A Guide to Limiting the Damage Done by the Supremes in Mayo

One of the reasons that those knowledgeable about patent law get agitated when anti-patent forces criticize the patent system is because despite what they want to think it is not easy to obtain a patent.  This should be self evident really if you stop and think about it.  When was the last time in your own life that something valuable was easy to obtain?  Has anything valuable ever just been handed over to you or fallen into your lap?  Assuming that you were not born with a silver spoon in your mouth the answer is no.  So why then are so many people willing to accept the utter nonsense of those who detest patents?  Curious when you stop and think about it.

Unfortunately, the patent illiterate are not simply confined to the anti-patent community. Justices on the Supreme Court know so little about patent law it is near depressing that they actually have the authority to decide patent cases, which frankly Congress should put a stop to if you ask me.  For at least now the Supreme Court does get to have the final, often incoherent word on patent matters in cases that they take.  For example, in the recent 9-0 Mayo v. Prometheus decision Justice Breyer, writing for a unanimous Court, explained that the invention in question did not exhibit patent eligible subject matter because the steps in the claims were well known.  If any patent law student anywhere in the country, at any law school in the country, wrote such a thing they would receive 0 points for that question and almost certainly fail the entire exam.  The Supreme Court unquestionably made a grave and fundamental error, leaving it to the Patent Office and lower courts to figure out how it is possible to reconcile the ever growing list of irreconcilable patent precedents from the Supreme Court.

In Mayo v. Prometheus, Justice Breyer explained the Court would not accept the invitation of the government to address the patentability of the Prometheus claim by discretely analyzing the issues presented under 101, 102, 103 and 112.  Instead the Court decided to wrap up the entirety of the patentability analysis under 101, circumventing the Statutory scheme.  Breyer wrote:

These considerations lead us to decline the Govern­ment’s invitation to substitute §§102, 103, and 112 inquir­ies for the better established inquiry under §101.

Frankly, it is not an “invitation” to analyze patentability under 101, 102, 103 and 112 — it is a mandate.  So when Breyer and the Supremes say they are not taking the invitation of the government they are affirmatively and consciously deciding not to follow the statutorily prescribed, mandatory analysis.  Whether Justice Breyer thinks it is far better to have a single inquiry rather than the sprawling inquiries mandated by 102, 103 and 112 is not supposed to be of any consequence.  The fact that all 9 Judges blindly were willing to ignore the statutory scheme is disheartening to say the least.


Truthfully, the Supreme Court did make a grave and fundamental error.  Having said that, we are not going to get anywhere saying that the Supreme Court was wrong, although they were.  Too many district court judges will blindly follow the Supreme Court without a second thought, even though the Supreme Court’s analytical paradigm is contrary to the explicit terms of the Patent Act.  The best hope will be to argue that the Supreme Court could not have meant what they literally said because it would contravene the Patent Act.  Therefore, there must be something peculiar about the Prometheus claims that allowed the Supreme Court to technically adhere to the mandates of the Patent Act while still seemingly short-circuiting the appropriate analysis.

To identify what the Supreme Court must have meant we will need at least three reference points.  Triangulating what the law is post Mayo v. Prometheus focus must be on this latest Supreme Court decision, the Patent Act and Diamond v. Diehr.  

Is Diehr Overruled?

The question of whether the Supreme Court overruled Diamond v. Diehr is critical.  On its face there seems to be no way to reconcile the decisions, but if Diehr is not overruled then it would offer an important clue.  What is different about Diehr than Mayo v. Prometheus that would make one patentable and the other unpatentable?  Discerning the difference becomes critical, but only if Diehr remains good law.

In Diehr, decided by the Supreme Court in 1981, the Court explained:

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 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.

The Supreme Court did not explicitly overrule Diehr.  More specifically, neither the holding that the Diehr invention was patentable nor the statement it is is inappropriate to dissect patent claims when determining eligibility under Section 101.  On its face it, therefore, seems impossible to reconcile Mayo v. Prometheus with Diamond v. Diehr.  In Mayo the Supreme Court clearly dissected the claims in making a determination on patent eligibility under Section 101.  So was Diamond v. Diehr implicitly overruled?

