, Prost, Reyna and Wallach?

First, let’s start with the passage. Judge Lourie, who was joined by Judges Dyk, Prost, Reyna and Wallach, actually wrote: “At its most basic, a computer is just a calculator capable of performing mental steps faster than a human could. Unless the claims require a computer to perform operations that are not merely accelerated calculations, a computer does not itself confer patent eligibility.”

Yesterday the United States Supreme Court heard oral arguments in Association for Molecular Pathology v. Myriad Genetics, Inc. While the Association for Molecular Pathology (AMP) is the named party in the case, it is really a case brought and forwarded by the American Civil Liberties Union (ACLU).

Myriad Genetics is the patent holder on various innovations relating to isolated DNA comprising an altered BRCA1 DNA and various methods of screening for cancer built upon various observations of the altered BRCA1 DNA. Essentially, AMP and the ACLU, along with researchers, competitors of Myriad Genetics and consumers filed a lawsuit challenging the constitutionality of a number of gene patents owned by Myriad and argued that gene patents should not be granted because patenting a gene is the same as patenting something that exists in nature.

This argument succeeded at the district court, but has twice failed at the Federal Circuit. The Federal Circuit initially reversed the district court, but appeal was made to the Supreme Court by AMP/ACLU. See As Predicted, Federal Circuit Rules Isolated DNA Patentable. In the meantime the Supreme Court issued a decision in Mayo v. Prometheus and remanded this case to the Federal Circuit for further consideration in light of the Court’s decision in Mayo v. Prometheus. The Federal Circuit again sided with Myriad Genetics. See AMP v. USPTO Remand Déjà Vu. Appeal was taken to the Supreme Court, which accepted certiorari. See Supreme Court Grants Cert in Amp v. Myriad. The only issue accepted by the Supreme Court was the broadest issue: are human genes patent eligible?

On Friday, April 12, 2013, i will be at American University Washington College of Law for a program titled Patent Subject Matter Eligibility Today: Software, Genomics, and Business Methods. I will be participating on a panel that begins at 10:15am, which is titled CLS Bank en band: Are Software Methods Patentable? The event is free to attend. To register to attend you can visit WCL Event Registration.

Topic for Discussion

The following is what our panel will discuss regarding application of Section 101 to software:

(1)  For many years, a large segment of the software industry viewed patent protection as inappropriate for software, relying instead on a mixture of copyright and trade secret law.  At a high level, should software be patentable?

(2)  Two common criticisms of software patents, as compared to patents in the pharmaceutical and biotech sectors, are (a) the relatively low cost of invention; and (b) the relative ease of implementation.  Are these the right factors for us to be considering for purposes of inventiveness?

On February 20, the UC Hastings Constitutional Law Quarterly held a symposium titled, Patent Pending: Corporations, the Constitution, and the Human Gene. See Event Program. The 3-hour event featured Alex Kozinski, Chief Judge of the US Court of Appeals for the Ninth Circuit, as well as Professor David Winickoff of UC Berkeley, Dr. Megan Allyse of Stanford University, Vern Norviel of Wilson Sonsini Goodrich & Rosati, and James Mullen and Wes Overson of Morrison & Foerster. I was the moderator for the symposium, and what follows is a summary of the discussion.

I began by describing the facts of the Myriad case, which is currently before the Supreme Court, and the science behind the issues, as well as introducing the panelists. I then began the discussion by asking the panelists if genetic sequence and cDNA patents interfere with scientific research and with those who provide health care.  Vern Norviel of Wilson Sonsini argued that it does not matter either way with regards to patents and new biotech product innovations.  Mr. Norviel pointed out that the entire human genome was already mapped and the company who mapped it was not sued.  More importantly, he argued, is that human genes are limited and it would be a very small bit of information that could be determined to not be patentable.  He did, however, caution that the Court should try and restrain itself and not go too far such that it destroys what is currently a massive and successful life sciences industry.  The bottom line is that regardless of whether a patent exists, professors and researchers will continue to do the research.  Dr. James Mullen of Morrison & Foerster further argued that patents encourage research and innovation as venture capitalists want to know if (1) the research does what it is claimed to do and (2) if the party owns that research.

