Saturday, March 31, 2012

Mayo v. Prome (Noteworthy Commentaries)

(Left & Right barbed wire images will jump you Back & Forward in section numbers)

a) Mayo v. Prometheus (blogs, last 24 hours): here

b) Mayo v. Prometheus (blogs, past week): here

More recent noteworthy's are on top of the list:

nn) --Title-- ((Mock Title )) (author m-dd-2012)

17) --Life Will Find a Way-- ((Or Myriad goes for the Madness)) (by Kevin E. Noonan May 30, 2012)

16) --DNA Sequence [is] a Law of Nature?-- ((Or How I learned to stop thinking harder and embraced the Duh)) (by Alison Keeley May 30, 2012)

15) --WildTangent v. Ultramercial - Supreme Court Rejects-- (Robert Moll 5-21-2012)

14) --Supreme Court to Federal Circuit: Fix Ultramerical Decision-- (Julie Samuels 5-22-2012)

13) --Mayo v. Prometheus -- (Anne Barschall 5-26-2012)

12) --The wrong Rat-- (by: Paul Cole 5-06-2012)

11) --Supreme Error-- (Burdick Law 4-15-2012)

10) Mayo v. Prometheus – Some Observations and Opinions (Ryan Alley 3-23-2012)

8) Supreme Court's Ruling against Prometheus Shakes Up Personalized Medicine

7) Mayo v. Prometheus: A looming ‘disaster’ for tech transfer?

6) Three Weeks Later: Attack of the Mayo Zombies (Patently-O)

1. Punishing Prometheus: Part III - Conclusions Masquerading as Analysis

2. “Law of Nature” Bars the Patentability of Determining the Adequate Dosage of a Drug

3. The Prometheus meteorite impacts here (SmartGene v. ABL decision)

4. SmartGenes or Technical-Ignorance Genes? You decide: here

5. Crunched Tech Head (Patent Law 101: What’s Wrong And Ways To Make It Right)

Friday, March 23, 2012

Genuinely Insignificant Thoughts from Genuinely Insignificant Minds (cont'd)

Prometheus Pic

SubTitle: Mayo v. Prometheus or How I stopped worrying and learned to love the Idiocracy)

(The above first link is to all things Mayo v. Promo (a Google search). This following link: here provides the decision in HTML accessible format as opposed to PDF format here: Mayo v. Promo. Left click on image at right to see list of Briefs filed before the US Supreme Court.) Click on summary bullet number to jump to section.

Not-BIO -DH Pic

Not Here Pic

It is the patriotic duty of an informed public to loudly protest when a governmental body, even the US Supreme Court, comes out with a Stinko-da-Mayo result such as this one.

Overview: Sadly, what this post will show is that:

• 1. The US SCt does not know, or intentionally misinforms on what a "patent" is (patents are not self executing monopolies),
• 2. The US SCt does not know, or intentionally misinforms on what function a "patent claim" is supposed to perform,
• 3. The US SCt does not know, or intentionally misinforms on what a "method step" is,
• 4. The US SCt does not know, or intentionally misinforms on what a "Law of Nature" is
• 5. ... (to be continued/updated)

(Left & Right barbed wire images will jump you Back & Forward in section numbers)

Why even care?
Because soon they will be hanging a new BANNER,
draped across the entrance to the SCt. Building:
(Not To Be Invented Or Discovered Here)

Bleed Finger Pic Indeed, a claim for "Barbed Wire" recites nothing more than Laws of Nature:

1) A ductile metal bent into shape retains its shape
2) If you bump into a sharp point, you will bleed

American inventors are being slowly bled to death by one unkind SCt. cut and then a thousand more like it: Benson, Bilski, Prometheus, ... and what is next?

Perhaps a blog post that sums up the situation most succinctly (for patent experts) is Patent Doc's lament: "We have met our 'Benson' and its name is 'Mayo' " (paraphrased). For more Patent Doc laments, see here

__________________________ Detailed analysis:

In the "Legal Universe", when the US Supreme court speaks, its words trump the very "Laws of Nature".