According to Justice O’Connor in Casey v. Planned Parenthood:

[W]hen this Court reexamines a prior holding, its judgment is customarily informed by a series of prudential and pragmatic considerations designed to test the consistency of overruling a prior decision with the ideal of the rule of law, and to gauge the respective costs of reaffirming and overruling a prior case. Thus, for example, we may ask whether the rule has proved to be intolerable simply in defying practical workability; whether the rule is subject to a kind of reliance that would lend a special hardship to the consequences of overruling and add inequity to the cost of repudiation; whether related principles of law have so far developed as to have left the old rule no more than a remnant of abandoned doctrine; or whether facts have so changed or come to be seen so differently, as to have robbed the old rule of significant application or justification.

(citations omitted).

None of the Casey announced departures from stare decisis fit for Mayo v. Prometheus. Furthermore, even if the Supreme Court wanted to overrule Diehr’s prohibition against dissecting claims it couldn’t.  The above quoted language from Diehr relative to dissecting claims merely recognizes the reality of the Patent Statute that is enacted by Congress.  The Supreme Court must follow the laws enacted by Congress unless they are unconstitutional.  There was no claim in Mayo v. Prometheus that the statute (or any part of it) is unconstitutional, but yet the Supreme Court ignored the statute, ignored its own precedent and did exactly what prior Supreme Court precedent (and the laws of Congress) forbid.  If the Supreme Court actually literally meant what they said in Mayo v. Prometheus it is 100% clear and completely inarguable — the Supreme Court erred.

Now the Patent Office and the courts have the unenviable task of trying to figure out what the Supreme Court really meant in Mayo v. Prometheus.  If Diehr remains good law, which it clearly does, and Mayo v. Prometheus is good law, which it has to be as the last pronouncement, then it becomes clear that the proper statutory analysis is to go step by step through the statute analyzing patentability under the separate and distinct patentability requirements of 101, 102, 103 and 112.  That is unless there is something that allows for the short-circuiting of the appropriate analysis as in Mayo v. Prometheus.  What is that something?


There’s Something About Prometheus

First, did the Supreme Court really mean what they seem to have said in Mayo v. Prometheus? The answer has to be a resounding NO.  The Supreme Court decision on its face seems to suggest that inquiry under 102, 103 and 112 is unnecessary because after you dissect the claims and eliminate conventional steps you are only left with a law of nature.  Such an interpretation, however, flies directly in the face of both the Patent Act and Diamond v. Diehr, which still remains good law.

The language used by Justice Breyer is also peculiar: “decline the Govern­ment’s invitation to substitute §§102, 103, and 112 inquir­ies for the better established inquiry under §101.”  That is a far cry really from saying that it is inappropriate to consider 102, 103 and 112.  In fact, what Justice Breyer seems to be saying is that the Supreme Court declined the governments invitation to follow the mandated analysis in this case for some undefined reason.  That makes a lot more sense both in terms of patent law and in terms of Supreme Court jurisprudence.  Anyone familiar with the Supreme Court knows that the Court seems to relish making decisions without reason or rationale, merely kicking it back to the lower courts to figure out.  So it seems relatively clear that the Supreme Court was saying that there is something peculiar about the Prometheus claims that allowed the Court to circumvent the required analysis and settle the issue using 101.

What is that something peculiar about the Prometheus claims?

If you read the Supreme Court decision in Mayo v. Prometheus I think you will be struck by how trivial the Supreme Court believed the conventional steps to be.  It almost seems that the Supreme Court took judicial notice that the steps added to the natural law were well known and within the prior art, without actually engaging in a 102 or 103 analysis.  That being the case, it seems that the Supreme Court asked whether the claims were directed to an invention in the first place, and came to the conclusion that there was no invention present.  In this regard it seems like there is now a threshold inquiry embodied in 101 akin to the more detailed analysis under 112.  Is this an invention in the first place?  If the answer can be given without requirement to engage in the typical 102 and 103 analysis then it seems that a rejection under 101 for lack of patentable subject matter is appropriate.

What is missing from the Prometheus claims is an innovation.  What is covered is a law of nature with extra-solution activity that does not impart any novelty, thus rendering the claims patent ineligible for lack of innovation.  Therefore, to escape the snare of Mayo v. Prometheus there needs to be an innovation.  Merely identifying a law of nature and adding conventional steps does not transform a law of nature into a patent eligible process.  On the other hand, if you employ a law of nature and have non-conventional steps (i.e., calculations and measurements a la Diehr) then you have something that is patentable.