The Honorable Alex Kozinski immediately posed the question—by way of an analogy to scientists who stare at the stars—of why should someone be able to get a gene patent just because there was a significant amount of effort put in to discover that gene.  Throughout the event, Judge Kozinski took on the role of the generalist judge, who would need to be convinced that the invention in the lab is anything other than a product of nature. Professor David Winickoff of UC Berkeley followed that question up by discussing James Watson’s amicus brief and the idea that genes are both symbolic in our culture and shared by all humans, thus making them a unique item in our world.

Thomas Kuhn wrote about paradigm shifts in his seminal work, The Structure of Scientific Revolutions (1962). There comes a time when a way of thinking becomes so bogged down with adjustments, corrections and exceptions, that it takes an immense societal effort to keep it robust enough to adapt to new facts. A paradigm shift happens when the old viewpoints are ejected, and new ones adopted. The new ones are better because they are more elegant. They explain more things, do so with fewer assumptions, and show greater robustness by consistently incorporating newly discovered facts. Thus did the Copernican view of the solar system finally overtake the geocentric one of the ancients. Gone was the need for epicycles and other fanciful (albeit, plausible) compensations and compromises to keep the old system working to incorporate new observations.

Why does it feel like it’s time for a Section 101 paradigm shift? Is it because of the shocking candor with which one Federal Circuit panel called patent subject matter eligibility jurisprudence a “murky morass?” Is it because some panels believe in their right and power to make Section 101 a last-resort analysis, while others just as earnestly believe they are bound to reach it first among defenses whenever it is raised? Or is it the current unpredictability over whether a given patent claim limitation will now (or ever) avoid recharacterization as a “token post-solution activity.”

Given the remand of the Federal Circuit’s original panel decision for reconsideration in view of Mayo Collaborative Services v. Prometheus Laboratories, Inc., I’m not surprised that the Supreme Court granted the ACLU’s/Pubpat’s petition for certiorari in AMP v. Myriad.  What is somewhat surprising is that the Supreme Court granted certiorari only as to the first question (“Are Human Genes Patentable”) posed by the ACLU/PubPat.  The patent-eligibility under 35 U.S.C. § 101 of Myriad’s claimed method of screening potential cancer therapeutics that was (again) unanimously upheld by the Federal Circuit panel, but will not be before the Supreme Court.  Nor will the issue of “lack of standing” with respect to but one of the plaintiffs be considered.

I’ve been following the various meanderings and wanderings of the Myriad case for almost three years now.  One unfortunate aspect of this case is that, from the beginning, the ACLU/PubPat has manipulated and fabricated what this case is about in terms of the applicable “science,” as well as the applicable “patent law.”  In fact, in distorting what this case is really about (i.e., the patent-eligibility of Myriad’s claimed “isolated” DNA sequences under 35 U.S.C. § 101), the ACLU/PubPat has also tried to hide the fact that the real plaintiffs in the Myriad case are none other than the ACLU/PubPat themselves; that has become readily apparent, given that all but one of the “alleged” plaintiffs have been knocked out of this case on “lack of standing” grounds.

Before the Myriad case becomes further obscured by the “pseudoscientific” nonsense foisted by the “real plaintiffs,” as well as the PR smokescreen of “politics, policy and philosophy” that the ACLU/PubPat has used to manipulate the applicable “patent law,” the Supreme Court needs to understand, to use Judge Lourie’s words, what this case “is not about.”

Those who have been following comments on the split decision in CLS Bank v. Alice Corp. case will be unsurprised to learn that yesterday the Federal Circuit ordered a rehearing en banc in the matter, vacating the panel decision originally decided on July 9, 2012.

The questions to be addressed on appeal are:

1. What test should the court adopt to determine whether a computer-implemented invention is a patent ineligible “abstract idea”; and when, if ever, does the presence of a computer in a claim lend patent eligibility to an otherwise patent-ineligible idea?

