Athena Diagnostics v. Mayo Collaborative Services: a Paradigm of Patent Eligibility Meriting En Banc Review

By Paul Cole
May 23, 2019

“The Mayo/Alice framework needs reconsideration to place pioneering or breakthrough inventions and incremental inventions on a level playing field. No such disadvantage is imposed on inventors in Europe and there is no credible policy justification for such illogical and harsh treatment.”

In Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1376 (Fed. Cir. 2015) the Federal Circuit belittled pioneering work at Oxford University, indisputably one of the world’s leading research institutions. In the Athena Diagnostics v. Mayo Collaborative Services decision handed down early in 2019, the Federal Circuit surpassed itself by belittling pioneering work representing the combined efforts of Oxford University and the Max-Plank Gesellschaft, two of the world’s leading research institutions. A petition for en banc review has been filed and is supported by amicus briefs. This article further supports the need for review, emphasizing inadequate attention paid to the positive eligibility provisions of 35 USC 101, conflict with Diamond v Diehr, an inadmissible extension of admissions within the patent description regarding a genus of techniques to cover a previously undisclosed species of techniques within the genus, and the need to give equal treatment to those who make pioneering inventions or discoveries and those whose inventions or discoveries are incremental.

The Athena Subject Matter

As explained in the background to the majority opinion, Athena Diagnostics is the exclusive licensee of U.S. Patent 7267820 (Vincent) covering methods for diagnosing neurological disorders by detecting antibodies to a protein called muscle-specific tyrosine kinase (MuSK). In particular, the methods are useful for diagnosing Myasthenia gravis (MG), which is a neurological disorder where patients experience muscle weakness and symptoms including drooping eyelids, double vision, and slurred speech.

The subject-matter claimed in claim 9 of Vincent US 7267820 on which the panel majority in Athena focused is as set out below:

A method for diagnosing neurotransmission or developmental disorders related to muscle specific tyrosine kinase (MuSK) in a mammal

comprising the step of detecting in a bodily fluid of said mammal autoantibodies to an epitope of muscle specific tyrosine kinase (MuSK), comprising

contacting MuSK or an epitope or antigenic determinant thereof having a suitable label thereon, with said bodily fluid, wherein said label is a radioactive label and is 125I,

immunoprecipitating any antibody/MuSK complex or antibody/MuSK epitope or antigenic determinant complex from said bodily fluid and

monitoring for said label on any of said antibody/MuSK complex or antibody/MuSK epitope or antigen determinant complex, wherein

the presence of said label is indicative of said mammal is suffering from said neurotransmission or developmental disorder related to muscle specific tyrosine kinase (MuSK).

The above method can be understood with reference to the disclosed embodiment with reference to the following diagram, with products of nature shown above the horizontal line and products created by human intervention shown below the horizontal line:

The panel majority held that the claim was directed to a natural law, i.e. the correlation between the presence of naturally occurring MuSK antibodies in the bodily fluid and MuSK-related neurological diseases. However, appropriate and necessary attention to detail would have revealed process steps of a qualifying transformative character, and in particular to the following ordered combination of steps:

  • providing bodily fluid of a mammal, implicitly as an isolated sample (column 5 lines 18-19);
  • providing 131I-labelled MusK or an epitope or antigenic determinant thereof, being a novel compound disclosed neither in Valenzuela WO 97/21811 cited by Vincent nor in earlier-dated Bowen US 5814478, apparently the earliest disclosure of the MuSK protein.
  • reacting the labelled MuSK or fragment thereof with the antibody in the sample to produce an autoantibody/labelled MuSK complex, a second novel compound; and
  • further reacting the complex produced with an immunoprecipitating agent (e.g. sheep IgG) to form an immunoprecipitated 3-component complex which is a third novel compound and is used for radioactive counting.

It will be apparent that three of the four eligible subject-matter categories of 35 USC 101 are relevant to the claimed subject-matter.