On the other hand, in the more humble world of "Science" (should you even be so lame brained as to believe in that most-obvious of "hoaxes" /sarcasm),

(1) Mother Nature always bats last,

(2) always bats first and

(3) is at bat throughout the almost-endless baseball game.

In that game, she often moves in a way that blocks scientists from seeing exactly how (or getting to understand exactly how) Mother Nature bats.

If lucky, they get a glimpse of the ball's trajectory after Nature has cracked her bat against it.

Then they go at it by making up stories, rules, abstract theories about what they think Mother was doing, how she was doing it and what she will do if confronted in the future with similar inputs. (The last part is called predictive modeling --calling the ball's trajectory even before Mother Nature bats its out of the ball park).

Mother doesn't care one owl's hoot about what the scientists' abstract theories say.

She does her thing irrespective of the noises the monkeys make amongst themselves.

Mother has no plans of coming down from the mountain top with stone tablets in hand, merely for the sake of proclaiming her "laws" to one tribe of monkeys or another. No one knows if her laws can even be expressed in a manner that the human mind can grasp. That possibility is one that Mother does not fret over.

Stepping boldly forward into this arena there come the "Magnificent Nine" (M9). These 'Wisdom-spewing' lords and ladies arrive gowned in black robes and steeped in learned chanting of laws of the 'legalized mind'.

They stare unblinkingly at Mother Nature as she stands in the batter's box. They throw their curve straight at her face, fully expecting Mother to step back and to show some humble deference before the awesome powers of the "Magnificent Nine" (M9). They utter legal-eagle incantations about Her "laws". They fail to see that she steps back not. Their curve balls vaporize into hot air before even coming close to Mother Nature's batting position.

• 1. The US SCt does not know what a "patent" is, One of the findings of the Court is this:

Phenomena of nature, though just discovered, [or] mental processes, [or] abstract intellectual concepts are not patentable, as [these three things] are the basic tools of scientific and technological work.” Gottschalk v. Benson, 409 U. S. 63, 67 (1972). And monopolization of [any of] those [3] tools through the grant of a patent might tend to impede innovation more than it would tend to promote it [thus going against the intent of the Constitution: to promote the progress of science and the useful arts]. [bracketed text added]

Let's stop and think a bit more about the words "grant" and "monopolization".

The US Patent Office "grants" a patent by mailing out a stamped document known as "Letters Patent". Skilled practitioners understand that this is merely a ticket into the court room and little else.

So does the "grant" of a patent equal to the grant of a "monopoly" position in the market place?

No. Because if it were true, then every holder of a patent would have an Insta-gram INJUNCTION in hand by mere operation of law. Here as in many other spots within the Mayo. v. Prometheus (MvP) opinion, the Supreme Court chooses to exercise its prerogative of providing the public with misinformation and engaging in "selective amnesia". That's a pity because the general public expects to receive accurate information from SCt. opinions and expects the SCt. to behave as a rational and consistent decision-making body.

In using the word "monopolization" the Court suggests that every holder of a patent already has achieved exclusive ownership of its patent-covered market space. Did Prometheus Labs have such a by-operation-of-law INJUNCTION in hand?

No. That is why Prometheus was suing in a court of law in the first place. It's "granted" patent did not confer onto Prometheus the mythical Insta-gram INJUNCTION. Patents do not inherently mean possession of automatic INJUNCTIONS. This is so because of action by the same Supreme Court that in Mayo v. Prome pretends as if Insta-gram INJUNCTIONS are the reality. In eBay Inc. v. MercExchange the Supremes ruled that injunctions are not automatic:

According to well-established principles of equity, a plaintiff seeking a permanent injunction must satisfy a four-factor test before a court may grant such relief. A plaintiff must demonstrate: (1) that it has suffered injury; (2) that remedies available at law, such as monetary damages, are inadequate to compensate for that injury; (3) that, considering the balance of hardships between the plaintiff and defendant, a remedy in equity is warranted; and (4) that the public interest would not be disserved by a permanent injunction. ...These familiar principles apply with equal force to disputes arising under the Patent Act.

