by Dennis Crouch
René Descartes may have been the first expressly identify the physical operation of our universe as “laws of nature” (although published in French) – spelling out specifically his three immutable laws of nature (later serving as Newton’s foundation):
- Each thing, as far as is in its power, always remains in the same state; and that consequently, when it is once moved, it always continues to move” (Pr II 37);
- All movement is, of itself, along straight lines (Pr II 39); and
- A body, upon coming in contact with a stronger one, loses none of its motion; but that, upon coming in contact with a weaker one, it loses as much as it transfers to that weaker body” (Pr II 40).
As the study of these natural laws developed, so did the recognition that they are not immutable laws, but rather fail to actually describe the working of our universe. The third law was the first to fail as the “laws” of conservation of energy and momentum were further developed. The other two laws dropped away with the theory of relativity and quantum mechanics. Although still used today, we recognize that they are only a rough approximation.
In Mayo, the Supreme Court held the following to be a “law of nature”: If the blood-level of 6-TG exceeds exceed about 400 pmol per 8×108 red blood cells, then the administration of the standard dose of thiopurine is likely to produce toxic side effects, whereas a blood level of about 230 pmol per 8×108 red blood cells indicates that the standard dose should be increased. I am betting that this supposed “law” turns out to be incorrect as well.
The question I’m pondering over the next couple of weeks is how the law of patents should treat these incorrect or unproven laws of nature.
Anon, you keep claiming that there is something in 35 U.S.C. § 100(b) that dramatically amends 101 in no way that overrules cases like O’Reilly v. Morse, or extends patentable subject matter into areas that Congress or the Supreme Court had previously not extended. Nothing can be further from the truth.
However, what is it in the statute that changes the existing law as it stood in 1952 in a way that you think is significant?
The “something” is nothing more than what it is (there is NO effort from me to expand anything).
That “something” is the express words of the definition of “process” that negates your attempted portrayal of the word as some type of SUB-category and mere handmaiden of the hard goods categories.
We’ve been over this before Ned and I have patiently explained to you why the direct words mean that your (crabbed) view is simply not correct.
Boundy: Your observation is relevant to “scope of enablement” or “utility,” and at least tangentially relevant to “abstract idea” eligibility, but entirely irrelevant to law of nature subject matter eligibility.
Here was my “observation”:
try starting with Prometheus’ theory of infringement instead. You know, the part where they stated under oath that their claim would be infringed by looking at data obtained by an old method, thinking about the correlation, and doing nothing else. Reemember also that Mayo’s doctors were thinking about other numbers and administering altered doses or not. Sometimes those other numbers fell within the claimed ranges (of course they did because the ranges are enormous).
At the end of the day, it doesn’t matter if what’s being thought about after (or before) the old data gathering step is a “correlation”, an absolute law of nature, or a flying unicorn with purple flippers and three tails. The issue doesn’t change. You can’t protect “new meanings” of old data with a patent claims, and reciting the old data-gathering steps doesn’t help because that’s just a prior art context (one of a zillion different prior art contexts).
The “relevance” of my observation is to help David and people like him get off the rock where “everything is a law of nature and therefore everything is ineligible.” As I noted, you can get off the rock if you read Prometheus v. Mayo as a whole and you try to understand the underlying factual context (including the prior art) instead of taking isolated sentences out of the case and pretending that you were born yesterday.
If you read the case as a whole with a willingness to understand, you can not help but realize that the Supremes are perfectly aware that one can identify a “natural law” underlying every eligible invention because we live in a universe where “natural laws” of one degree of absoluteness or another are responsible for the predictability and utility of every useful, claimable innovation that is part of our objective physical/structural reality or which (in the case of a process) changes that objective physical/structural reality.
The point is that you can not protect such “laws” (or any other abstraction) with patents merely be reciting some prior art (i.e,. “conventional”) context for that “law”. And it’s pretty easy for most people to understand why this rule is necessary. For super mysterious reasons, it’s extremely difficult for a certain class of attorneys deeply invested in expanding what is eligible to understand why this rule is necessary. Bizarrely enough, it’s extremely difficult for some people to grasp this basic stuff even after the experiment was performed with predictably disastrous results for the entire system — results that we’re still in the process of cleaning up. It’s going to take decades to clean it up, in fact, because the problem (or similar manifestations of it) is still percolating in various fields where junky ineligible patents are still routinely granted.
Here’s a little thought problem for David and his blinkered cohorts: look at the paperweight on your desk. Let’s say I “discover” that where you put your paperweight (quadrant 1, 2, 3 or 4) is correlated with some likelihood that you’re going to get cancer of the face. New and non-obvious and useful because, hey, cancer of the face is terrible. I file my application and get my claim to a method of putting a paperweight on a desk in a certain quadrant and thinking about the correlation. I send you the patent, or you hear about it in the news. Now you know about the correlation and, if you’ve got a paperweight, you’re infringing. My lawyer will be calling you to discuss how to avoid meeting me in Federal Court.
Nobody outside of the patent system would fail to recognize or admit the ridiculous problems that would flow should this sort of scenario be permitted to play out. Likewise, nobody outside the patent system would make ridiculous statements about “nothing is eligible after Prometheus”.
In short, everyone can see what’s going on. Including David Boundy. Like David, I’m a patent attorney and I’ve been watching this issue closely for many many years. Unlike David, I’m not afraid to discuss the facts and the issues plainly. There was no need for nuance in Prometheus v. Mayo because what needed to happen was for the hammer to come down on this absurd and logically unworkable proposition that you can’t look at the prior art when assessing the eligibility of a patent claim.
I only discussed “law of nature” subject matter eligibility. Whether the claim has defects under other statutory requirements is your issue, not mine. Mixing things up only reflects confusion.
Since you didn’t respond to anything I wrote — instead you constructed a weird strawman of your own — I won’t respond either.
David,
Very good points.
Whether the claim has defects under other statutory requirements is your issue, not mine.
Meet David Boundy, folks. He’s a very serious person! Maybe a little silly looking with his head in the sand like that but he feels safe that way. Let’s give him a break. Or not. 😉
you constructed a weird strawman
No, David. As I pointed out very plainly, the “strawman” are these attacks on the Prometheus decision based on silly constructions of the term “law of nature” that serve only to create confusion and miss the entire point of both the opinion and subject matter eligibility generally.