Examining Eligibility Factors

Each of the 135I-MuSK, the autoantibody complex and the immunoprecipitated complex falls straightforwardly within the eligible “composition of matter” category, not being directed to a single substance but to a composite article, see Chakrabarty, 447 U.S. at 308, citing Shell Development Co. v. Watson, 149 F. Supp. 279, 280 (DC 1957). No authority supports the proposition that a novel chemical compound created by the combination of separate entities is other than patent eligible. In particular, no such conclusion can be drawn from the Supreme Court opinion in Association for Molecular Pathology v. Myriad, where Thomas J. recognized cDNA as distinct from a naturally-occurring material and as unquestionably something new created by a lab technician, notwithstanding that each of the nucleotide sequences in the cDNA had been dictated by nature and not by the lab technician. Nor should steps involving these new compounds be dismissed as “conventional steps specified at a high level of generality” as in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66 (2012) since steps involving compounds new to science cannot legitimately be regarded as “conventional” or “non-routine steps” but as contended by Athena are directed to a new laboratory technique that makes use of man-made molecules.

It is also plain that the immunoprecipitated 3-component complex qualifies as a “manufacture” being a newly created article in a new form (precipitated material), with new provenance and with new utility (suitability for radioactive counting), all of which are attributes of eligibility as a “manufacture” under the criteria in Hartranft v. Wiegmann, 121 U. S. 609, 121 U. S. 615 (1887), quoted with approval in American Fruit Growers, Inc. v. Brogdex Co., 283 U. S. 1, 283 U. S. 11 (1931), Diamond v Chakrabarty, 308  and Association for Molecular Pathology v. Myriad Genetics, Inc  569 U.S. ___ , 133 S.Ct. 2107 (2013). The precipitated 3-component complex has also become for every practical purpose a new thing commercially and analytically: Parke-Davis & Co. v. H.K. Mulford Co., 189 F. 95 (C.C.S.D.N.Y. 1911) (adrenalin),   Kuehmsted v. Farbenfabriken of Elberfeld Co., 179 F. 701 (7th Cir. 1910) (aspirin), Merck & Co. v. Olin Mathieson Chem. Corp., 253 F.2d 156 (4th Cir. 1958) (vitamin B12).

The claimed method therefore involves the production of patent-eligible new substances. No prior Supreme Court or Federal Circuit decision supports the proposition that they should not count towards Section 101 compliance merely because they are defined in individual steps in a multi-step method and not in stand-alone compound claims.

The attention of the panel majority had been directed to the new compound issue, but it was dismissed in a footnote:

“We note that the district court held that the “focus of the claims” was the binding of MuSK to MuSK antibodies in bodily fluid. Decision, 275 F. Supp. 3d at 310. Our cases have not described a claim to the binding of two molecules during a sequence of chemical manipulations (here, after MuSK labelling and before immunoprecipitation) as a claim to a natural law, even if such binding occurs according to natural laws. We need not resolve that issue here, as we agree with Mayo’s identification of the natural law.”

It is apparent that the alleged conflict between positive statutory eligibility as composition of matter features and judicial exception as a claim to a natural law was a significant and highly relevant legal issue that cried out for resolution, not least because it involved the doctrine of separation of powers. The need to interpret a statute as written and the inappropriateness of rewriting it were recently emphasized by Kavanaugh J. in Henry Schein v. Archer & White. However, the need to take positive provisions into account can be traced to older authority e.g. Bilski v. Kappos 561 U.S. 593 (2010) where Kennedy J. explained that: “Concerns about attempts to call any form of human activity a “process” can be met by making sure the claim meets the requirements of §101.”

It is also apparent that the overall method claimed falls as a matter of substance and not mere outward appearance within the Section 101 category of “process,” the water-soluble autoantibody starting material being transformed or reduced to the water-insoluble 3-component complex which is a different state or thing: Cochrane v. Deener, 788, quoted with approval in Parker v. Flook, 59 see e.g. footnote 9, Diamond v. Diehr, 185, Bilski v. Kappos, Association for Molecular Pathology v. Myriad Genetics  569 U.S. 576 (2013) and Alice Corp. v. CLS Bank International, 573 U.S. 208 (2014). The majority in Diehr summarized its conclusion that the claimed rubber-curing method involving the Arrhenius equation was patent-eligible in the following terms:

“We view respondents’ claims as nothing more than a process for molding rubber products, and not as an attempt to patent a mathematical formula. We recognize, of course, that, when a claim recites a mathematical formula (or scientific principle or phenomenon of nature), an inquiry must be made into whether the claim is seeking patent protection for that formula in the abstract…. On the other hand, when a claim containing a mathematical formula implements or applies that formula in a structure or process which, when considered as a whole, is performing a function which the patent laws were designed to protect (e.g., transforming or reducing an article to a different state or thing), then the claim satisfies the requirements of § 101. Because we do not view respondents’ claims as an attempt to patent a mathematical formula, but rather to be drawn to an industrial process for the molding of rubber products, we affirm the judgment of the Court of Customs and Patent Appeals.”

No valid distinction can be discerned between the rubber molding process of Diehr and the diagnostic method of Athena. The claimed process equally transforms the initial autoantibody into a different state or thing. The method of claim 9 cannot be regarded as an attempt to patent the correlation which was held to be a natural law, especially as it covers only a preferred one of two alternative detection methods disclosed in the patent. The diagnostic method is equivalent “an industrial process” because it is commercialized on a mass-scale by medical diagnostic companies.

The panel majority over-emphasized the doctrine in Supreme Court precedent that a law of nature or other ineligible element should be treated as prior art, the position being explained in Diamond v. Diehr as follows:

“…we did not hold in Flook that the mathematical algorithm could not be considered at all when making the § 101 determination. To accept the analysis proffered by the petitioner would, if carried to its extreme, make all inventions unpatentable, because all inventions can be reduced to underlying principles of nature which, once known, make their implementation obvious. The analysis suggested by the petitioner would also undermine our earlier decisions regarding the criteria to consider in determining the eligibility of a process for patent protection. See, e.g., Gottschalk v. Benson, supra; and Cochrane v. Deener, 94 U. S. 780 (1877).”

Repeatedly throughout its opinion, the panel majority held that the claimed subject-matter was directed to a natural law because the claimed advance was only in the discovery of a natural law, and that the additional recited steps only applied conventional techniques to detect that natural law, this allegedly being an admission made in the description of the patent specification itself. However, a more logical analysis of what was said in the description is that the detection steps fell within a genus of known immunoassay techniques, which should not be held to be an admission that these steps considered as species within the genus were also conventional. Indeed, the proposition that the radio assay technique developed by Vincent was conventional involving standard techniques in a standard way when it resulted in man-made compounds new to science is clearly self-contradictory.

The decision repeats the poisonous doctrine that to supply an inventive concept the sequence of claimed steps must do more than adapt a conventional assay to a newly discovered natural law; it must represent an inventive application beyond the discovery of the natural law itself. The Mayo/Alice framework needs reconsideration to place pioneering or breakthrough inventions and incremental inventions on a level playing field. Whereas incremental inventors only have to make a single invention or discovery, for eligibility these pioneering inventors need to make two inventions or discoveries. The return for the qualifying second invention is ashes: it is left open to others to find ways other than the second invention for performing the detection steps, after which those others can freely benefit from the fundamental discovery or breakthrough and the original inventors receive nothing. No such disadvantage is imposed on inventors in Europe and there is no credible policy justification for such illogical and harsh treatment, which was not meted out to James Watt, Samuel Morse or Alexander Graham Bell. A better rule is in The Telephone Cases 126 U.S. 1, 531 (1888):

“It may be that electricity cannot be used at all for the transmission of speech except in the way Bell has discovered, and that therefore, practically, his patent gives him its exclusive use for that purpose; but that does not make his claim one for the use of electricity distinct from the particular process with which it is connected in his patent. It will, if true, show more clearly the great importance of his discovery, but it will not invalidate his patent.”

The continuing relevance of the rule in the Telephone Cases was affirmed by Justice Stevens in Bilski v. Kappos, 561 U.S. 593 (2010), where he said, also with reference to O’Reilly v. Morse, 56 U.S. 62 (1853):

“One might think that the Court’s analysis means that any process that utilizes an abstract idea is itself an unpatentable, abstract idea. But we have never suggested any such rule, which would undermine a host of patentable processes.”