Therefore, by operation of Supreme Court case law, a patent does not equal "monopolization" and the SCt. does not get it right even as this basic aspect of patent law.

(Later if time permits, we will show that everything is a "phenomenon of nature". That phrase makes no sense. The Court probably meant to say "Naturally occurring" [without the hand of man being in it] phenomenon of nature. In contrast to this, "laws of nature" are actually abstract ideas of man about how man currently believes nature works, and no more than that. Therefore, to argue that "laws of nature" are something apart from "abstract intellectual concepts" is to show that one does not know what one is talking about.)

• 2. The US SCt does not know what function a "patent claim" is supposed to perform, Another thing the MvP decision says is:

If a law of nature is not patentable, then neither is a process [[claim?]] reciting a law of nature, unless that process [[claim?]] has additional features that provide practical assurance that the process [[claim?]] is more than a drafting effort designed to monopolize the law of nature itself.

A patent [claim?], for example,could not simply recite a law of nature and then add the instruction “apply the law.”

Einstein, we assume, could not have patented his famous law by claiming a process [where the process claim is one] consisting of simply telling linear accelerator operators to refer to the law [E=mc^2] to determine how much energy an amount of mass [[inside their accelerator magically]] has produced (or vice versa).

Nor could Archimedes have secured a patent for his famous principle of flotation by claiming a process [where the process claim is one] consisting of simply telling boat builders to refer to that principle [(re displaced volume of water)] in order to determine whether an object will float.

The role of a patent claim is not that of reciting something to an audience with the addition of the obvious, that it should be "applied". Instead its role is specifically set forth in 35 USC 112:

The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.

Under strict (non-judicial-activist) construction of the law it is the inventor (the "applicant") who gets to decide what he regards as being his invention through the way he words HIS CLAIM.
Alas in MvP, the activist Supreme Court changed the rules and decided that, no, they will decide what they regard the invention to be. They will decide what are merely insignificant drafting dodges and which words truly give away the inventor's evil intent to block Mother Nature herself from practicing Her "Laws".

When a patent claim is presented, its words have to be construed (interpreted) in light of the specification and how skilled artisans would appreciate the same.

Still under *construction* ... to be continued

3. The US SCt does not know, or intentionally misinforms on what a "method step" is, ...

(Left & Right barbed wire images will jump you Back & Forward in section numbers)

• 4. The US SCt does not know, or intentionally misinforms on what a "Law of Nature" is ...

(Left & Right barbed wire images will jump you Back & Forward in section numbers)
(Left & Right barbed wire images will jump you Back & Forward in section numbers)

Monday, July 5, 2010

3 x 3 Blind Bilski Justices

Over at the IP WatchDog site, I posted the below irreverent proposal:
  If I were to draw a picture of the 9 U.S. Supreme Court Justices circling the Bilski v. Kappos elephant, I would ...
  place each one outside the 3 point basketball circle relative to the elephant and put a Geiger counter or compass in the hand of each blind Justice whereby each senses the “spin” around the Bilski claims but none of them actually touches and “gets it” directly (by hand or even with a blind man's walking stick).

In this hypothesized cartoon, one Justice would be saying, “My Geiger counter says it ‘feels’ that the Bilski elephant is too “abstract”. I say the physical steps in Bilski were never there to begin with and certainly I don’t see them.”

Another would say
, “My sundial is foreshadowed by an ancient sun and indicates that the Founding Fathers would have frowned on this sort of progress. The business of patents is not business –irrespective of whatever the word “business” might mean”.