2. In assessing patent eligibility under 35 U.S.C. § 101 of a computer-implemented invention, should it matter whether the invention is claimed as a method, system, or storage medium; and should such claims at times be considered equivalent for § 101 purposes?

The parties have been invited to file new briefs on these questions, and the case will be heard based on the original briefs and any new briefs filed.

The America Invents Act (AIA) has now gone through its second phase of implementation.  Initially there were few things that went into effect over the initial 90 days after President Obama signed the legislation into law.  The first major wave of the AIA took effect on September 16, 2012.  See, for example, Citation of Prior Art, Supplemental Examination, Oath/Declaration and Post-Grant Review et al. The most significant of the changes to U.S. patent law, namely the shift from first to invent to first to file, will not take place until March 16, 2013.  This is a monumental change to U.S. patent law so it is never too early to discuss the many issues that will present with this shift.

The first and most obvious place to begin any discussion of the shift to first to file is with a very basic question: What is prior art?  This is anything but an easy, straight forward question even under first to invent laws that we know so well and have been familiar with virtually throughout the entire history of the United States.  The complexity in what seems an otherwise simple question stems from the fact that prior art is defined by statute.  There is no common sense way to conceptualize what is, or what is not, prior art.

This article follows up a post by Gene on 19 September entitled Remembering Nuijten and Comisky 5 Years Later. I commented that in the EPO the practice relating to signals is directly contrary to the U.S.  Gene commented in response, inviting me to write an article on the topic.

It should be remembered that the USPTO and courts traditionally granted signal claims, and Nuijten was an innovative decision and arguably an outlier that deserved more challenge than it received. The pre-Nuitjen position and the desirability of allowing signal claims or claims to computer program products without specifying non-transitory media embodiment is recorded in a paper by Stephen G.Kunin et al.,  Patent Eligibility of Signal Claims, Journal of the Patent and Trademark Office Society, 87, No. 12, 907 – 1002 (December 2005).  Many positive reasons for allowance of such claims are described in that paper, and they are traced back in history to O’Reilly v Morse.

The good news is that signal claims and broad claims to computer program products are obtainable in Europe. However, such claims are only grantable if the necessary language is present in the European application or the International application as filed, otherwise objection will arise under a.123(2) EPC. Further, the EPO rules on priority are strict, and if the necessary language is missing from the US provisional or utility application from which priority is claimed, then signal or unrestricted computer program product claims will not benefit from priority. It is at the time of US filing that the necessary language must be introduced, and in particular entry into the European regional phase is too late.

Five years ago, on Thursday, September 20, 2007, the United States Court of Appeals for the Federal Circuit issued two decisions that provoked much debate, and which deserve to be remembered.  One the Court got right  and, sadly, one the Court got excruciatingly wrong.

The first case, In re Comiskey, seemed rather straight forward and certainly not earth shattering, except perhaps for one issue – namely that the Federal Circuit issued its decision on patentable subject matter grounds without patentable subject matter ever being an issue during prosecution or on appeal.

In Comiskey, one set of claims were directed to the purely mental process of arbitrating a matter and deciding the outcome. The Federal Circuit did not waste time pointing out that arbitration is extremely well known and could hardly be considered patentably new or nonobvious, rather they cut to the chase and explained that the law does not allow patents to be issued on particular business systems that depend entirely on the use of mental processes, deciding that “the application of human intelligence to the solution of practical problems is not in and of itself patentable.”

The America Invents Act (my how I hate that title!) has caused much change and rethinking about how patent law will be practiced in the future, especially patent prosecution in the USPTO.  A slew of new (and in some cases, recast) procedures will be instituted to permit validity challenges, both pre-grant and post-grant.  One of those new procedures is post-grant review which permits (under new 35 U.S.C. § 321(b)) a “request to cancel as unpatentable 1 or more claims of a patent on any ground that could be raised under paragraphs (2) or (3) of section 282 (relating to invalidity of the patent or any claim).”  As those familiar with patent infringement litigation recognize, section 282 (aka, 35 U.S.C. § 282) referred to by new 35 U.S.C. § 321(b) also defines what defenses in may be raised in patent litigation “involving the validity or infringement of a patent”:

(1) Noninfringement, absence of liability for infringement, or unenforceability,

(2) Invalidity of the patent or any claim in suit on any ground specified in part II of this title as a condition for patentability,

(3) Invalidity of the patent or any claim in suit for failure to comply with any requirement of sections 112 or 251 of this title,

(4) Any other fact or act made a defense by this title.