Yours is a widely played game, David. I’ve been watching for a long time. As I mentioned immediately, Dennis could do a much better job of educating his readers about the issues but for whatever reason (probably because he has some strange attraction to “good” software patents, whatever those are) he frequently gets pulled into the abyss of elephants when 101 comes up. None of this stuff is very difficult once you put down the kool-aid and start from a principle other than “any innovation that minimizes cancer must be eligible” or “any innovation that makes me proud of my new phone is eligible.”
Boundy: you didn’t respond to anything I wrote
I quoted what you wrote and responded directly to that. You wrote that “[MM’s observation] is … entirely irrelevant to law of nature subject matter eligibility.”
That’s false. And I explained why. I explained why because it’s extremely important to understand not only that your statement was wrong but why your statement was wrong. If you have questions about my explanation, than ask them. I fully expect your “strawman” to show up quickly when that happens but go ahead and surprise me.
As may be fitting, Google celebrates the birthday of Max Born today.
The listed quotes from Mr. Born may be taken in context of various discussions here:
“The belief that there is only one truth, and that oneself is in possession of it, is the root of all evil in the world.
I am now convinced that theoretical physics is actually philosophy.
Intellect distinguishes between the possible and the impossible; reason distinguishes between the sensible and the senseless. Even the possible can be senseless.”
“It is indeed. But the actual pill is a composition of matter, and nobody, anywhere, is proposing that the composition is not eligible.”
Martin,
Actually, following the “logic” in your article “Subject Matter Eligibility in the Information Age” you would suggest many composition of matter should not be eligible. For example in your article you state:
“For patentability, an abstract idea means an invention where the improvement over the prior art is merely claimed at the level of an idea, rather than as a realized invention, which means that the analysis turns on extrinsic factors such as the state of the prior art, the dimensions of knowledge available to persons having ordinary skill in the pertinent art, and the substantive real-world meanings of the specification and claims at the time of invention.”
In many cases new compositions of matter are claimed using a Kekule structure which is a mere abstract representation of the actual compound, and, therefore, by your logic, many chemical compounds have for decades been claimed as “abstract ideas” that should not be patent eligible.
link to chem.ucla.edu
Believe it or not, real chemical compounds do not have little lines in them connecting the atoms to each other, they have orbitals that overlap. Furthermore, a “double” bond, two s orbitals from two different atoms overlap each other and two lobes of two p-orbitals overlap from the two atoms overlap each other:
link to en.wikipedia.org
So the representation of two lines connecting two atoms in a double bond in a Kekule structure is a very “abstract representation” indeed since it represents a bond in which there are 3! (not 2) overlapping pairs of orbitals.
The Alice decision is both lawless and a complete mess rendered by arrogant and technologically and scientifically ignorant justices, who, in a rational world, would be impeached for making such a lawless decision.
Rational the infringement comes from assembling those atoms- they remain compositions of matter. The infringement does not occur when one draws them. Are you suggesting that technical diagrams are patent eligible at this time?
The graf you excerpted is contrasting patentability from eligibility- something you seem to be complaining about as lawless to conflate.
Martin;
Your statement:
“For patentability, an abstract idea means an invention where the improvement over the prior art is merely claimed at the level of an idea,”
By your “definition” a new composition that is claimed using a Kekule structure is an “abstract idea” because it is “claimed at the level of an idea”.
What I am illustrating is that at some level, ALL claims, even compositions of matter, are claimed “at the level of an idea”, that the nature of patent claims which used words, mathematical formulas, chemical formula’s etc. to describe machines, compositions and processes that happen in the real world.
Therefore, disqualifying a claimed process as being patent ineligible because the claim claims an invention at the level “abstract idea” is a nonsensical reason for deciding that a claim is patent ineligible. You’re effectively determining a claim for a process is patent ineligible because it is a patent claim for a process.
ARP,
Martin’s attempts are flawed because he works from a desired Ends and tries to insert “philosophy” to support his desires without appreciating the terrain upon which he does battle.
He lacks mooring to the legal concepts that he desires to “set up” to fit his views.
He does not understand that utility – ALL utility – is viewed from the “human as consumer” viewpoint, and (woefully) attempts to portray some information as being “consumed” by machines, and thus “ok” (even if “more malleable”).
His “claimed at the level of…” is merely one more hand-waving from him on patent fundamentals. He keeps on “waving around” his paper, but his paper contains so many errors as to serve only as a limitation – not a foundation for further development.
Anon,
Thanks. I understand your comments about Martin and his paper. Sadly, your statements: “he works from a desired Ends and tries to insert “philosophy” to support his desires without appreciating the terrain upon which he does battle” and “He lacks mooring to the legal concepts that he desires to ‘set up’ to fit his views” pretty much apply to each of the Supreme Court justices with respect to their 35 USC 101 decisions, with changing “he” to “she” for the female justices.
As you probably know, until the Supreme Court decision in Alice made “abstract” and “idea” “dirty words” in patent law, it had long been understood that all patent claims cover ideas at some level of abstraction. For example, as I’ve illustrated, even chemical claims, by using chemical structures to represent molecules claiming ideas at a level of abstraction, a fact I have not seen addressed by the lawyers and law professors who have stated that Alice is a “good decision.”
Because of their failure to appreciate how patent claims work, when the Supreme Court justices tried to achieve their “desired end” of making claims they didn’t like such as: business method claims, software-related claims and computer technology claims unpatentable, the justices created a lawless test unmoored from the statute that has not only made the claims they don’t like patent ineligible, but has even allowed the PTAB to decide, citing the Supreme Court’s decision in Alice for support, that an MRI machine, i.e., a machine”, is an “abstract idea’ and therefore “patent ineligible”.
link to ipwatchdog.com
That’s where we are now in U.S. Patent System, thanks to the lawless decision by the U.S. Supreme Court in Alice v. CLS Bank.
It is with sad irony that I concur – and offer that your comments do not encompass ALL the errors with which the Court (in all its “Supreme-ness”) has stumbled through.