A third would say, “My MRI spin machine indicates this creature is an "information" provider like a teacher or a trainer, for example a horse whisperer or an antitrust law lecturer and therefore the creature “explains” the abstract conceptualizations revolving around the hedging thing and nothing more substantive than that.”

A fourth would say, “I hate 4 of you and I don’t care which way my compass needle is pointing. It’s all gobbledygook. But to spite the 4 I hate, I’m going to cast my vote in a direction opposite to my expressed beliefs. So there. Gobbledygook on that one you subhuman foursome.”

And a 5th one would say, “I love you anyway Spartacus and therefore I’m going to pretend I am concurring with you. Come here and give me a big hug.”

Some might think the imagery is mere comic relief.

But perhaps the 9 Justices are indeed without a clue and begging the academic community out there to help with prodding at the beast?

Note the following excerpts from the majority opinion of Bilski v. Kappos:

The United States Court of Appeals for the Federal Circuit [CAFC] heard the case [(In re Bilski)] en banc and affirmed. The case produced five different opinions. Students of patent law would be well advised to study these [5] scholarly opinions.

[Then] Chief Judge Michel wrote the [majority herd] opinion of the [CAFC] court [and] rejected its prior test for determining whether a claimed invention was a patentable “process” under §101—whether it produces a “‘useful, concrete, and tangible result’”—as articulated in State Street

Judge Mayer argued that petitioners’ application was “not eligible for patent protection because it is directed to a method of conducting business.” He urged the adoption of a “technological standard for patentability.”

Judge Rader would have found [as we the majority here find that] petitioners’ claims were an unpatentable abstract idea.

Only [that lone and obviously irrational wolf,] Judge Newman disagreed with the court’s [herd like mentality and] conclusion that petitioners’ application was outside of the reach of §101.

The above passage is a clue.

The SCt Nine are sort of admitting that they do not have the same, a clue; and are instead relying on what the horse whisperers around them are whispering into their ears. The amicus briefs apparently had great effect. Note this passage:

As numerous amicus briefs argue, the machine-or-transformation test [MOTT] would create uncertainty as to the patentability of software, advanced diagnostic medicine techniques, and inventions based on linear programming, data compression, and the manipulation of digital signals. See, e.g., Brief for Business Software Alliance 24– 25; Brief for Biotechnology Industry Organization et al. 14–27; Brief for Boston Patent Law Association 8–15; Brief for Houston Intellectual Property Law Association 17–22; Brief for Dolby Labs., Inc., et al. 9–10.

... Still Under Construction

Link to an older post: What is "software"?

Friday, July 2, 2010

Bilski v. Kappos AISHBO**

** AISHBO = As It Should Have Been Opined

Cite as: 561 U. S. ____ (2010) 1

Opinion of the Court

NOTICE: This opinion is subject to formal revision before publication in the preliminary print of the United States Reports. Readers are requested to notify the Reporter of Decisions, Supreme Court of the United States, Washington, D. C. 20543, of any typographical or other formal errors, in order that corrections may be made before the preliminary print goes to press.


No. 08–964



[June 28, 2010]

JUSTICE Oliver Wendell Holmes, Jr. delivered the opinion of the Court. (Joining with him are: JUSTICES Felix Frankfurter, ... and ...) ... [write up still a work in progress ]

This Court's usual modus operendi is that of seeking out a single question of law upon which to cast our focus and then of providing clarifying guidance thereon.

Regrettably, in this particularly complex patent case, we find ourselves grappling with numerous and interlocked parallel issues, including:
(1) Is there a limit of scope to the term "process" as used in patent law section 35 USC 101 and if so how is the boundary line therefor to be defined?
(2) What procedural process is due for determining what "the invention" is, what its scope is and whether that scope exceeds the boundary line defined under the first question?
(3) For each specific patent claim presented below by Petitioners Bilski and Ward, have the adjudicative bodies below employed a legally appropriate test and procedure such that Petitioners Bilski and Ward may be said to have received due process?