In time the Federal Circuit will moderate Mayo v. Prometheus, limiting it to the particular claims, which are characterized by steps so broad that they do not impart even the appearance of anything innovative.  With that in mind it is probably a very good idea to incorporate enough specifics into these types of claims so that they at least on their face appear to be more than mere extra-solution activity thrown into the mix in an attempt to practically patent all uses of a particular law of nature.

Of course, this special category of cases where Section 101 can supplant the mandatory Statutory analysis under 102, 103 and 112 must be limited otherwise Section 101 would swallow the entirety of 102, 103 and 112.  Therefore, only in the most egregious of circumstances where the Patent Office granted a patent on a law of nature plus insignificant extra-solution activity should Mayo v. Prometheus be relied upon by a district court to invalidate patent claims.


The argument needs to morph from what we know to be true, and is largely therapeutic I know. The Supreme Court just doesn’t understand patent issues and that is why Congress created the Federal Circuit in the early 1980s.  You can catch more flies with honey than with vinegar, and we will have a better chance of moderating the horrendous decision in Mayo v. Prometheus if the argument is set out that the decision of the Supreme Court was correct, but the analysis was unfortunately short-circuited and rather non-illuminating with respect to facts not identical to the Prometheus claim set.


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 as of the time of publication and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Join the Discussion

37 comments so far.

  • [Avatar for step back]
    step back
    May 14, 2012 07:52 pm

    American Cowboy,

    I zinc you got that one right.
    But don’t put the blame on Breyer alone. All 9 justices signed off on this Most Valuable Patent (MvP) decision of all times. “Naturally”, they should all bask in the glory of our zincking opinion of them. What’s next? Everything that can be invented has been invented and therefore, QED no patent claim can satisfy the new and useful requirement of 101? Shut the USPTO down? The logic flows like hydrochloric acid down the brass lined drain. Simply inescapable. 😉

  • [Avatar for Blind Dogma]
    Blind Dogma
    May 14, 2012 06:44 pm

    American Cowboy,

    Just another way of saying the same thing:

    “No patent for you” (angry Seinfeld Soup N@zi overtines).

  • [Avatar for American Cowboy]
    American Cowboy
    May 14, 2012 03:24 pm

    No, Breyer taught us that by mentioning zinc, you mean that you are directing the invention to people who deal with zinc.

  • [Avatar for Blind Dogma]
    Blind Dogma
    May 14, 2012 06:48 am

    step back,

    Thank you for the due respect, 😉 but no, that is not an assumption that I made.

    Did you assume that you are claiming the isolated zinc? Or are you forgetting that Breyer eliminated any such prior claimed inventions as a basis for the claimed invention in Prometheus (rhetorical, of course)?

    Now if isolating zinc so as to then combine the isolated zinc in your reaction that merely follows natural law (i.e., just apply it) is also in your claim, then your hypothetical may change (and then again, may not as we still need to see the court’s revamped Myriad decision).

  • [Avatar for step back]
    step back
    May 14, 2012 05:58 am

    to be a wee bit argumentative) to Step Back’s position [re] “the reaction between zinc (Zn) and hydrochloric acid (HCl) … [that reaction] is a natural occurrence.


    With due respect, you are assuming something that is not in evidence.
    First you must show that isolated zinc (Zn) is a “natural occurrence”. 🙂

  • [Avatar for Mike]
    May 14, 2012 02:53 am

    I think the key comment in your analysis is:

    “What is missing from the Prometheus claims is an innovation. What is covered is a law of nature with extra-solution activity that does not impart any novelty, thus rendering the claims patent ineligible for lack of innovation. Therefore, to escape the snare of Mayo v. Prometheus there needs to be an innovation.”

    I think this says it all, and is a neat way of summarising my views on this case

  • [Avatar for Blind Dogma]
    Blind Dogma
    May 12, 2012 12:58 pm

    To play the Devil’s advocate (and to be a wee bit argumentative) to Step Back’s position of “the reaction between zinc (Zn) and hydrochloric acid (HCl) is “statutory subject matter” at post 25, I would posit that in light of Prometheus that such may not be a given anymore.