“Patent profanity” is all too real. This “abstract concept” merely “abstracts up” as a category of ills induced by the courts.
“that all patent claims cover ideas at some level of abstraction” Not only is that true, but patent applications themselves demand a section labeled “Abstract” [yes, a bit of pedantic word play].
But a bit less pedantic, we (the royal “We”) have had conversations on these boards on what the “Ladders of Abstraction” mean, and your point of “all claims” can easily be seen to be true for ANY patent of any worth. There may well be exceptions at the edges, wherein an excessively detailed “picture claim” in a singular “objective physical description” may be made, but certainly these are exceptions that prove the rule. As is often the case here on this blog, this fact of the patent world attracts a fair number of anti-patentists that “demand” that only claims written in the (optional) singular objective physical structure sense “merit” patent eligibility (or that there are somehow always ONLY two rungs on any ladder of abstraction).
But to add to the “woes” that the Court brings, note as well as the point you present, the fact of the matter is that the Court – to reach ITS desired Ends – engages in a conjectural, forward looking guess as to what may happen if its own law-writing is not “followed.” Any such future “may” does not reach a state of present “case or controversy” which provides a ground basis (read that as proper limit) on the judicial power itself.
Further note that Congress has already delegated the entity to which gets to decide what the invention is “directed to.” Hint: it is not the Court. For the Court to turn around and RE-direct what it is that is being “directed to” (because they may “feel” that they “know it when they see it”) steps over the limits of their proscribed role.
Note as well that the Court’s pronouncements simply have become irreconcilable with themselves. You note at 4.1.5.1.2.2.3
(as reflected by Mr. Quinn) that “Mayo has overruled Diehr” – and yet the Court expressly stated otherwise. With all due respect to all parties, one cannot “overrule” when one is saying expressly that one is NOT “overruling.” The takeaway then remains singular: that the Court is spouting unsupportable (irreconcilable) nonsense.
The emperor truly is not wearing any clothes.
Or with another analogy, the bath water and the baby have both been thrown out.
Anon,
“But to add to the “woes” that the Court brings, note as well as the point you present, the fact of the matter is that the Court – to reach ITS desired Ends – engages in a conjectural, forward looking guess as to what may happen if its own law-writing is not “followed.” Any such future “may” does not reach a state of present “case or controversy” which provides a ground basis (read that as proper limit) on the judicial power itself.”
What the Court did was even worse than what you have described. The Supreme Court not only engaged “in a conjectural, forward looking guess as to what may happen if its own law-writing is not ‘followed.'” It’s supposed basis for justifying “in a conjectural, forward looking guess as to what may happen if its own law-writing is not ‘followed'” was erroneous.
To justify their rewriting of 35 USC 101, the Court stated “We have described the concern that drives this exclusionary principle as one of pre-emption. See, e.g., Bilski, supra, at 611–612 (upholding the patent “would pre-empt use of this approach in all fields, and would effectively grant a monopoly over an abstract idea”).”
But the Court’s concern about future “pre-emption” ignores the fact that 35 USC 102, 35 USC 103 and 35 USC 112 exist in part to prevent such potential “pre-emption”. As a matter of statutory interpretation, it was also improper for the Supreme Court to not at least discuss why 35 USC 102, 35 USC 103 and 35 USC 112 were inadequate to address the Supreme Court’s fears of future “pre-emption.”
As long as we are playing this “and it is even worse” game, let’s take your post here in reply to mine and add the fact that the only thing that claims DO – the thing that claims, ALL claims, are MEANT TO DO is:
pre-empt.
That very “pre-emption” IS at the heart of the shared exchange between two parties in the Quid Pro Quo.
IF the Court is “really concerned” with the scope of what is being pre-empted, the place for addressing that is NOT with 35 USC 101, but instead is within 35 USC 112.
Lordy what a pretentious potluck of banal writing. Where in the patent law does it suggest that a district court should not determine what an invention is ‘directed to’.
Oh, that’s an unwritten result of the usual canons of statutory interpretation? That was in the mind of the actors of ’52?
Please….
…and let me take a step back and add to your comment of:
“but has even allowed the PTAB to decide, citing the Supreme Court’s decision in Alice for support, that an MRI machine, i.e., a machine”, is an “abstract idea’ and therefore “patent ineligible”.
Which in reply to Martin’s insufficient and thus incorrect reply of “Rational the infringement comes from assembling those atoms- they remain compositions of matter.”
in that not only are avowed machines (and improvements thereof) being deemed “Abstract” by the courts following what the Court did in Alice, but that the Court IN Alice deemed claims that were not even at issue as to passing the statutory category test of 101 (being machines) – and should be noted as passing the utility requirement of 101, which was not at issue – as both sides to the matter before the Court stipulated to the fact that some of the claims were machines.
Martin’s “premise” does not even address the case that he derives his premise for.
Rational, the point of executing a process is to produce a result. If you patent a new process to make a composition of matter, nobody infringes your patent when they think about the process, describe it, draw it, etc. They infringe when they use the process to make something of economic value.
Of course every process is abstract when described with words. Everything described with words is abstract, because words are symbols. The infringement is not abstract because there is a pill to swallow at the end. How difficult is that to understand?
Meanwhile, if the valuable result is an item of information, the value will be realized by the use of that information toward some immediate purpose. That information result remains 100% abstract.
Meanwhile “described at the level of an idea” is some admixture of 102/103 and 112 where you just don’t have an invention in hand. Sometimes its not quite non-obvious enough, or not quite indefinite enough, or done before in some senses (i.e. “do it on a computer”) where none of the three are enough, but all of them are. That’s why eligibility happens at at least two levels- a course subject matter filter and a finer relationship of the subject matter to the novelty it claims- IOW, patentability.
Martin – see my added post above.
(Martin, you also appear to be falling to the Ned Heller fallacy that “process” is a handmaiden of the hard goods categories. That is just not so.)
anon, but I rely on authority. You rely on your say so.
I rely on plain logic: a process without a result cannot be a “process”. The concept of a result is the sine qua non of a process.
My point is that if the result is a) non-physical and b) informational than a simple test is at hand to determine patentable abstraction.