In search for an answer to the first question (1) we invoke basic canons of statutory construction, our long recognized doctrine of judicial restraint and a check for conflict with other Constitutional provisions (e.g., First Amendment).

With regard to textual analysis of 35 USC 101 itself, there is no rational basis for debating existence of numerous unequivocal words within the express language of 35 USC 101. The term "any" has long been recognized as being extremely broad:

  [101 Title:] Inventions patentable.

Whoever invents or discovers
any new and useful
process, machine, manufacture, or composition of matter,
or any new and useful improvement thereof,
may obtain a patent therefor,
subject to the conditions and requirements of this title.

"Process" is an independent and first recited one of four statutorily expressed and co-equal categories. To say otherwise, as attempted by the court below (with the so-called "Machine or Transformation Test", hereafter "MOT Test"), would render as surplus, the terms "process" and "any" in contravention to canons of statutory construction.

It very well may be true that essentially all machines are "manufactures" and they are entirely composed of "compositions of matter". Nonetheless, a claim for an invented "machine" need not recite the specific materials of which the machine is composed nor the shapes and precise dimensions of every article of manufacture that may operate as a functional part in the machine. Thus the invention of a "machine" may be separated from the invention of a "compositions of matter" and invention of a "manufacture".

We are not prepared to say here whether all "manufactures" must be compositions of matter or what textbook of alchemy provides the ultimate Gospel line dividing between matter and non-matter. Those question have not been adjudicated below and judicial restraint mandates that we not pass on such unripe questions here. Theories about the nature of mass, matter and gravity are fabricated by fallible men and oft prove to be short sighted.

We note however, that since there is no need for the second spoken-of "machine" in 35 USC 101 to be specifically tied to another statutory class, the well worn adage about gravy for the goose and sauce for the gander applies to "process".

Process is at least co-equal to machine in the text of 101 if not its superior by virtue of having a term expanding definition in 100(b){reproduced below}. Accordingly, there is no basis for requiring a "process" to be tied to a particular machine or to a specified transformed composition when no such noose hangs about the neck of machine.

Just as a given "machine" may be used for providing new and improved methods not originally contemplated by claim language defining the original machine structure, so too a given "process" may be carried out in improved form by apparatus not originally contemplated by the claim language for the original method. 35 USC 101 mandates this outcome by its language, "or any new and useful improvement thereof".

Because of the symmetric mirror relationship between "machine" and "process", the so-called MOT Test which was invented below simply to support a pre-conceived conclusion cannot stand as the ultimate and exclusive definition of what constitutes any "new and useful" process. Only Congress can add limitations to what otherwise is "any" new and useful "process".

With regard to the term "process" as well as "invention", there is no foundation for asserting that Congress has not broadly defined the terms, "process" and "invention" in 35 USC 100(b), Congress has not left open a door of ambiguity beckoning us to trespass there into by way of activist judicial intervention:

  [100 Title:] Definitions.

When used in this title unless the context otherwise indicates -
(a) The term "invention" means invention or discovery.
(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.

Indeed if we were to substitute into 101 the definition provided by 100(b) the result would be the following:

  [101 Title:] Inventions patentable.

Whoever invents or discovers
any new and useful
[process, art, or method, [or that which] includes a new use of a known process, machine, manufacture, composition of matter, or material] ...
or any new and useful improvement thereof,
may obtain a patent therefor,
subject to the conditions and requirements of this title.