    Here’s why: the reaction is not controlled by man. The reaction is a natural occurance. Merely being a process is no longer good enough, as you need to have something “inventive” in the process. A process that does not do more than merely say (or merely do) “apply it” to a law of nature is not eligible. Just as the body metabolizing something wasn’t enough in Prometheus, a chemical reaction that just follows a law of nature is not enough. 101 forecloses “just chemical processes” because “just chemical processes” do nothing but “apply the (natural) law.”

    Breyer has re-infused the notion of “inventive gist” back into patent law and tightened down the screws.

    Welcome to the “new” 101.

  • [Avatar for Stan E. Delo]
    Stan E. Delo
    May 11, 2012 02:48 am

    Very interesting link Step… It seems as if All US politicians are able to be dismissed, including US Presidents and Senators. Justices might be a bit of a stretch though. The trifecta would seem to suggest a sort of pax between the three branches in the past.

    Checks and balances. The only problem seems to be that Congress is Not going to check Anything for about another 3 years, unless David is clever enough to persuade them to do so before then somehow.

    Thanks David!

  • [Avatar for Stan E. Delo]
    Stan E. Delo
    May 11, 2012 12:56 am

    Well and duly granted Step, as to err is a human or otherwise biological trait. Hopefully some of our justices will look at some of this discussion and consider what is being said, in generally a civil and well-considered manner. The level of intelligence displayed here is not to be matched anywhere else that I have found.

    I am not talking about specific legal knowledge, but practical *common sense* wisdom, whatever that is supposed to mean. Call it pragmatic, perhaps.

    A free round of Mercurial Mango Kewl Aid for all implicated!


  • [Avatar for step back]
    step back
    May 11, 2012 12:29 am


    Can a US Supreme Court justice be impeached and removed from office?

    Read more here: http://wiki.answers.com/Q/Can_a_US_Supreme_Court_justice_be_impeached_and_removed_from_office#ixzz1uX2rmxUe

    However, screwing up one patent does not appear to rise to the level of a high crime and misdermeanor

    On the other hand, most justices do care about how history will treat their good name. It’s the one thing they leave behind. I wonder if Justice Breyer will be man enough to admit, yup we screwed up and now we’re going to fix it? We await ACLU v. Myriad.

  • [Avatar for Stan E. Delo]
    Stan E. Delo
    May 10, 2012 11:31 pm

    Breakthrough inventions are a terrible thing to waste.

  • [Avatar for Stan E. Delo]
    Stan E. Delo
    May 10, 2012 11:08 pm

    Congress is also not allowed to *fire* incompetent justices after they have been *approved* by the Senate And the House of Representatives.

    They are tenured until they decide to retire from the bench. Part of the US trifecta I suppose, but when it becomes pretty clear that Congress is not going to do anything about decisions that they might disagree with or not even care about, or change the law a bit, an American Western Cowboy like myself might be inspired to ask why that is so.

    Puzzled in Port Townsend

  • [Avatar for step back]
    step back
    May 10, 2012 08:43 pm

    John Smith,

    I appear to be not getting through to you.

    Let me try a different tack.

    1) A wooden chair with four legs is “statutory subject matter” (is “patent eligible”) because it is a “manufacture” as allowed for by the PMMC provision of 35 USC 101 (PMMC= Process, Machine Manufacture and Composition of matter; or Johnny Carson as I used to call it when studying for the patent bar exam).

    2) The reaction between zinc (Zn) and hydrochloric acid (HCl) is “statutory subject matter” (is “patent eligible”) because it is a “process” as allowed for by the PMMC provision of 35 USC 101.

    3) An electric motor is “statutory subject matter” (is “patent eligible”) because it is a “machine” as allowed for by the PMMC provision of 35 USC 101.

    These 3 examples may not be “novel” under 102(b) or “nonobvious” under section 103, but they do constitute “statutory subject matter” under the Johnny Carson provisions of 35 USC 101.

    The chemical process encompassed by the claims of MvP are also directed to the “process” portion of 35 USC 101 and thus constitute “statutory subject matter”.

    SCOTUS got it wrong.