“Process” need not mean hard goods, but it cannot mean any result under the sun is subject to patenting.
Ned,
Is the “authority” you rely upon, i.e. the Supreme Court’s technologically and scientifically illiterate and lawless decisions relating to patent eligibility under 35 USC 101?
That “authority” has helped damage the U.S. patent system sufficiently that the U.S. “now ranks 10th, tied with Hungary, in terms of patent rights according to the U.S. Chamber of Commerce’s 2017 IP Index:
link to ipwatchdog.com
Also, as noted in the above-linked article, China which now leads the world patent application files, seems to be going in the opposite direction from direction proposed the all-wise(?) authority you rely upon:
“Late in 2016, China announced revised patent examination guidelines which relaxed barriers to patents for software and business method technologies and those revised guidelines went into effect this April. This July, SIPO announced new regulations which created streamlined processes for the examination of patent applications in certain fields including Internet, big data and cloud computing.”
So do you think the “authority” you rely upon is produced by people who are”smarter” than the Chinese officials who are embracing the patenting of software and business method technologies?
A Rational, ? You need to get a grip.
Process means Art, and Art was in the original statutes. Thus process means what Art meant back in 1790 together with any additional clarifications provided by the Supreme Court since.
What Art meant back in the day was the way things were made as opposed to the thing themselves. The Statute of Monopolies had limited patentable subject matter to new manufactures. However the case law had extended the scope of patentable subject matter to include processes for making manufactures.
Congress never changed the basic fundamental patent statute in any fundamental way since 1790, with the sole exception of 1793 that added “new” and “composition,” therefore there is no fundamental change in all that time.
If you read Curtis, you will get a better understanding of what those at the time understood Art to mean.
A rational, but the patent was on the process, to wit, “burning the raw ashes previous to their being dissolved and boiled in water,” in the overall process of making both Pearl and Pot ash.
It is interesting that the very first patent used the term “process” and not “Art.” I think that is because the British uniformly used the term process and not Art. The British practice prevailed in the United States.
Of course, “discovery” was then in the statute, as it was in the Constitution. But the scope of the claim is not to the discovery in isolation, but only to a process for carrying into effect the principal of the discovery. The process of making Pearl and pot ash were both known. The improvement was specific – burning the raw ashes in a furnace prior their being dissolved in boiling water. The overall process was thereby improved.
There is nothing remarkable in this. The claim clearly passes Alice.
Ned states:
Process means Art, and Art was in the original statutes. Thus process means what Art meant back in 1790 together with any additional clarifications provided by the Supreme Court since.
But Ned has NEVER engaged in a conversation about what Congress did in the Act of 1952 vis a vis 35 USC 100(b).
It is NO accident that Ned refuses to engage in the actual controlling law – actual controlling law that does NOT support what he wants the law to be.
(he also does not reflect upon 35 USC 100(a) – but that point as already been put on the table for discussion, awaiting Ned’s engagement, sitting there all alone and forlorn.)
Another problem with focusing so much on what was meant by various terms in the 1790 law is what the people of 1790 understood about science and technology. For example, on of the reason that early patents involving chemistry focused on the processes of making materials was the fact that the science of “chemistry” as we know it today, largely did not exist in 1790, i.e., no Periodical Table, no understanding of chemical structure. An inventors may have known the ingredients he mixed together and the steps he performed, but he did not know a lot about the chemical structure of the what his process produced.
For example, Antoine Lavoisier’s Traité élémentaire de chimie (Elementary Treatise of Chemistry), the first chemistry textbook, was first translated into English in 1790.
link to en.wikipedia.org
But even Lavoisier only knew 33 elements and could only group them into gases, metals, nonmetals and earths. Mendeleev did not create his table of elements until the 1860s.
link to en.wikipedia.org
Kekulé developed his theory of chemical structure in the 1850s.
link to en.wikipedia.org
So what people understood about “processes” and “compositions” by even the 1860s was vastly different than what people understood about “processes” and “compositions” in 1790.
So whether the “words” of the law of 1790 or 1793 changed or not from 1790 to 1952, what people understood those words to mean did change, even during the 19th century.
It is true that science has changed vastly since the 19th century, the most important figures in this change being James Clark Maxwell, Ernst Mach, Georg Ferdinand Ludwig Philipp Cantor, Albert Einstein, Erwin Rudolf Josef Alexander Schrödinger, and Werner Karl Heisenberg.
Yet the way we think about knowledge has changed much less since the 18th century. SCOTUS’ view of knowledge has not changed at all since the 18th century, but the justices today are much less familiar with the primary souces on the theory of knowledge than earlier jurists were.
That is a good thing because the scientists of approximately 50 years in the future will marvel that the scientists of the early 21st century had so many misconceptions.
Keep in mind that the scientists of the 1930s thought they were developing a true understanding unlike all the misconceptions of scientists 100 years earlier.
Note that this song was composed in 1934.
link to youtube.com
Anon,
It’s not as if 35 USC 101 used expansive and inclusive language such as:
Whoever invents or discovers any new and useful process . . .
or any new and useful improvement thereof . . . .
Oh wait a minute, 35 USC 101 did use such expansive and inclusive language. Who knew?
Also given that cash registers, tabulators, i.e., machines that did not produce much in the way of “hard goods, etc. were long held to be “patent eligible” as being “useful” it seems pretty inconsistent to hold the methods practiced by these machines as being “patent ineligible” and “not useful.”
Something else that gets left out of most discussions of 35 USC 101 is what most patent professionals thought one of its purposes was for decades, i.e., to distinguish what was “patentable” from what was “copyrightable.” Note how the language of what is copyrightable under 17 USC 102 appears to exclude things, such as an “idea” or a “discovery”, that were generally regarded as being patentable, prior to the Supreme Court’s decision in Alice:
link to bitlaw.com
§102 SUBJECT MATTER OF COPYRIGHT: IN GENERAL
(a) Copyright protection subsists, in accordance with this title, in original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device. Works of authorship include the following categories:
. . .
(b) In no case does copyright protection for an original work of authorship extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work.