It is to be sincerely hoped that the petition for en banc review will be granted and that the present unsatisfactory decision will be reversed. Indeed, the most appropriate outcome would be disapproval of the whole chain of unsatisfactory Federal Circuit decisions in life sciences inventions, including Ariosa.

 

The Author

Paul Cole

Paul Cole has over 40 years of practice as a patent attorney, is registered to practice before the UK and European patent offices, the UK and European trademark offices and to conduct proceedings for infringement of intellectual property rights before the UK courts. He received an MA in chemistry from Oxford University and an LLM from Nottingham Trent University, and has worked as a patent attorney in both industry and in private practice, becoming a partner in Lucas & Co in 1999.

For more information or to contact Paul, please visit his Firm Profile Page.

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 22 Comments comments. Join the discussion.

  1. Jason Lee May 24, 2019 10:43 am

    There is major logic and financial reasoning why such illogical and harsh treatment of patents is at play in America. The only, and Multi Billion dollar reason is companies like Google Apple, Amazon and Microsoft do NOT want to PAY for Patent Licensing fees.

    Patent vales have been decimated since they brought in AIA Act PTAB eBAY, Alics, Mayo….. Take a look at all the Silicon Valley’s stock growth since 2011. PAAACHHHING thats money making logic even though it kills off any future inventor from developing a new idea.

    Congress is owned and operated by Special Interest groups that craft the bills to their liking. America will not get it right because Silicon Valley will not let them. Companies like Apple and Google are making to much money stealing patents and draining out patent holders at the PTAB. Money making is one hell of a drug and the American government can not see how its killing its future by allowing Silicon Valley carte blanch on patent rights in America.

    Germany and China are the new frontier for inventors. Its been close to 10 years now and they are still not able or willing to do the right thing and give patents their rights back. You can only prevent people from not playing your game for a certain time until they create their own game which will be bigger and better, Germany and China will do just that with their patents. and Huawei is proving to Apple how the student has surpassed the teacher.

    Patent rights are not protected in America and will be protected in Germany and China which could leave American companies out of the European and Asian markets if they do not protect patent holders and pay a patent holder for their invention. It could be Americas last move if patents are not protected from Bullies like Apple and Google.

  2. Paul Cole May 24, 2019 12:32 pm

    I prefer over-reaction to Supreme Court reversal coupled with groupthink or “the normalization of deviance” (Diane Vaughn). I don’t think that any undue influence is involved, which is not to minimise the unjust and harmful effects of the present patterns of judicial reasoning.

  3. Anon May 24, 2019 2:34 pm

    Paul Cole,

    There is zero credibility in the view that there is no undue influence involved.

    That you think that would be a “you” problem. That you would think that and let that influence your writing would be a problem for your writing. That you would think that AND advance a view seeking to quash the statements to that effect from others shows a serious blindness to your legal formulations.

    There is more than ample evidence of special Big Tech influence with US patent law. Please open your eyes. Let the facts shape your legal views. Do not form your legal views in a vacuum and then turn and wonder why there are those who discount what you have to say.

  4. Paul Cole May 24, 2019 5:00 pm

    @ Anon

    There is no evidence from your comment that you have studied the paper.

    I have personally met many judges of the Federal Circuit and have the highest regard for their integrity and anxiety to perform their judicial tasks to the best of their ability. They may be misguided, but I am not persuaded about outside influence.

    Of greater significance, in my view, is their anxiety not to be reversed and therefore be seen (arguably) to have done a bad job.

    One of the main points of my paper is that the Athena subject-matter was clearly patent-eligible, and that any contrary opinion raises impermissible issues of separation of powers.

    My views have been formed by detailed analysis of the facts, so far as these are easily publicly accessible, and by study of the relevant legal background over a period of some 5 years. My file of relevant Supreme Court precedent goes back to Evans v Eaton (1822). It is not a bad idea to study those views in detail before discounting what I have to say.

  5. Anon May 24, 2019 8:56 pm

    Paul @ 4,

    My comment was not to your paper but to your reply at post 3.

    While these are two different things, your attitude on the one impact your credibility on the other.