Moreover, there is no denying that Congress has recognized the option available to inventors to file for so-called "business methods" as evidenced by 35 USC 273:

  [273 Title:] Defense to infringement based on earlier inventor

(a) DEFINITIONS.- For purposes of this section-
[(a)](3) the term "method" means a method of doing or conducting business;

(1) IN GENERAL.- It shall be a defense to an action for infringement under section 271 of this title with respect to any subject matter that would otherwise infringe one or more claims for a method [as defined above] in the [lawfully issued] patent being asserted against a person, if such person had, acting in good faith, actually reduced the [business method] subject matter to practice at least 1 year before the effective filing date of such [lawfully issued]patent, and commercially used the subject matter before the effective filing date of such patent. [(textual material in brackets added here)]

Additionally, Congress has expressed recognition in 35 USC 102 of the natural ability and right of any inventor and with respect to "their" private property to conceal it from the public:

  [102 Title:] Conditions for patentability; novelty and loss of right to patent

(g)(1) ... the invention [that previously] was made by such other inventor and not abandoned, suppressed, or concealed [as is a natural right of such other inventor] --emphasis and clarifying text added

The dissent asks us to turn a blind eye to all of these clear enunciations of Congress and to instead engage in judicial activism and to legislate from the bench new rules of patent eligibility in contravention to the spelled out intent of Congress.

Starting with the 1952 Patent Act and through 58 years of follow on legislation, Congress has made it clear that an invention firstly is the private property of its creator.

Congress has also indicated that the act of defining that which is to be regraded as "his invention" (see 112 below) is in the hands of its creator. Definition of "the invention" is particularly set forth in the claims. The latter are construed in light of the inventor-authored specification from which such claims spring forth as an integrally attached part of the specification.

To ignore all this would violate fundamental tenants of separation of power, would upset our long standing doctrine of judicial restraint and would lead to absurd and inconsistent interpretations of statutory language.

The dissent asks us to blur our eyes and to not carefully examine all the words in each claim presented by Bilski and Warsaw but to instead merely pass on the claims as being "abstract". This too is in contravention to the spelled out intent of Congress whereby the scope of exclusivity granted under a patent is defined pursuant to 35 USC 112:

  [112 Title:] SPECIFICATION

The specification shall contain
a written description of the invention,
and of the manner and process of making and using it,
in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected,
to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
The specification shall conclude with one or more claims
particularly pointing out and distinctly claiming
the subject matter which the applicant regards as his invention.

SECTION II: Are there subject areas which are not patent eligible?

Invention in its broadest sense is not anything new under the sun. All persons of competence "invent" on a fairly routine basis. The question is what do they invent, in what subject area? Is their invention a tall tale, or a creative excuse for why they don't have their homework or is it something more useful?

This Court has held in KSR v. Teleflex that there are many inventions which are merely routine outcomes of ordinary market forces and ordinary creativity as well as of common sense and thus do not rise to a level of contribution to the general welfare so as to justify grant of a patent. While that observation comes under the rubric of 35 USC 103 and not 101, it would be hypocritical of us to now say that the act of inventing per se is not an ordinary and routine process (a way of doing something) but rather some mysterious craft whose abstractness can only be understood by a sorcerer and one or two trusted apprentices.

Even at the time of framing of the U.S. Constitution there was no shortage in inventiveness by persons who were fond of telling folktales (e.g., Chaucer's The Canterbury Tales)and contriving all manner of theories (e.g. Lamarck's theory of evolution) and other amusements.

However the Framers observed that there was a particular kind of inventiveness and creativity that was in extreme short supply. This was in a domain that they referred to as the "useful arts". Accordingly, and in spite of their strong abhorrence to granting of monopolies in any manner of endeavor, they nonetheless went out of their way to inscribe into the original U.S. Constitution, in Article I, section 8, clause 8 thereof, the following empowerment:

  [Article I, Section 8, clause 8:]
The Congress shall have Power ... To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.

Legal scholars recognize that the phrase, "To promote the Progress of Science and useful Arts" is but one of many possible reasons that Congress may have for securing to creative persons (authors for example), exclusive rights to their respective works of creativity (works of creative authorship for example). There is no pretense in the U.S. Copyright laws of their existence being justified only for the sake of promoting the progress of science and useful arts. Copyright is available for all affixed and originally authored works of expression that have a modicum of creativity and remain on the non-abstract side of the idea/expression divide. ***

Instead the legislative recognition is that of initial ownership by the creator of his or her work of authorship or inventorship. The creator and exclusive owner of such work is free to destroy such work upon its creation or to suppress and conceal it at his or her whim dictates. An invented creation does not become a ward of the commons at the moment of its conception. This is a fundamental aspect of ownership in personal property. The invention is owned by its creator. Article I, section 8, clause 8 implies essentially this when referring to "their respective Writings and Discoveries". It belongs to them as a matter of natural rights and Constitutional recognition.