Ned,
I’m looking at what was actually claimed in US Patent X1 back in 1790 which effectively claims a process as a “Discovery” of a law of nature, i.e., the inventor’s discovery that “burning the raw ashes prior to dissolving and boiling the ashes in water provides a better yield of potash and pearl ash
“These are therefore in pursuance of the Act, entituled “An Act to promote the Progreſs of useful Arts”, to grant to the said Samuel Hopkins, his Heirs, Administrators and Aſsigns, for the Term of fourteen Years, the sole and exclusive Right and Liberty of using, and vending to others the said Discovery, of burning the raw Ashes previous to their being diſsolved and boiled in Water, according to the true Intent and Meaning, of the Act aforesaid.”
link to en.wikisource.org
“There is nothing remarkable in this. The claim clearly passes Alice.”
By may not pass Mayo:
The method “merely” applies a discovered “natural law” that “burning the raw ashes in a furnace prior their being dissolved in boiling water” improves yield. Burning, dissolving in water, boiling, etc. were conventional steps. so once you eliminate the convention steps, all you have is the application of a natural law, which is patent ineligible under the reasoning of Mayo.
A rational, while burning things might have been conventional, burning things at a particular point in a particular process is what is being claimed in the 1790 patent and what the patent is covering. There is no possible way that one can believe that Supreme Court in Mayo would have held this patent to be ineligible.
What the courts are looking for is simple: a new or improved manufacture – where manufacture it is understood to mean machines, manufactures, compositions and processes. There is little doubt that the claim in the 1790 patent improved a conventional process. There is little doubt that the claims in Mayo did not.
According to Ned, “manufacture” means “processes”
WTF?
Processes were patentable as manufactures under English common law.
“as manufactures”
You did not stutter.
I understood exactly what you wrote – but what you wrote is bizarro and is simply NOT in accord with the law as written by Congress.
Although this is slightly off topic, I personally think that laws of nature should be given some sort of intellectual property protection that is extended to all device that use or are based on that discovery.
As for the argument that that may impede research and development, change the laws to expressly exclude research and development from the gamut of activities for which one can sue for infringement. It is not a perfect solution, but I like it better than the current state of affairs (similar to what others have said in this Blog, so what, if all the claim says is “apply it”?).
David, but the constitution? Patents could only be given to inventors.
See 35 USC 100(a).
This is not a new point presented to you Ned.
A bit of a tangent, but Ned, you may be interested in the “inventorship/ownership” aspects of a case being reported at the PatentDocs (involving the university associated with Prof. Crouch):
link to patentdocs.org
Interestingly, note the State-by-State permutations that may be generated with “and explained that ‘[t]o the extent that Mr. Suppes is arguing that the contract is void as a matter of public policy, that is once again a matter of state contract law.’“
anon, we discussed this case some time ago.
change the laws
Go for it. Be sure to have some good arguments, too.
The real flaw in the Supreme Court’s analysis is before step one: 6-thioguanine is a man-made chemotherapy drug. It’s thermodynamically unreachable by natural forces. While, conceivably, I imagine that single molecules could have formed spontaneously, there has never been a measurable quantity of 6-thioguanine extant in nature, never in the history of the universe.
There are no “laws of nature” involving 6-thioguanine.
Of course the mechanism described in Prometheus’ patent works by natural processes. All functional inventions work by natural processes. The exceptions, inventions that work by supernatural processes, are too unpredictable to satisfy the “utility” requirement.
The problem with Mayo v. Prometheus is that if this is a “law of nature,” then everything is a law of nature.
Do you remember the World War II dub-over comedy clip posted on this blog after the Mayo decision?
One secretary to another in the hallway as Der Fuhrer rants on: “Don’t worry, business methods are not laws of nature.”
Because modern judges misapply the terms “abstract idea” or “concept” from misremembered elementary school grammar instead of using comprehensible epistemological terms from at least the early modern thinkers like DESCARTES, Locke, Hume, or Kant, no one should be surprised that they use “law of nature” when “natural phenomenon” is meant.
We should also distinguish between φρόνησις and τέχνη, but most people don’t know Aristotle or master classical philosophic Greek.
Everything is natural phenomenon. Structures like a human being evolve or develop in accord with the laws of nature and because of them. A human being is a natural phenomenon.
If a human being creates an invention, he creates it in accord with the laws of nature and because of them.
Thus any human invention is itself a natural phenomenon.
I believe I can map SCOTUS’ 101 guidance into a rational epistemological framework that can be used as the introduction to a brief or to a memorandum and from which winning arguments can be made.
I will try to do that sometime next week.
(This effort is something new to me. I usually write technology memos that lawyers then apply to their cases. I apologize beforehand if the result is somewhat deficient.)
I hope anon consults Plato’s Parable of the Cave before he tells me once again that 35 USC 101 is purely a matter of law.
BTW, I apologize for the duplicate image, but it is important to emphasize how silly the 101 eligibility discussion has become.
Joachim —
As you’ve framed it, this line might be interesting to a philosopher, but it won’t be enlightening in the legal framework. Any useful discussion of any topic has to start by each discussant taking on the frame of reasoning and discourse of the relevant field.
I think what we all understood before Myriad and Mayo was that the “law of nature” exception was the inverse of “anything under the sun made by man.” In the patent law, at least for section 101 purposes, humans are not “nature.”
Now of course, any human invention can only work if it works with nature.
For instance, swinging a hammer at a nail only drives the nail because of the natural repulsion forces between all the atoms of iron. But the nail and the hammer are each formed with human intervention or action, and that human intervention is what brings the hammer and nail as eligible subject matter.
THIS:
“ Any useful discussion of any topic has to start by each discussant taking on the frame of reasoning and discourse of the relevant field.”
is exactly what I mean Joachim when I chided you about over-indulging in philosophy at the expense of 35 USC 101 being a legal point.
Your background is somewhat unique and you have a certain way of seeing things that may indeed be helpful – if you can translate them into the legal venue (as opposed to trying to translate the legal venue into being one of a philosophical venue).
This is not something that is a “matter of philosophy” as much as it is a “matter of law.”
So yes, my earlier chiding of you in regards to 35 USC 101 remains (with or without Plato’s Parable of the Cave).
