Tuesday, April 3rd, 2012
Supreme Court Prometheus decision on diagnostic method patent claims turns 101 on its head
- Erring on the side of caution, the Supreme Court turns 35 U.S.C. 101 on its head in Prometheus; opening the door for courts to decide questions of fact in diagnostic method patent claims
On March 20, 2012, in the much anticipated diagnostic method patent claims case of Mayo v. Prometheus, the Supreme Court struck down diagnostic method claims as unpatentable subject matter under 35 U.S.C. 101. The claims recited a “correlation” between metabolite levels and likely harm or ineffectiveness of thiopurine drugs to treat autoimmune diseases. The claims also required an (1) an “administering” step—administering a drug to a subject; (2) a “determining” step—determining the level of 6-thioguanine in the subject ; and (3) a “wherein” step—describing the need to increase or decrease the amount of the drug based upon the level of the 6-thioguanine concentrations in the blood.
That the Court found the “correlation” step to be a law of nature is not surprising. On the other hand, the Court’s analysis involving the remaining steps of the diagnostic method patent claims, which applied this law of nature, is not only surprising but may arguably have turned the law of 35 U.S. C. 101 subject matter patentability on its head. The Court held that the remaining recited elements of “determining,” and “administrating,” and the “wherein” recitation are “well known in the art” and so added nothing to the claims for purposes of subject matter patentability. Slip. Op. 11 Thus, the Court held that the claims preempt the law of nature “correlation” and so are unpatentable subject matter. Id.
It is hornbook patent law that questions of fact are questions for the jury to decide. By deciding Prometheus on the basis that the recited elements that are applying the “correlation” are “well known in the art,” the Court in effect has introduced a question of fact into the 35 U.S. C. 101 analysis. In addition, the Court has left it to the courts to decide this question of fact; thereby empowering the courts to decide questions which are typically the province of the jury to decide. On both counts, the Court’s precedent in Prometheus flies in the face of hornbook patent law on 35 U.S.C. 101, which is historically decided as a question of law.
The Prometheus decision may have been a knee-jerk reaction by the Court to the perceived wrong of upholding diagnostic method patent claims that are “well known in the art,” and the analysis by the Court may have been the best way the Court could think of to strike down those claims and right that wrong. Yet the 35 U.S.C. 101 question of the subject matter patentability of the claims arguably could have been limited to an analysis focusing on whether the claims recite any man made application of — in this case, of a law a nature — under the sun that is not an insignificant extra-solution activity; even if the man-made application is “well known in the art.”
Those Prometheus claims could arguably have been invalidated in a later proceeding by the lower court with the jury deciding whether the claims are “well known,” that is, anticipated or obvious, under 35 U.S. C. 102, 103. For now though, Prometheus stands as the law of the land on questions to be decided under 35 U.S. C. 101 involving claims reciting a law of nature, and arguably claims reciting a natural phenomenon or an abstract idea by extension. Until overruled by the Court or Congressional legislation, the take-away from Prometheus for practitioners is that at least one recitation that is not an extra-solution activity that is crafted into a claim must apply a recited law of nature in a way that that the recited application is not “well known in the art.”
We continue to believe that the “physical” or “virtual” links test provides a viable solution to the Court’s continuing struggle in dealing with subject matter questions that are close to the boundary line that defines what is subject matter patentable. If a law of nature, a fundamental principle, or an abstract idea (the three judicially created exceptions to subject matter patentability) is recited in the claims, the “physical” or “virtual” links test on the claim as a whole will help ensure that these recitations are significant and are being “applied” through man-made “physical or virtual links” or “manipulations” of something physical or tangible to move the application beyond a preemption. Absent the “physical” or “virtual” links, the claims preempt the law of nature, the fundamental principle, or the abstract idea. For more on this approach to claim drafting go to Physical and Virtual Links.
Nonetheless, with the unintended consequences of the Court’s Prometheus decision, we also recommend our clients and colleagues to pay close attention to the significant recitations in the claims that apply the law of nature, the fundamental principle, and the abstract idea. Each practitioner crafting claims should play the role of a trier of fact in deciding whether these recitations are “well known in the art.”
Hopefully, going forward, the law on 35 U.S.C. 101 will evolve in a way that will one day return the subject matter patentability question to a question of law; leaving questions of facts to the jury to decide under 35, U.S.C. 102 and 103, where the Court’s analysis in Prometheus arguably more properly belongs.