A foundational purpose of our U.S. Copyright and Patent laws is to promote the general welfare by encouraging creators of certain kinds of work to share knowledge of their work with the public rather than keeping the same as a trade or other secret even though the latter is equally their right.

With these foundations having been laid out, it is nonetheless also a tenet of our free society that "ideas", once they are released into the public domain as such, should be free to take flight and spread their wings amongst all people so as to be fully debated and appreciated while they retain their essence of being merely abstract ideas.

Freedom of expression of ideas is made sacrosanct in the First Amendment of our Constitution:

  Congress shall make no law respecting an establishment of religion, or prohibiting the free exercise thereof; or abridging the freedom of speech, or of the press; or the right of the people peaceably to assemble, and to petition the Government for a redress of grievances.

Free speech and freedom of press cannot exist without freedom of thought and freedom to express one's abstract ideas (within limits; such as not falsely shouting "fire" in a crowded theater). Some may argue that freedom of religion also involves the expression of abstract ideas. However such a question is outside of our ambit of judicial review.

SECTION II(a): Abstract Ideas in Detail

We have already outlined in Diamond v. Diehr that a patent claim may not wholly preempt communication of "abstract ideas". More to the point, the claims in Diehr included recitation of a mathematical model that was believed then to be an adequate modeling of what occurs in a rubber curing process. ... still under construction

The proceedings below can be characterized as a failure to treat Messieurs Bilski and Ward with dignity deserved by all human beings. Instead there is a cacophony of cat calls and a flailing of the bull's horn in the china shop. To mock men who may be trying to bring forth a new and useful process to the attention of the public is beneath us. We do not here pass on ancillary questions such as whether the claims at bar suffer from over-breadth, but certainly they do not literally preempt any communications about the "idea" of hedging. To infringe on Claim 1 of the Bilski application; which claim has not even issued and could have been amended in prosecution, one must initiate ... Even if done with nothing more than a set of telephone calls, the making of a telephone call is not an abstract step but rather a physical one that deserves recognition for what it truly is. ...

there is still the issue of an idea/expression dichotomy in Copyright law and of an idea versus practical-utility and implementation dichotomy in Patent law. ...

... still under construction

An ancillary question is whether Petitioners Bilski and Warsaw have contributed inventively to the useful arts under terms of 35 USC 101 by being apparently first to disclose and claim a process that is particularly pointed out by claims they have lawfully filed pursuant to 35 USC 111 with the USPTO (United States Patent and Trademark Office, an Administrative Agency within the Department of Commerce).


Thursday, July 1, 2010

In re Bilski: Lone Wolf Newman goes against the pack

In Bilski v. Kappos (6/28/2010), the Supreme Court accused Judge Newman of being the lone and only wolf going against the rest of the pack when reviewing the Fed. Cir. opinion of In re Bilski.

So what horrible and un-herd of things did Fed. Cir Judge Newman say?
Things like this:

The [Fed. Cir. majority today goes out by] redefining the [phrase "ANY new and useful] “process” in the patent statute, to exclude ALL processes that do not transform physical matter or that are not performed by [unspecified particular] machines. The court [majority] thus excludes many of the kinds of inventions that apply today’s electronic and photonic technologies, as well as other processes that handle data and information in novel ways.

Scientists would see this as all quite true. For example a novel light transmitting optical fiber might impart new and useful characteristic to a photonic signal passing through it. However, under the back-to-the-buggy mentality of other judges, such processes are not processes.