I understand this point, but I have also read the early decisions with respect to “abstract idea” doctrine. Some of them address the modern patent law usage of indefiniteness, but other times they are implicitly assuming the epistemological framework(s) of Descartes, Locke, and Hume — not so much Kant, who was later and written in German.
As the Courts have wandered away from early modern epistemology (as philosophy became less studied among Americans), the law of eligibility has become gradually more incoherent and possibly logically inconsistent.
I understand that patent laws treat humans as distinct from nature. I apologize for lack of clarity. I did not mean to direct people to the issue of the human being but to the Aristotelian distinction between τέχνη or mere workmanship (the guy with the hammer) and φρόνησις or intellectual creation as Aristotle used the term philosophically.
Both are natural phenomena but not laws of nature.
Moreover the creation of structure can be either natural like a mitochondrion or human like for example the Jacquard loom wherewith modern programmed computation starts in 1804.
If I presume to think momentarily for Kant, Kant would describe the mitochondrion as prior synthetic knowledge (ineligible under 101) and the Jacquard loom as posterior synthetic knowledge (eligible under 101 as long as it is novel).
Here is where US 101 eligibility law becomes incoherent because modern Americans including lawyers and judges don’t know Plato, Aristotle, Descartes, Locke, Hume, or Kant.
Now I don’t understand why I shouldn’t use early modern epistemology to clarify 101 issues as I use science and engineering to clarify 102, 103, and 112 issues. 101 eligibility is fundamentally an issue of classifying knowledge or combinations thereof. This issue belongs to epistemology.
In any case, by going back to the foundational decisions of “abstract idea” doctrine — I hate this usage of the phrase “abstract idea”, I believe I can create exemplary rationales (both legally and also epistemologically acceptable) for 101 eligibility as exist for 112 obviousness.
BTW, understanding the necessary epistemology is no harder than understanding basic biology, biochemistry, mechanics, pharmacology, electromagnetism, solid state physics, civil engineering, mechanical engineering, electronic engineering, software engineering, automotive engineering, aerospace engineering, or medical engineering. Patent lawyers and patent agents work in all these technological arts.
I always keep in mind that no one I have taught understood some fairly complex graph theoretic concepts faster than a lawyer, who did not specialize in technological IP and had background in neither math, the sciences, nor engineering.
Now I don’t understand why I shouldn’t use early modern epistemology to clarify 101 issues as I use science and engineering to clarify 102, 103, and 112 issues. 101 eligibility is fundamentally an issue of classifying knowledge or combinations thereof. This issue belongs to epistemology.
The answer to your question lies in the contrast between two parts of the rules of the game, the postulates that define our domain of discourse —
— on issues of fact, the things we think of as “natural science” are relevant.
— on issues of law, none of Plato, Aristotle, Descartes, Locke, Hume, or Kant ever had a seat on the Supreme Court or Federal Circuit. They’re interesting commentators, but at the end of the day, don’t mean much in this domain.
Joachim, to play, you’ve gotta play on the right turf. None of us have the power to reinvent the practice of law.
I was thinking that you were going to reply exactly in this way about issues of fact and issues of law.
The question of 101 eligibility is mostly an issue of fact (“How do we classify knowledge?” like “How do we classify species?”) and not an issue of law.
Treating 101 eligibility as a matter of law creates chaos.
I know that English-speaking lawyers probably don’t think of philosophical questions as matter of fact, but such is exactly what they are in questions of knowing and perception. Such questions have been addressed by practically all natural philosophers (nowadays we call them scientists) from Aristotle to Hawking, Penrose, or Witten today.
We have an accidental problem in English because the word knowledge (Wissen in German) derives from Anglo-Saxon while science (Wissenschaft in German) derives from Latin scientia.
In Latin scire is knowing (like Wissen, which is also an infinitive) while scientia is science.
Thus in Latin and German science and knowledge or knowing are self-evidently related paronyms, and questions of fact.
All the great physicists since Schrödinger and Heisenberg have struggled mightily with the nature of knowledge and of perception as matters of fact. Mapping quantum physics results onto classically perceived phenomena was particularly unnerving to many physicists of the early 20th century.
To make the point clearer that classifying knowledge is a matter of fact, I focus on claiming analytic formulas.
As I read the decisions, I have the impression that SCOTUS holds invalid a claim that is no more the computerization of a pencil and paper calculation.
In other words a 101-eligible claim may not be directed solely to an analytic formula for solving a problem that is effectively calculable, but if the metes and bounds of a claim define a combination of knowledge that intrinsically combines significant novel posterior synthetic knowledge, that claim is 101-eligible.
Here are the relevant decisions.
Gottschalk v. Benson, 409 U.S. 63 (1972)
Diamond v. Diehr, 450 U.S. 175 (1981)
Bilski v. Kappos, 561 U.S. 593 (2010)
Alice Corp. v. CLS Bank International, 573 U.S. __, 134 S. Ct. 2347 (2014)
Mathematics (issue of fact) gives me a formalism for addressing and deciding effective calculability.
Yet it probably is not a good idea for judges, lawyers, or jurors to deal directly with effective calculability or the lambda calculus.
Effective calculability proven consequentially in a mathematical framework is pure analytic knowledge and a matter of fact.
While enablement for a PHOSITA is matter of law, written description including possession is a matter of fact.
Early jurists tend not to distinguish eligibility from clarity of written description and definiteness of claims because for said jurists, these issues were all matters of fact.
Epistemology especially Kant gives us a handy shorthand to discuss classifying knowledge as a matter of fact so that judges can give juries simple easily understood instructions on which they may make factual determinations.
Here is how the decision process could work.
[I may be fuzzy on some of the trial aspect. While I have provided expert consulting in infringement cases since 2006, I have never been to one of the trials.]
1. Claim construction is a matter of law. The Judge may allow a Markman pre-trial hearing.
2. After claim construction, I believe the judge decides enablement as a matter of law.
3. Then the Plaintiff and Defendant present arguments about disputed facts relative to invalidity.
[#4 is the modification for which I see a need.]