The Juhasz Law Firm can help you to better understand the effect of Prometheus on your patents. Your patents may be your most important asset. For more information regarding this cases and advice on how these decisions may affect your patents, and to help protect your patents, contact Juhasz Law, the firm committed to Guiding Your Patent Beyond The Horizon (sm).
Tuesday, February 21st, 2012
- Split Dealertrack Court sinks abstract clearinghouse method claims reciting a “computer aided method”; but “means-plus-function” claim helps keep other software patent alive for another day[1]
The patent community continues to seek clarification on the post-Bilski boundary. The Dealertrack v Huber case gets us a little closer.
In Dealertrack, the Federal Circuit provides one more new post-Bilski precedent on what constitutes patentable subject matter; this time in connection with software patents. On January 20, 2012, in a split decision, the Federal Circuit affirmed the invalidity of software patent claims because they preempted a general concept. The two patents before the court U.S. Patent No. 7,181,427 (“’427 Patent”) and U.S. Patent No. 6,587,841 (“’841 Patent”) were directed to a computer aided use of a clearinghouse specifically for car loan applications.
The ‘427 pre-empted the abstract idea of a clearinghouse, the court held, because the term “computer” did nothing more than the general computer in Benson, one of the trilogy of cases relied upon by the Supreme Court in its Bilski decision. Slip Op. 36
Unlike in its predecessor Ultramercial decision where “the patent claimed [a computer having] a practical application with concrete steps requiring an extensive computer interface,” the claimed computer in Dealertrack was neither a specific computer nor was involved in the method claims, the court explained. Ibid. The recited computer amounted to an extra-solution activity that is not meaningful in the subject matter patentability analysis. Ibid.
With the general computer removed from the subject matter patentability equation, the court found only the restriction of the clearinghouse process to a “car loan” field of use recited in the claims to be of any consequence in the Bilski analysis. Slip Op. 37 But like the recited computer, the “car loan” field of use restriction was nothing more than an extra-solution activity that, like the recited computer, was not meaningful in the subject matter patentability analysis, the court said. Ibid. The court found the limitation in the claim of restricting the general clearinghouse method to car loans in Dealertrack to be no different than the limitation in Bilski of restricting the general method of hedging to the energy market. Ibid. When the claims were stripped of the limitations to a “computer” and the “car loans” field of use restriction, all that remained were claims that recited a general concept; the preemption of which is prohibited and hence is not subject matter patentable under the Bilski precedent. Slip Op. 35
Just as important for what the Dealertrack court said about the ‘427 patent claims is what the court said about the claims of the ‘841 patent some of which were written in means-plus-function format and which arguably for that reason dodged the Bilski bullet.[2][3][4] As noted by the court, the application-specific algorithms described in the specification and incorporated into the means-plus-function recitation of the ‘841 patent made those ‘means-plus-function’ claims specific computers. “[I]n a means-plus-function claim ‘in which the disclosed structure is a computer, or microprocessor, programmed to carry out an algorithm, the corresponding] structure is not the general purpose computer, but rather the special purpose computer programmed to perform the disclosed algorithm,” the court explained. Slip. Op. 25 In contrast, the “computer” recited in the ‘427 patent was without the structure of the algorithmic limitations found in the specification. As a general purpose computer that carried no weight in the subject matter patentability analysis, the ‘427 claims amounted to no more than the preemption of the clearinghouse abstraction, the court held. Slip Op. 36.
Hence, claiming software using means-plus-function language may provide one way to protect the software patent against a Bilski challenge since it can make a computer recited in a claim, “application specific,” as compared to a general purpose computer that may carry little weight in the Bilski analysis. Another may be to draft the claim so that one or more of the recited limitations physically or virtually links the data manipulated by the software to a physical or tangible object. This approach is what we at Juhasz Law have suggested as the test for accurately defining the boundary line beyond which a business, software, or diagnostic method preempts a fundamental idea. By using the physical or virtual links argument, your claims may also be written much broader than by using means-plus-function language, since you are not limiting the claims to the specification but are allowing the claim to cover any uses to which the claimed invention may be put. For more on this approach to claim drafting go to Physical and Virtual Links.
The Juhasz Law Firm can help you to better understand the effect of Dealertrack on your software patents. For more information regarding these cases and advice on how these decisions may affect your patents, please contact The Juhasz Law Firm. Your patents may be your most important asset. To help you protect your patents contact Juhasz Law, the firm committed to Guiding Your Patent Beyond The Horizon℠.