Lone wolf Newman also said this:

From the first United States patent act in 1790, the subject matter of the “useful arts” has been stated broadly, lest advance restraints inhibit the unknown future.
The nature of patent-eligible subject matter has received judicial attention over the years, as new issues arose with advances in science and technology. The Supreme Court has consistently confirmed the constitutional and legislative purpose of providing a broadly applicable incentive to commerce and creativity, through this system of limited exclusivity.

And this:

The 1952 Patent Act replaced the word “art” in prior statutes with the word “process,” while the rest of Section 101 was unchanged from earlier statutes. The legislative history for the 1952 Act explained that “art” had been “interpreted by courts to be practically synonymous with process or method.” S. Rep. No. 82-1979 (1952),

In same fashion as later confirmed by the SCt Bilski v. Kappos majority, Judge Newman noted:

The definition of “process” provided at 35 U.S.C. §100(b) is not “unhelpful,” as this court now states, maj. op. at 6 n.3, but rather points up the errors in the court’s new statutory interpretation. Section 100(b) incorporates the prior usage “art” and the term “method,” and places no restriction on the definition.

Tuesday, June 29, 2010

MOT is Apple Sauce

Outgoing Supreme Court Justice Stevens failed to garner a majority in Bilski v. Kappos. (Thank goodness.)

Today's decision was instead authored by a Kennedy-led majority. The majority clung to a mere 16 pages of veiled revelation so as to not lay bare their foggy apprehension about what lay of land lies under the swampy murk of the patent world.

As usual, lay folk will want to know: What does it (the Bilski v. Kappos decision) mean?

Here are some semi-cryptic answers:
1. MOT has been whipped into apple sauce --still good for the gander, but not gravy for the patent-killing goose
2. The concrete sidewalk on State Street is demolished
3. Opaqueness is the new transparency
4. "Invention" is to be divined through the eyes of the beholding judge/ examiner and not in accordance with claims read as a whole
5. As for Bilski himself and poor Yorick, alas we knew them well

Of course, to "make apple sauce" of something means to mash it up, to run it through the blender so that the original is no longer recognizable.
Bilski aficionados know that "MOT" stands for the Machine-Or-Transformation test, This was the eligibility test put forth by the lower US appeal court, the Federal Circuit. (See In re Bilski (Oct. 30, 2008)) as being the "exclusive" and only test for eligibility of a "process" claim under section 101.

The US Supreme Court has today mashed up the Fed. Cir.'s MOT test such that it is no longer usable for knocking down another's patent or application.

Also, Mott's happens to be a brand name of an apple sauce.

To say that MOT is no longer gravy for the patent-killing goose means that although MOT has been de-fanged as a test for knocking down someone's business/ software patent under 35 USC 101, the other edge of the MOT double edged sword remains sharp and wield-able. Patent owners can still use MOT to validate their patent claims under section 101.

This is good news for those seeking patents for methods of doing business and methods using machines that obey "software" commands.

Opaqueness is the new transparency.
What does that mean?
The US Supreme Court today "affirmed" the Fed. Circuit decision.
But in actuality, they reversed it.
Welcome to the new Mis-Information Age where words mean the opposite of what they say. Alice of the Wonderland Mirror would be right proud.

Key Foggy Bottom Quotes (KFB's)

KFB #1:
Petitioners seek to patent both the concept of hedging risk and the application of that concept to energy markets. Under Benson, Flook, and Diehr, however, these are not patentable processes but attempts to patent abstract ideas. Claims 1 and 4 explain the basic concept of hedging and reduce that concept to a mathematical formula. This is an unpatentable abstract idea, just like the algorithms at issue in Benson and Flook.

KFB #2:
Petitioners’ remaining claims ... then instruct the use of well-known random analysis techniques to help establish some of the inputs into the equation. They add even less to the underlying abstract principle than the invention held patent ineligible in Flook. Pp. 12–15.

... Under Construction ...