4. What types of knowledge the metes and bounds of each claim encompass: prior, posterior, analytic, or synthetic, and how intrinsic the knowledge combination is. I think this could be handled by a questionnaire.
5. Anticipation. I think this is completely a matter of fact.
3. Factual issues of obviousness. I think this can be handled by a questionnaire.
4. Clarity and conciseness of the written description (including possession). I think this is completely a yea or nay factual determination.
5. Definiteness of each claim and whether each embodiment claimed actually has support in the specification. Sometimes a biotech or pharmacological claim encompasses many more embodiments than are actually enabled. This question was also an issue of Lizardtech, Inc. v. Earth Res. Mapping, Inc., 424 F.3d 1336 (Fed. Cir. October 4, 2005).
6. Then the Judge decides matters of law that require Jury input on facts.
7. If the Judge has not ended the trial on the basis of matters of law, then the actual question of infringement is tried.
8. The Jury comes to a verdict.
9. Then the Judge decides whether there is any clear error that requires JMOL, which differs from the Jury verdict.
10. The sentencing phase.
“The question of 101 eligibility is mostly an issue of fact (“How do we classify knowledge?” like “How do we classify species?”) and not an issue of law.”
Not even close.
I meant to say that as with obviousness determination eligibility determination may require investigation of issues of fact that prevent summary judgment as a matter of law.
Both the question of effective calculability and the question of protocol versus algorithm seem to be questions of fact.
I think the judges were correct in the following cases, but I am not sure whether it should have been addressed (implicitly) as a matter of law by the judge.
Gottschalk v. Benson, 409 U. S. 63, 67 (1972)
Diamond v. Diehr, 450 U.S. 175 (1981)
Alice Corp. Pty. Ltd. v. CLS Bank Intern., 134 S. Ct. 2347
Bilski v. Kappos, 561 U.S. 593 (2010)
In re Alappat, 33 F.3d 1526 (Fed. Cir. 1994)
Cal. Inst. of Tech. v. Hughes Communs., Inc., United States District Court for the Central District of California, Western Division, November 3, 2014, Decided; November 3, 2014, Filed, Case No. 2:13-cv-07245-MRP-JEM
I am not so sure that the CAFC is correct in the case of DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (F. Cir. 2014), in which I believe there is a genuine issue of fact that should be argued before a jury, and I have to admit that I might be able to be persuaded one way or the other (despite what I wrote and which the USPTO added to its website).
link to uspto.gov
BTW, I know that I could write a claim to an algorithm that looked so much like a claim to protocol that it would be hard to dismiss the claim as ineligible without some factual investigation and maybe arguments before a jury.
When you get a seat on the Supreme Court and get four other people to agree with you, then you can change the rules.
Until then, sorry, I’m putting you in the no response box with anon and mm. You’re more interesting and courteous than those two, but as disconnected from practicality. No value to continuing the discussion.
Nice knowin’ ya.
“Until then, sorry, I’m putting you in the no response box with anon and mm.”
With all due respect, Bite Me.
I “get” that you are following the (rather odd – and singularly so) precepts of the the attorney code of the Commonwealth of Massachusetts and treating a certain branch of the government as “a client” and NOT holding them accountable under the checks and balances that a true understanding of the triumvirate system of government demands (each – and every – branch subservient to the Constitution), but your choice of “dismissal” is in NO WAY aligned with what is – or what may be – “disconnected from practicality.”
Abdication (your way) is simply no defense for following the ethical guidelines most every other state imposes on attorneys.
Of course, you are free to engage (or not) whenever you “feel” like it – but to be so in error on your preachiness only makes you come across as an arse.
What you deem as “value” is not nearly as limited as you would proclaim. Plenty of value in seeing exactly what makes you run away from an otherwise entirely cogent legal position You say more than you might think that you do in choosing which matters NOT to engage in – and why (and ‘courtesy’ is NOT the only factor, so your only too-broad brush of lumping me with Malcolm is evidence against you).
When someone says “with all due respect”, respect is invariably the last thing intended.
In any case, even if Boundy is being rude, there is no obvious reason to reciprocate. He is nationally respected for his expertise in Administrative Law, and I certainly don’t know enough (yet) to throw rocks.
I think I may be misexplaining myself. I am not advocating adding epistemology to the law. I am advocating creating a hearing in which epistomologists, many if not most of whom are physicists or mathematicians or occasionally biologists can provide evidence with respect to eligibility.
I hate watching the train wreck that is destroying the US Patent System.
Gene Quinn seems to be aghast that eligibility can be decided without an evidentiary hearing. See More software patent eligible, Federal Circuit says lip synchronization not abstract.
Unfortunately, while the Markman hearing was probably helpful, the CAFC probably ruled incorrectly according to SCOTUS’ Alice/Mayo two-step test because no evidence for or against eligibility was offered in District Court.
The first step to fixing the problem of presenting evidence for or against eligibility seems to cost relatively little effort and amounts to the submission of a proposal to the Judicial Conference by lawyers and judges of substantial stature.
I must add in order to emphasize the need for such an eligibility hearing that Enfish v. Microsoft is probably correct but for the wrong reason.
The decision says the following.
The claim encompassed an improvement to the database data structure and not a specific improvement to the way computers operate — a tremendous difference, but there was no expert report or evidence that addressed the issue and that was provided to the CAFC.
DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (F. Cir. 2014) is also probably incorrect according to SCOTUS’ Alice/Mayo two step test. With an eligibility hearing, there would have been much less possibility of error.
Ned Heller’s proposal to remove the PTAB from the USPTO and to make the APJs into ALJs under the authority of district court magistrates seems good, but I think it would take a legislative act and approval by the President — much harder than creating an eligibility hearing in district court.
As for the Kantian matrix, it’s a very convenient way to summarize the evidence so that the District Court judge can apply the Alice/May two step test,
More to David’s (continued point – as an offshoot of my own):
“101 eligibility is fundamentally an issue of classifying knowledge or combinations thereof. This issue belongs to epistemology.”
No.
You are again trying to play on the wrong ball field.
I “get” that you find the tools that you know would be “helpful,” but you are trying to change the law domain into being a philosophy domain – and that is just not correct.