[1] Means-plus-function claim 12 of the ‘841 patent survived to live another day. Means-plus-function claims 14, 16, 17 of the ‘841 patent, that were before the court on a summary judgment of noninfringement, were invalidated on other grounds, i.e., indefiniteness. Slip Op. 29 Claims 7-9 of the ‘841 patent, before the court on a summary judgment of noninfringement, were apparently never brought before the court on Bilski patentable subject matter grounds despite reciting “computer processor” limitations arguably analogous to claims 1, 3, and 4 of the ‘427 patent, which were invalidated by the court under Bilski. The ‘427 patent recited (a) “a computer aided method,” which the lower court did not define, (b) a “remote application entry and display device,” which the court construed to mean “any device, e.g., personal computer or dumb terminal, remote from the central processor, for application entry and display,” and (c) “terminal devices” which the court construed to mean “any device, e.g., personal computer or dumb terminal, located at a logical or physical terminus of the system. Slip op. 32
[2] See footnote 2, supra.
[3] The comments of the court in connection with construing the claims in the ‘841 patent that were written in means-plus-function format provides some insight into some differences between an application specific computer and a general computer that may be useful in a Bilski analysis. Interestingly, the remaining claims of the ‘841 patent before the court, namely, claims 7-9, recite “computer processor” limitations arguably analogous to the “general computer” limitations recited in claims 1, 3, and 4 of the ‘427 patent, which were invalidated by the court under Bilski. The issue of claims 7-9 of the ‘841 patent under Bilski were not before the court because the appeal of these claims were limited to a summary judgment of noninfringement.
[4] The lower court’s construction of the term “communications medium” was reversed as an improper carve-out of the internet. Slip Op. 16 The lower court’s construction of the term “routing” was affirmed. Slip Op. 21 The lower court’s construction of the term “selectively forwarding” was affirmed. Slip Op. 22 The lower court’s construction of the term “central processing means operably coupled to said communications medium, for executing a computer program which implements and controls credit application processing and routing” was reversed. Slip Op, 28
Monday, November 7th, 2011
Juhasz Law Files Amicus Brief in Prometheus; Provides the U.S. Supreme Court With “Physical” and “Virtual” Links Approach to Subject Matter Patentability
The Juhasz Law Firm has filed an amicus brief in Mayo Collaborative Services v. Prometheus Laboratories, Inc. The filing brings before the Supreme Court for the first time the argument of “physical” and “virtual” links, a framework for considering the subject matter patentability of an invention. In Prometheus, this determination will be made in connection with diagnostic method patents involving “observed correlations.”
The amicus brief was filed on Tuesday, November 1, 2011 and the U.S. Supreme Court is scheduled to hear oral arguments on December 7. A highly anticipated decision, Prometheus is likely to have significant affect on how the courts approach diagnostic methods patents, including methods critical to the development of personalized medicine.
The “physical link” and “virtual link” patent claim approach was developed by Juhasz Law to help patent holders find a way out of the Bilski conundrum by defining the boundary line beyond which a claim preempts a fundamental principle (i.e., a law of nature, natural phenomenon, or an abstract idea) and within which the claim does not.
Under this approach, the clue to 35 U.S.C. §101 subject matter patentability lies in whether steps that are central to the claim (i.e., not token extra-solution activity) have a “physical” or “virtual” link to a specific physical or tangible object. In support, Juhasz Law cites U.S. Supreme Court precedent in Diamond v. Diehr for the “physical links” assertion and the century-old O’Reilly v. Morse decision for its “virtual links” contention, two of the bedrock cases decided by the Supreme Court in this area of the law. Amicus Juhasz Law argues that the Prometheus claims have both a “physical” and a “virtual” link and so should be subject matter patentable under 35 U.S.C. §101.
While prior considerations of Bilski have referenced the fifth claim of Morse, this argument breaks new ground by focusing on data that is a representation of a physical or tangible object and its manipulation, thus creating a “virtual” link. There is also a symmetry that exists between a “virtual” link (e.g., data manipulating data representing a physical or tangible object) and a “physical” link (e.g., data manipulating a physical or tangible object), such as of the kind that existed in Diehr (e.g., data signaling a device when to open the molding press and remove the cured rubber product) that adds further weight to the argument.
For a copy of Juhasz Law’s amicus filing with the U.S. Supreme Court go to Publications Page.
The Juhasz Law Firm helps patent holders better understand the value of their intellectual property. For more information about “physical” and “virtual” links and how this approach can help patents withstand a post-Bilski challenge, read Virtual Links.