  6. Paul Cole May 25, 2019 4:44 am

    @ Anon

    I can study the facts expressed in a decision, especially the technical facts, and the background of legal precedent and provide hopefully objective reasoned comments. In the present case, my conclusion is that the Athena decision is wrong and unjust. I have no reason to look further, especially as the alleged bullies Apple and Google are not engaged, so far as I am aware, in medical diagnosis. I am a little more concerned about Mayo, and whether it is truly in the interests of medicine to create a categorical exclusion for diagnostic method patents, which the present line of precedents threatens to do.

  7. Anon May 25, 2019 8:45 am

    Mr. Cole,

    Your response featuring what you can do from a legal analysis angle is NOT what is at issue in my reply to your comments here below the article.

    That you continue to try this avenue of rebuttal only highlights your “closed-eyes” condition to the reality that in the US there has been a very active (and well-monied) anti-patent effort.

    “Hopefully objective legal reasoning that attempts to remain in a “closed-eye” vacuum lessons – not strengthens – your credibility.

    No one is faulting the legal reasoning on its own that you provide. What is being faulted is your insistence on not seeing the full picture of what is going on. The bigger picture simply is NOT limited to medical diagnostics (and even attempting to so limit falls to the anti-patent attempts to Divide and Conquer — which should be avoided). The “concern” should not be “medicine” per se, but should be the more global “innovation protection.”

  8. Jeff May 25, 2019 7:05 pm

    Wondering if one might see undue influence when PTAB judges give favorable decision to former clients and then get hired by those they helped as judges? Do such connections rise to the level of evidence for undue influence in your view?

  9. B May 25, 2019 8:36 pm

    @ Paul Cole “I have personally met many judges of the Federal Circuit and have the highest regard for their integrity and anxiety to perform their judicial tasks to the best of their ability.”

    I have zero respect for most of the judges at the CAFC. The CAFC more often than not issues moronic and dishonest s101 opinions, and for what reason?

    “Of greater significance, in my view, is their anxiety not to be reversed and therefore be seen (arguably) to have done a bad job.”

    First, the CAFC has done a bad job. A miserably bad job.

    Second, all appellate courts occasionally get reversed. However, if the CAFC would actually stick to statutory language, rather than invent extra-statutory requirements, maybe the CAFC would be reversed less often. Have you read the Uniloc v. ADP decision? The statutory language of s101 is not even cited, and the CAFC has de facto written out s103 and s112(f) out of the patent law.

    The CAFC has lost my respect. It will take many long years of the CAFC not being a retarded cage of monkeys for them to regain my respect. I can respect the office and still have no respect for the people occupying the office.

  10. Paul Cole May 26, 2019 5:27 am

    @ B

    The Uniloc v ADP decision came out after this article was written, though it has been analyzed in Patently-O. In Athena, the claim is characterized by features that are both novel and patent-eligible, the subject-matter as a whole clearly being a “transformative” process. The claims of the two patents held ineligible in Uniloc do not seem to have features of the same novel, eligible and transformative character. License management policy information, a user identity based policy, an administrator policy override definition or a user policy override definition do not seem to me to be features of technical significance or belonging in the “useful arts.” It is not even clear that the “client” is a necessarily device rather than a person since it is not said to be a client server.

  11. Anon May 26, 2019 11:56 am

    Mr. Cole,

    What is the statutory basis for claim elements in and of themselves needing to be transformative (in direct contrast to a claim as a whole being “transformative”)?

    Your “characterized by features” approach is a logical fallacy. Please see the thought experiment as exemplified by the phrase “Big Box of Protons, Neutrons and Electrons.”

    Would you consider a full cycle of encryption/decryption “transformative” as a whole?

    Why do you attempt to conflate “technical” — as in “technical significance” with the utility of Useful Arts for which our Sovereign has set as our utility standard?

    I would caution you (yet again) that you “legal logic” concerning “clearly” devolves directly into the “I know it when I see it” type of logic currently used by our Court that is a foundation of the mess that we have.

    Overall, the more that you dig, the deeper the hole that you are in. You will most likely want to stop, think about these counter points put to you, and choose a different path out of that hole.