I realize now that mono-lingual speakers of contemporary English may have a problem in identifying matters of fact that stray into areas of philosophy beyond natural philosophy (nowadays called science).
The period 1750-1850 was transitional when “science” replaced “natural philosophy.”
From link to etymonline.com
From late 14c. in English as “book-learning,” also “a particular branch of knowledge or of learning;” also “skillfulness, cleverness; craftiness.” From c. 1400 as “experiential knowledge;” also “a skill, handicraft; a trade.” From late 14c. as “collective human knowledge” (especially that gained by systematic observation, experiment, and reasoning). Modern (restricted) sense of “body of regular or methodical observations or propositions concerning a particular subject or speculation” is attested from 1725; in 17c.-18c. this concept commonly was called philosophy. Sense of “non-arts studies” is attested from 1670s.
A side note that may amuse David Boundy, who I believe has offices in Cambridge, MA. Andrew Gleason, who taught Math 55 when I took it, held the Hollis Professorship of Mathematicks and Natural Philosophy.
If I am not mistaken, the Hollis Professor had the right to pasture a cow on the Cambridge Common. In the Boston area, public parks are often called commons.
David,
Thank you for pointing this out. As I’ve said elsewhere downthread, Mayo v. Prometheus was a lawless interpretation of 35 USC 101 based on ignorance of the Supreme Court justices with respect to science, U.S. patent law and the history of patents in the U.S.
It is to the eternal shame of any attorney who has ever written an article supporting the Supreme Court’s decision in Mayo v. Prometheus to have ignored the fact that “There are no “laws of nature” involving 6-thioguanine.”
Dave, what the Court specifically said in Mayo v. Prometheus is copied below after their earlier in the case suggesting that administering that particular drug was not new:
“While it takes a human action (the administration of a thiopurine drug) to trigger a manifestation of this relation in a particular person, the relation itself exists in principle apart from any human action. The relation is a consequence of the ways in which thiopurine compounds are metabolized by the body – entirely natural processes. And so a patent that simply describes that relation sets forth a natural law. “
SCOTUS should have written, “And so a patent that simply describes that relation sets forth a NATURAL PHENOMENON.”
This continual confusion between “natural phenomenon” and “natural law” tells us that SCOTUS is possibly unconsciously following the framework(s) of early modern epistemologists, who in Kant’s language would have described a “natural law” and a “natural phenomenon” as prior knowledge.
BTW, nowadays we describe Descartes as a philosopher, mathematician and scientist. Descartes would have used one term to describe himself. That term would have been philosophe or philosopher.
SCOTUS should have written, “And so a patent that simply describes that relation sets forth a NATURAL PHENOMENON.”
You’re right.
But it doesn’t make any difference. As I recall, the case uses other phrases (e.g., “correlation”) more frequently than the term “natural law” to describe what is being protected by Prometheus’ junk patent.
This rule is never going to change, by the way. That’s something that both you and David Boundy need to come to terms with.
I guess MM did not catch that David Boundy and I have opposite opinions on the Prometheus’ patent. I don’t know about David, but I have done medical research and studied treatments.
A claim to a method whose steps encompass no more than
1. detecting a natural phenomenon (X) by known means (Y),
2. inferring the patient state (Z) on the basis of results and standard knowledge, and
3. applying a known standard treatment (T) that is appropriate according to the known standard knowledge of the patient state (Z)
may have defined the metes and bounds of a new invention when the centaur Chiron taught medicine to Asklepios and Greek doctors stopped doing witch doctor dances, but today substituting for X, Y, Z, and T is completely mechanical (derivable analytically or from the principles of medicine).
Because SCOTUS recognizes that 103 does not deny the inventor a claim under KSR, SCOTUS uses 101 to deny the claim.
Should a patent claim be granted for a completely mechanical procedure of medical science? If you think so, you might have to work for a legislative or maybe even a constitutional change.
That image was wrong.
Paul,
6-thioguanine, as David Boundy points out, is a synthetic drug.
So, as David points out” “The problem with Mayo v. Prometheus is that if this is a ‘law of nature,’ then everything is a law of nature.
Of course the mechanism described in Prometheus’ patent works by natural processes. All functional inventions work by natural processes. The exceptions, inventions that work by supernatural processes, are too unpredictable to satisfy the “utility” requirement.”
I don’t think you can provide a single example of a chemical or biological process claim in any issued patent that is not an application of a “law of nature” based on the strict reasoning of Prometheus.
Paul —
I know they said that. It’s ignorant gibberish. Almost all inventions work on the principle that “human sets up a desired configuration, and then allows nature to carry out the rest.” What else is there?
The reaction of a nail to being pounded by a hammer is a “relation [that] itself exists in principle apart from any human action.” Diamond v Diehr’s press was a “relation [that] itself exists in principle apart from any human action.”
While I agree with your point here David, you sound very much like those that you would chastise as being ” disconnected from practicality.”
So what if the Royal Nine “ they said that. It’s ignorant gibberish“….? Of what use is your posting anything in disagreeing with them? [irony intended]
Since when did you “get a seat on the Supreme Court and get four other people to agree with you“…?
Please, do try to be a little less two-faced on the topic of the Supreme Court and what they do with patent law.
Anon —
I’m not trying to upend the entire structure of legal inquiry in the United States (the “meta rules” if you will). Just trying to get the rules themselves back on track, while leaving the meta rules alone.
Correcting one (well, four) poorly reasoned decisions is doable (after all, Diamond v Diehr reversed Parker v. Flook and Gottschalk v. Benson). Replacing the entire reasoning framework, as Joachim suggests, is not.
But, if you’re the same anon, we’ve been down this road before. Your lack of understanding of legal reasoning in the U.S. is also flawed–flawed in a different way than Joachim’s, but flawed. And I won’t get sucked into trying again to help you understand. The wikipedia article on “common law” is pretty good.
LOL – gee, my reasoning is flawed – or so you say – just as I correctly point out other things that you won’t touch (after my correcting you – for example, the fact that Void for Vagueness is not limited to matters of criminal law)
You will have to excuse me if I do not take your word on your attempts to EITHER “correct me” or that my reasoning is flawed.