In step with these new procedures authorized by the AIA, the USPTO has promulgated corresponding rule packages at a “fast and furious” pace.  As part of the post-grant review rules package, the USPTO has interpreted what new 35 U.S.C. § 321(b) means in terms “grounds” that may be raised.  See Ken Nigon’s Post Grant Review, Inter Partes Review and Transitional Program for Covered Business Method Patents.  Interestingly, the USPTO post-grant review rules package has interpreted new 35 U.S.C. § 321(b), and more specifically 35 U.S.C. § 282(2), to mean that not only are 35 U.S.C. § 102 (novelty) and 35 U.S.C. § 102 (obviousness) proper grounds for a post-grant review request, but so is 35 U.S.C. § 101 (inventions patentable).

Mistakes will inevitably happen during the patent process.  If the mistakes could be minimized, however, that would take a giant arrow out of the quiver of those who seek to use misdirection and half-truths to bring down the patent system.  It is unrealistic to expect a patent system that is error free, but there are some mistakes that are quite difficult to rationalize as the type of error that is inevitable.

In a patent system where there are approximately 500,000 patent applications a year with somewhere between 200,000 to 250,000 issued patents a year, it is foolish to think that everything will run with 100% efficiency and accuracy all the time. But how is it possible that claims that are horribly written and terribly disjointed can be allowed after examination by a professional patent examiner?

For at least the past 15 years, the legal, technical and academic communities have been debating the patentability of business methods and software. Despite much negative press ink, talk, legislative activity and court opinions, the answer with respect to patent eligibility is still a resounding and categorical “yes.” That’s the easy part. What types of business methods and software exactly are patentable? That is the difficult question to answer.

What is Patentable?

U.S. Patent Law recognizes four broad categories of inventions eligible for patent protection: processes; machines; article of manufacture; and compositions of matter. 35 U.S.C. Section 101. Despite the oft-quoted recognition that the patent laws were made to cover “anything under the sun that is made by man,” Diamond v. Chakrabarty, 447 U.S. 303, 309 (1980) (quoting S. Rep. No. 1979, 82d Cong. 2d. Sess., 5 (1952)), the U.S. Supreme Court, has long recognized that there are three exceptions to these four broad patent-eligibility categories: laws of nature; physical phenomena; and abstract ideas. Id. These three exceptions are necessary because “[s]uch discoveries are manifestations of … nature, free to all men and reserved exclusively to none.” Id. (citations omitted). Yet, “a process is not unpatentable simply because it contains a law of nature or a mathematical algorithm,” and “an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection.” Diamond v. Diehr, 450 U.S. 175, 187 (1981).

When the Supreme Court remanded the Federal Circuit’s original panel decision in AMP v. USPTO for reconsideration in view of Mayo Collaborative Services v. Prometheus Laboratories, Inc., I said that nothing would change in that remand.  In particular, I predicted that the same two-to-one majority from that Federal Circuit panel (Judges Lourie and Moore in the majority, Judge Bryson in dissent) would again rule that the claimed isolated DNA sequences were patent-eligible under 35 U.S.C. § 101.  My primary reason for my confidence in that prediction was that the Supreme Court’s 1980 decision in Diamond v. Chakrabarty (man-made living organism is patent-eligible) would control on that claimed subject matter, not Mayo Collaborative Services.  See Chakrabarty Controls on Isolated DNA Sequences, not Mayo*.

So guess what happened in the AMP remand of?  As I predicted, simply “déjà vu”:  the same two-to-one majority ruling for essentially the same reasons, as well as confirming that Chakrabarty (not Mayo Collaborative Services) controlled on the patent-eligibility of the claimed isolated DNA sequences.  For the full decision see AMP v. USPTO II (August 16, 2012).