  12. B May 26, 2019 3:36 pm

    @ Paul Cole ” License management policy information, a user identity based policy, an administrator policy override definition or a user policy override definition do not seem to me to be features of technical significance or belonging in the ‘useful arts.’”

    Respectfully, your opinion on “technical significance” is meaningless. Section s101 requires only a new and useful process, machine, etc. No one is asking whether “useful arts” in the U.S. Constitution excludes business-related claims. No one questioned whether there was a new and useful process in the claims at issue.

    The claims at issue fall squarely within s101.

    This is merely a few incompetents in black robes playing the “inventive concept card” to invalidate a claim. Christ, they’re too incompetent to read the language of s101, which isn’t particularly taxing. Think about this: s101 is written in a way that expressly states that no improvement is required, yet not one CAFC judge has noticed this fact in five years. That’s striking evidence of a lack of intelligence.

    Federal Circuit, are you reading this? Where is “improvement” required? Can you define what is an “inventive concept” and how it differs from nonobviousness?

    Also, have any of you read s112(f), which governs functional claiming? No, none of you have because you’re too intellectually lazy to count beyond 101.

    Granted, a few CAFC judges understand the problem. However, none of them have the work ethic to issue a dissent in a Request for Rehearing to improve chances for certiorari.

    The CAFC is an incompetent organization. They destroy the hard work and innovation of my clients and tens of thousands of other people because they’re too stupid to read s101 or any other section of the Patent Law.

    If anyone at the CAFC believes different, issue a decision that addresses one or two of my complaints above. Just one of you acknowledge that s101 doesn’t require an inventive concept or improvement.

  13. Paul Cole May 27, 2019 2:52 am

    @ B

    I am far from convinced that the method of US 6,728,766 provides a transformative process falling within that category of 35 USC 101 according to the established jurisprudence for that category. Many of the features have an abstract character and resemble the features disapproved in Mayo v Prometheus. There may be arguments to the contrary that would be revealed by prolonged study, but the case for positive compliance in Uniloc seems far weaker than that in Athena. The very strong arguments for positive compliance in Athena are the reason that it is such a promising test case.

  14. B May 27, 2019 5:36 pm

    @ Paul Cole “I am far from convinced that the method of US 6,728,766 provides a transformative process falling within that category of 35 USC 101”

    I respectfully repeat: there is no requirement for a process to include a transformation under s101. See Bilski v. Kappos

  15. Anon May 27, 2019 8:09 pm

    Mr. Cole obviously has a categorical definition of process with more than just a little Supreme Court baggage.

    To the extent that he refuses to see the inherent (and explicit) problems of the “score board is broken” and continues to advocate so as to somehow “force feed” the actual law as written by Congress into the plainly evidently contradictory Supreme Court Common Law version of 35 USC 101, sadly, he remains part of the problem.

  16. Anon May 27, 2019 11:58 pm

    B @ 14,

    Even 35 USC 100(b) does not contain a hint, or element of the provided definition from which one may place a statutory hook:

    (b) The term “process” means process, art, or method, and includes a new use of a known process, machine, manufacture, composition of matter, or material.

    When the thrust is that the error is in the “established jurisprudence,” relying on that very same “established jurisprudence” cannot carry the point. One may merely note that ALL of the aim of Mr. Cole in his amicus brief MUST FAIL if he strictly limits himself to the “cover” of “established jurisprudence.”

  17. B May 28, 2019 1:51 am

    @Anon “Even 35 USC 100(b) does not contain a hint, or element of the provided definition from which one may place a statutory hook”

    Rely on ordinary, contemporary definitions per Bilski. Granted that Bilski is an example of a lack of self awareness by the Supreme Court, but there are well established rules to statutory construction.

  18. Paul Cole May 28, 2019 10:15 am

    @ B 14

    Even though Bilski opens the “process” category somewhat and widens what might be thought patent-eligible, it casts no doubt on the proposition in Cochrane v Deener that if a process characterised by a sequence of defined steps is transformative, then the claimed subject-matter is patent-eligible. The machine or transformation test which was not wholly discredited in Bilski is of significant positive utility in Athena, and absence of clear transformation in Uniloc does not point towards patentability.