    As Gene correctly notes elsewhere, if a 1st year law student wrote on his exam paper that a chemical process is not a “process” under 35 USC 101 that 1st year law student would deserve a grade of F minus.

    But as I said elsewhere: The King can do no wrong (even if he wears invisible royal garments) and similarly; the Supremes can do no wrong (even if they say a “process” is not a “process”).

    Welcome to the upside down justice world of US jurisprudence.

  • [Avatar for John Smith]
    John Smith
    May 10, 2012 07:54 pm

    I appreciate your thoughts on the matter step, and it appears that you seem to believe that so long as it is a process, is useful, and does not directly, on its face recite nothing more than an abstraction, law of nature (or perhaps a natural phenomena?) then it is good to go. That is the analysis you propose it appears.

    The supreme court appears to share that analysis except with the addition of taking a slight issue with claims that are an attempt to claim subject matter excepted under one of the three exceptions but where the claim does not recite the excepted subject matter, by itself, on the face of the claim. Do you agree with the court that the one small caveat that they have used time and again in their caselaw should be added into the analysis, or do you simply think that the one small caveat that is different from your recitation of the proper analysis is simply unreasonable? Or do you think that one small caveat is also reasonably added to your proper analysis? If a yes to the later, do you simply think the facts don’t warrant that small caveat applying in this specific case?

  • [Avatar for Stan E. Delo]
    Stan E. Delo
    May 10, 2012 06:09 pm

    I believe you are Correct, sir, as Bill Clinton once said while he was President of the US. A “FUBAR” is a reference to a military acronym that was first coined in the US Air Force, where precision of action and attention to detail is absolutely critical, if I recall it correctly. In more prosaic terminology, if you goof it up badly, somebody might die in a fiery crash, and your *mission* will be severely hampered, possibly causing harm to others in the *process*.

  • [Avatar for step back]
    step back
    May 10, 2012 05:48 pm

    John Smith,

    One of the vile things about MvP (Mayo v. Prometheus) is that the Court chose to use the deceptive label of “patent eligible” invention.

    A lay person such as yourself may get the impression that this is the ultimate question in the MvP case, namely, is the invention deserving of and “eligible” for a patent?

    Nothing could be further from the facts and the truth of the matter.
    Over the last 50 years the legal question at stake has been referred as the “statutory subject matter under 101” issue. Never did anyone use the “patent eligible” nomenclature until somehow it got thrown into the soup only very recently for the purpose of muddying up the waters.

    A “process” which includes: (1) administering chemical compounds to a person, (2) waiting for the person to chemically metabolize those compounds, (3) extracting a blood sample from that person and (4) chemically analyzing the blood sample for determining concentration of a specific metabolite is a useful chemical “process” pursuant to section 101. It is not an abstraction. It is not a man-made “Law of Nature”. Period. End of story.

    The Supremes did a, how you say it? A FUBAR in this case.

  • [Avatar for Stan E. Delo]
    Stan E. Delo
    May 10, 2012 05:05 pm

    “If your morals make you dreary, depend upon it they are wrong.”

    –Robert Louis Stevenson,
    Scottish novelist, poet and essayist

  • [Avatar for John Smith]
    John Smith
    May 10, 2012 03:48 pm

    Thanks for the link Gene and I read it. I did not notice in that article anything relating to what the proper analysis was itself, rather than what you felt like the proper outcome of the analysis was to be. For instance, you seem to imply that if the hand of man is involved then the claim is 100% good to go under 101. At least that appears to be all you have to say in the article you linked. In your response in this thread however you tell us that the proper analysis was that the claim was patent eligible. I’m not convinced that an analysis is an outcome. Rather than inquiring about what you believe the proper outcome was, I am rather inquiring how you feel the actual analysis should have gone down. If you have any wisdom to share on that subject I’m sure we’ll all be very much interested to hear it. Likewise, we’ll be interested to hear how you feel the analysis, as in the process of determining eligibility, has changed after Prometheous.

    Also, the passage I was asking about was the passage from Diehr. Why do you suppose they wrote that passage anyway? Did they just spontaneously decide to pontificate on the subject discussed in that paragraph? Or did they perhaps write it in response to something that occured in the Diehr case?

