Posts Tagged: "patent eligibility"

Rader: “I come from the commercial law area where to tell the CEO that “well I’m going to have to balance several factors and ask three courts over a period three years whether or not you can have this product enter the market” is simply an inadequate response. In the commercial area we have to have a predictable, yes or I will use the B word — a Bright line rule. Now, that’s lead to kind of this culture clash where the Supreme Court says there needs to be more balancing and flexibility. The formalism of the Federal Circuit is uncomfortable to [the Supreme Court]. But that’s a function of our legal culture. I think perhaps the answer is the Federal Circuit needs to gain a little bit more flexibility from its experience with the Supreme Court, but I hope the Supreme Court also recognizes that the Federal Circuit is reaching its decisions for well considered reasons.”

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

One side in the “gene patent war” has nevertheless convinced the Supreme Court to weigh in on the issue of whether DNA sequences derived from the human genome are patentable, in Association for Molecular Pathology (AMP) v. Myriad Genetics, while disingenuously labeling the patents at issue as “human gene patents.” Let’s set the record straight.

As Myriad has correctly pointed out in its brief in opposition to the grant of certiorari, the question posed by the ACLU/PubPat (“Are Human Genes Patentable”) is absolutely the wrong one to answer: “The first question presented [by the ACLU/PubPat] bears no relation to the uncontroverted facts of this case.” (Myriad’s brief in opposition has also pointed out at least 4 other significant factual and legal “misstatements” made in the petition for certiorari by ACLU/PubPat.) As much as the ACLU/PubPat (and others) want to make the Myriad case into about “Who Owns You,” what Myriad has claimed does nothing of the sort. In fact, a “yes” answer to the question posed by the ACLU/PubPat does not automatically lead to Myriad’s claimed “isolated” DNA sequences being patent-ineligible. Those claimed “isolated” DNA sequences are not “genes” by any standard molecular biology definition of what that term actually means. Instead, and as accurately characterized by Judge Lourie, these claimed “isolated” DNA sequences are “novel biological molecules.”

It is arguable that neither view is beyond criticism and that any emergent legal test as to patent-eligibility demands further development. There is much to commend the majority view that each of §§101, 102, 103 and 112 serves a different purpose and presents different questions and that under §101 only when it is apparent that the claimed subject-matter is a manifestly ineligible abstract idea should that subject-matter be excluded. Significant involvement of a computer in the working of the invention points towards invention.

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

On Thursday, September 20, 2007, the United States Court of Appeals for the Federal Circuit issued two decisions that provoked much debate, and which deserve to be remembered. The first case, In re Comiskey, seemed rather straight forward and certainly not earth shattering. In the other case of the day, In re Nuijten, the Federal Circuit determined that a propagating signal cannot be patented because it is does not qualify as patentable subject matter. Frankly, I think the ruling in Nuijten can be simply summarized by saying that Judges Gajarsa and Moore didn’t understand the technology. Thus, in baseball terminology, on September 20, 2007, the Federal Circuit went 1 for 2, which would put you on a sure path to enshrinement in Cooperstown, but is not what you would hope for when dealing with an area of patent law as fundamentally important as patentable subject matter.

As pointed out astutely by RMail is that the Supreme Court jurisprudence on patent-eligibility under 35 U.S.C. § 101 have primarily involved ex parte prosecution appeals from the USPTO. There are only two instances involving patent litigation I’m aware of where the Supreme Court squarely determined patent-eligibility under 35 U.S.C. § 101: the recent case of Mayo Collaborative Services v. Prometheus Laboratories, Inc. (ruling that the claimed method was patent-ineligible under the “law of nature” doctrine); and the 2001 case of Pioneer Hi-Bred International v. JEM AG Supply (which ruled that sexually reproduced plants qualified as either “manufactures” or “compositions of matter” under 35 U.S.C. § 101). But as RMail correctly observed, no one seems to have pointed out to the Supreme Court this important threshold issue of statutory construction, and statutory limitations on the powers of the federal courts. Accordingly, Prometheus does not bar this Court from issuing a correct ruling in the present adversarial context.

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

The other point that also bears repeating (and quoting) from the majority opinion in the AMP remand is Judge Lourie’s response to the so-called “preemption” question: “Plaintiffs argue here that they are preempted from using the patented DNA molecules. The answer to that concern is that permitting patents on isolated genes does not preempt a law of nature. A composition of matter is not a law of nature. Moreover, as indicated earlier, a limited preemption is inherent in every patent: the right to exclude for a limited period of time.”

The EPO applies what might be referred to as a “subtraction” test for claims containing a mixture of patent-eligible and patent-ineligible features, those features that are patent-ineligible being disregarded and novelty and obviousness under aa. 54 and 56 EPC being evaluated on the basis of the remaining features. Judge Lourie suggested a somewhat similar “subtraction” test here.

In holding the method, system, and media claims of the ‘792 and ‘037 patents to “cover no more than abstract ideas and therefore do no recite patent-eligible subject matter,” Judge Lourie’s opinion trivializes the relevance of computer implementation in these claims. That’s brought out when he later says that the “interchangeability of certain mental processes and basic digital computation” makes the “use of a computer in an otherwise patent-ineligible process for no more than its most basic function” (i.e., making calculations or computations) inadequate “to circumvent the prohibition against patenting abstract ideas and mental processes.” In fact, Judge Lourie went even further by saying that “a computer must be integral to the claimed invention, facilitating the process in a way that a person making calculations or computations could not” to “salvage an otherwise patent-ineligible process,” citing the 2010 case of SiRF Technology, Inc. v. ITC (method for calculating the position of a GPS receiver satisfied the MOT test). In other words, computer implementation of the claimed business method (or system) must be absolutely necessary to its usefulness to satisfy Judge Lourie’s criteria for reaching the patent-eligibility zone.

So maybe the Federal Circuit won’t find “preemption” to be useful in deciding this appeal; we’ll know soon enough. I, for one, can’t make sense of the DOJ’s fixation on “tying up.” In Flook, the Supreme Court made clear that a claim’s patent-eligibility does not turn on the range of uses that are preempted versus those that remain in the public domain. Even in Mayo, the Supreme Court discussed preemption explicitly only as an underlying policy concern, as a justification for an outcome that, to the Court, seemed right and just – not as a test that distinguishes a “law of nature” from a man-made process. By elevating “tying up” to the status of an actual analytical tool, DOJ proposes an unworkable test that fails to distinguish “products of nature” from man-made inventions and leads to absurd outcomes. It asks the Federal Circuit to rely on asserted facts and unstated claim constructions. It requires strained interpretations of leading precedent. It is evasive and avoids the hard work of construing the claims and applying them to the activities believed to be “tied up” – lawyer work that, if undertaken, may or may not show that the preemptive scope of these claims isn’t all it’s trumped up to be.

These polar opposite decisions in CyberSource and Ultramercial illustrate how fractured the Federal Circuit’s patent-eligibility landscape has now become for business methods and systems. The most recent split decision in CLS Bank International v. Alice Corp. Pty. Ltd. where a claimed trading platform for exchanging business obligations survived a validity challenge under 35 U.S.C. § 101 epitomizes this problem. As CLS Bank International unfortunately shows, an objective standard for judging the patent-eligibility of business methods and systems remains elusive, subject to an ever growing “tug-of-war” between the “inclusive” and “restrictive” patent-eligibility factions of the Federal Circuit. In particular, after CLS Bank International, we are no closer to having a judicially accepted definition of what is (or is not) an “abstract idea” when it comes to claiming business methods and systems.