    @ Anon

    We may have helpful legislation from Congress. There may be fairies at the bottom of our back yards. We may also all have a visit from Santa on Christmas Eve, for which most people of goodwill leave out a glass of sherry and a mince pie. We can wait on such events, but it is unwise to place all our hopes on them.

    In the meantime, we are stuck with the legal precedent we have. Our obligation on behalf of our clients is to make the best of the legal situation we are in, to argue fact and law for the utmost benefit of our clients, to minimise rejections which are inconsistent with existing law as fully and correctly understood, to avoid inconsistencies between the positive eligibility categories enacted by Congress and the legislative exclusions, and to argue against categorical exclusions unintended by Congress. These efforts are directed towards the SAME ENDS as Anon, and if they prove unfruitful that is to be regretted.

  19. Anon May 28, 2019 2:42 pm

    Mr.Cole,

    I suggest that you read again the last paragraph of my last post.

    What you attempt is worse than any believing in Santa. The way to fight for your clients is NOT to embrace the defeat of illformed judicial branch muckery, but to highlight why such IS muckery.

    Somehow you want to equate my path with fallacy, while excuse your path. I believe (even though you do not come out and say it here) that you still bank on some notion that the exceptions (of the Supreme Court) have no intersection with the stated Statutory Categories as provided by Congress.

    That just is not so by the very “legal precedent” that you BOTH want to use, but then turn around and challenge for your own special crusade.

    Your last paragraph is a bit unclear. Just what are the “legislative exclusions” you mention? And why do you switch to use the term categorical exclusions? It’s as if you desperately want to reframe the jurisprudence that we have to fit your already made argument without recognizing that your argument falls apart in multiple ways when you want “legal precedent” to be taken as it is.

    You have to realize that the score board is broken in order to NOT try to depend on the score board, yet challenge the score.

  20. B May 28, 2019 2:43 pm

    @ Paul Cole “In the meantime, we are stuck with the legal precedent we have. Our obligation on behalf of our clients is to make the best of the legal situation we are in, to argue fact and law for the utmost benefit of our clients[.]”

    There is no law. Only CAFC decisions that contradict the statute, SCOTUS precedent, and last month’s CAFC decisions. The best strategy for addressing a s101 issue in court is to pray you get the right CAFC panel.

    I’m waiting for the American Axle decision, where a District Court held that a drive train was abstract because the designer used a law of physics to reduce sympathetic vibration. https://cpip.gmu.edu/wp-content/uploads/sites/31/2018/07/American-Axle-v-Neapco-Brief-of-Amici-Curiae-12-Patent-Law-Scholars.pdf

  21. B May 28, 2019 2:56 pm

    “Even though Bilski opens the “process” category somewhat and widens what might be thought patent-eligible, it casts no doubt on the proposition in Cochrane v Deener that if a process characterised by a sequence of defined steps is transformative, then the claimed subject-matter is patent-eligible.”

    Cochrane v Deener is pre-1952. However, a transformation is great evidence of a process. That said, I take issue with your “somewhat” language. The term “process” takes it’s ordinary, contemporary meaning, and if you can write a method claim with at least one operation, then “process” is satisfied.

    s101 was always meant to be broad, and the drafters never expected the SCOTUS to make any exceptions. One cannot claim a law of nature b/c the law of nature is anticipated. One cannot claim an abstract idea (in the original sense b/f Alice/Mayo) because 112(a),(b), and (f) prevent it. One cannot claim a motivation b/c a motivation isn’t within the four statutory categories.

    I understand and appreciate your position, but the reality is that we have a judiciary that has gone nuts. Total barking at the moon bat guano crazy.

  22. Paul Cole May 28, 2019 6:18 pm

    @ B

    Many thanks for drawing my attention to the brief in the American Axle case which was quite outstanding.

    However, the patent in issue in American Axle suffered from problems of over-general claims coupled with lack of supporting disclosure or a worked example which in this case might well have been needed. The case was summarised in Patent Docs, and I made some disapproving comments at that time. I also listened to some, but not all, of the recent oral argument, and the concerns just mentioned were picked up by the CAFC judges. It will be very interesting to see how the decision comes out.

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