  • [Avatar for step back]
    step back
    May 10, 2012 03:09 pm


    An offshoot of the above Wiki link is this:

    [G]ive a moment’s consideration to Bellini’s masterwork, On the Luminescence of the Emperor’s Feathered Hat. We have entire schools dedicated to writing learned treatises on the beauty of the Emperor’s raiment, and every major newspaper runs a section dedicated to imperial fashion

    [Taken slightly out of context from here:
    http://en.wikipedia.org/wiki/The_Courtier%27s_Reply#The_Courtier.27s_Reply ]

    In line with the above, and in our modern times, we have entire schools dedicated to writing learned treatises on the beauty of Emperor/Justice Breyer’s rantments in MvP –oh the beauty and deep depth of his logic, the magnificence of his oratory.

    This comes with good reason. Like the autocratic kings of yore, US Supreme Court justices wield great power; including the ability to issue “off with your head” like declarations if the whim strikes them. That is why so many lawyers cringe and bow obsequiously before the throne of the mighty Supremes. Like the King, the Supremes can do no wrong.

    The question that arises out of the original Emperor’s New Clothes story is whether the Emperor was well served by his eager-to-agree courtiers? And in our modern times, is Emperor/Justice Breyer well served by his eager-to-agree courtiers (a.k.a. legal scholars)?

  • [Avatar for Stan E. Delo]
    Stan E. Delo
    May 10, 2012 01:48 pm

    or will they just

  • [Avatar for Stan E. Delo]
    Stan E. Delo
    May 10, 2012 01:47 pm

    Step back-

    Check out the Wiki take on the story. If you go to the Plot section, it is eerily reminiscent of what has and is still transpiring.

    I would have burst out laughing when I read it, if the MvP case wasn’t quite so depressing. Great analysis Gene, but I suppose it will stand until another SCOTUS case comes along to upstage it? Not likely I suppose, as they probably won’t want to reveal that they can’t see their new finery. Is it possible for the FedCirc to effectively reverse it, or will just have to tiptoe around it?

    An inquiring mind would really like to know.


  • [Avatar for step back]
    step back
    May 10, 2012 12:26 pm

    The story of “The Emperor’s New Clothes” points to the human frailties of vanity, hubris and greed.

    Most people who read the story self-identify with the little child who cries, “Look Mommy, the Emperor wears no clothes!”

    But that is our hubris and vanity talking through us.

    In fact most of us are like the sycophantic cowering courtiers in the Emperor’s court; doing what is necessary to hold on to their jobs, including agreeing with the boss, bowing obsequiously to the boss and paying homage no matter what mistruths are being told, no matter what frauds are being perpetrated.

    So let’s not crow proudly that Justice Breyer prances in Emperor’s clothes.
    Let us instead look to all the cowering courtiers who nod in agreement about how fine fitting his latest MvP spinnings are.

    signed sycophantically and stealthily yours,
    -the step back

  • [Avatar for American Cowboy]
    American Cowboy
    May 10, 2012 11:44 am

    “to point out that Breyer was prancing around in the buff.”

    I guess they knew we were here to do that for them.

  • [Avatar for Blind Dogma]
    Blind Dogma
    May 10, 2012 10:46 am


    The problem is that Breyer dissed the government brief’s position which was basically apply the correct sections of the law in the correct way. Instead, he choose a “mix-everything-in-one-bowl-and-just-call-it 101” mess.

    What was even more disheartening was that there wasn’t a single Justice who cared enough to point out that Breyer was prancing around in the buff.

  • [Avatar for American Cowboy]
    American Cowboy
    May 10, 2012 09:33 am

    When Breyer was dismissing this or that as “conventional” wasn’t he doing a section 102 analysis without citing that section of the statute? What else does conventional mean than “not novel?”

  • [Avatar for Blind Dogma]
    Blind Dogma
    May 9, 2012 06:40 pm

    …and the number one way to limiting the damage done by the Supremes in Mayo:

    Repeal it.

    Great job – you must be doing something right because your name is once again being used in vain by some of the less intelligent posters at Patently-O.

  • [Avatar for step back]
    step back
    May 9, 2012 06:34 pm

    Much better. Your HTML/PHP code is no longer showing in my FireFox browser.

    BTW, do you roll your own HTML code or have a team of IT guys doing if for you

  • [Avatar for Gene Quinn]
    Gene Quinn
    May 9, 2012 05:55 pm


    Any better re: the PHP code?


  • [Avatar for Gene Quinn]
    Gene Quinn
    May 9, 2012 05:55 pm

    John Smith-

    Here is a link to my initial article on the decision:


    The proper analysis is that these claims satisfy 35 USC 101 and are patent eligible subject matter. The Supremes blew it completely. Thankfully, however, they blew it so badly and without any analysis. That means that the Federal Circuit should be able to moderate the decision easily. They couldn’t mean what they actually said because combining the entire patentability analysis into 101 violates Diehr, which they did not overrule, and also is prohibited by the Patent Act itself. The government was correct. The claims should be analyzed under each section with the acknowledgment that each section plays a different role. The Supreme seem to have not wanted to do the heavy lifting, or to remand the case for further consideration under 102, 103 and/or 112.

    The passage you ask about (if I have the right passage) was written to dismiss the brief and argument of the government. The government.


  • [Avatar for John Smith]
    John Smith
    May 9, 2012 01:15 pm

    A good write up Gene, if you don’t mind reminding us, what is the proper analysis under 101 from your perspective? Did it change at all after Prometheus?

    Wasn’t 102, 103 and 112 left unanalyzed in this specific case because it was an appeal from a summary judgement of invalidity under 101? Wasn’t the fact that it was a summary judgement that peculiar thing about the claims that allowed them to circumvent the required extra analysis under other statutes and settle the matter with 101?

    Do you remember why it was that the supremes undertook the writing of the passage you cite? I can’t remember.

    Also, I don’t think they had to take judicial notice that the steps were old, Prometheous admitted as much in their brief and it was established in the lower courts.

  • [Avatar for step back]
    step back
    May 9, 2012 12:52 pm

    Some of your PHP code is showing
    Look at bottom of opening page of this post 🙂

  • [Avatar for step back]
    step back
    May 9, 2012 12:29 pm

    BD, LOL, so true, you were mistaken more than once, RFLMAO. 😉

  • [Avatar for Blind Dogma]
    Blind Dogma
    May 9, 2012 10:03 am

    I thought I was mistaken once, but I was wrong.

  • [Avatar for step back]
    step back
    May 9, 2012 09:03 am

    Here is another link regarding the Anosognosia malady:

    But frankly, to call other people “dumb” is a form of self-Anosognosia.

    We all suffer from limited/ finite/ bounded cognitive abilities.
    We all have areas of understanding in which we are wholly incompetent.
    Yet it is ego, vanity, hubris, denialism; call it what you want, that blocks us from seeing it and admitting to it.

  • [Avatar for step back]
    step back
    May 9, 2012 08:49 am

    Gene, please release my comment #2 from spam catcher jail. Thanks. 🙂

  • [Avatar for step back]
    step back
    May 9, 2012 08:48 am


    There is a new area of study in human cognitive abilities referred to as the Dunning–Kruger effect.

    See http://en.wikipedia.org/wiki/Dunning%E2%80%93Kruger_effect

    See also this NYT article on the phenomenon:

    In an increasingly technological society, an increasing number of people are becoming too incompetent in their understanding of science and technology to know that they are incompetent.

    Frankly, I don’t know what the answer is other than for those in the patent field to start a strenuous effort toward re-educating the public and particularly the judiciary on how so-called “Laws of Nature” (which are not what the phrase says they are) come into being and how inventions come into being.

    Nature is not our “Mother” and she does not declare her “Laws” to us. Rather, we make them up. We invent them. They are our abstract ideas of how we think Nature universally behaves. Often we are wrong.

    That the SCOTUS does not even understand that “Laws of Nature” are merely a species of the genus, “Abstract ideas” speaks volumes as to the Anosognosia that SCOTUS suffers from in the area of science and scientific research.

    In the end, the public and its general welfare suffer from the cognitive inabilities of the judiciary to deal with complex science and technology.

  • [Avatar for EG]
    May 9, 2012 08:42 am


    As I’ve said before, the way forward from Mayo’s nonsense is through Newman’s opinion in the Classen Immunotherapies remand.