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Section 101 of the Patent Act defines patentable subject matter. It says (excluding citations):

“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.” 35 U. S. C. §101.

The Court has long held that this provision contains an important implicit exception. “[L]aws of nature, natural phenomena, and abstract ideas” are not patentable. Diamond v. Diehr, ; see also Bilski v. Kappos; Diamond v. Chakrabarty; Le Roy v. Tatham (1853); O’Reilly v. Morse(1854); cf. Neilson v. Harford, Webster’s Patent Cases 295, 371 (1841) (English case discussing same). Thus, the Court has written that “a new mineral discovered in the earth or a new plant found in the wild is not patentable subject matter.

Likewise, Einstein could not patent his celebrated law that E=mc2; nor could Newton have patented the law of gravity. Such discoveries are ‘manifestations of . . . nature, free to all men and reserved exclusively to none.’ ” Chakrabarty (quoting Funk Brothers Seed Co. v. Kalo Inoculant Co.(1948)).

“Phenomena of nature, though just discovered, mental processes, and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work.” Gottschalk v. Benson (1972). And monopolization of those tools through the grant of a patent might tend to impede innovation more than it would tend to promote it.

The Court has recognized, however, that too broad an interpretation of this exclusionary principle could eviscerate patent law. For all inventions at some level embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas.

Thus, in Diehr the Court pointed out that “ ‘a process is not unpatentable simply because it contains a law of nature or a mathematical algorithm.’ ” (quoting Parker v. Flook (1978)). It added that “an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection.” (Diehr). And it emphasized Justice Stone’s similar observation in Mackay Radio & Telegraph Co. v. Radio Corp. of America (1939):

“ ‘While a scientific truth, or the mathematical ex pression of it, is not a patentable invention, a novel and useful structure created with the aid of knowledge of scientific truth may be.’ ” (quoting Mackay Radio). See also Funk Brothers (“If there is to be invention from [a discovery of a law of nature], it must come from the application of the law of nature to a new and useful end”). Still, as the Court has also made clear, to transform an unpatentable law of nature into a patent-eligible application of such a law, one must do more than simply state the law of nature while adding the words “apply it.” See, e.g., Benson.

Even though a phenomenon of nature or mathematical formula may be well known, an inventive application of the principle may be patented. Conversely, the discovery of such a phenomenon cannot support a patent unless there is some other inventive concept in its application.

Here it is absolutely clear that respondent's application contains no claim of patentable invention. The chemical processes involved in catalytic conversion of hydrocarbons are well known, as are the practice of monitoring the chemical process variables, the use of alarm limits to trigger alarms, the notion that alarm limit values must be recomputed and readjusted, and the use of computers for "automatic monitoring-alarming."

Respondent's application simply provides a new and presumably better method for calculating alarm limit values. If we assume that that method was also known, as we must under the reasoning in Morse, then respondent's claim is, in effect, comparable to a claim that the formula 2(pi)r can be usefully applied in determining the circumference of a wheel.

As the Court of Customs and Patent Appeals has explained, "if a claim is directed essentially to a method of calculating, using a mathematical formula, even if the solution is for a specific purpose, the claimed method is nonstatutory." In re Richman (1977).

It is important to emphasize that the Court today is not commenting on the patentability of any particular invention, let alone holding that any of the above-mentioned technologies from the Information Age should or should not receive patent protection.

This Age puts the possibility of innovation in the hands of more people and raises new difficulties for the patent law. With ever more people trying to innovate and thus seeking patent protections for their inventions, the patent law faces a great challenge in striking the balance between protecting inventors and not granting monopolies over procedures that others would discover by independent, creative application of general principles. Nothing in this opinion should be read to take a position on where that balance ought to be struck.

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Regards
Ian Al
Software Patents: It's the disclosed functions in the patent, stupid!

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• tl;dr - Authored by: Anonymous on Tuesday, March 26 2013 @ 09:11 AM EDT

The Supreme Court cabined Diehr very neatly in Mayo:

The Court pointed out that the basic mathematical equation, like a law of nature, was not patentable. But it found the overall process patent eligible because of the way the additional steps of the process integrated the equation into the process as a whole. Those steps included “installing rubber in a press, closing the mold, constantly determining the temperature of the mold, constantly recalculating the appropriate cure time through the use of the formula and a digital computer, and automatically opening the press at the proper time.“ Id., at 187, 101 S.Ct. 1048. It nowhere suggested that all these steps, or at least the combination of those steps, were in context obvious, already in use, or purely conventional. And so the patentees did not “seek to pre-empt the use of [the] equation,” but sought “only to foreclose from others the use of that equation in conjunction with all of the other steps in their claimed process.” Ibid. These other steps apparently added to the formula something that in terms of patent law's objectives had significance—they transformed the process into an inventive application of the formula.

The subtext seems to be that Justice Breyer doesn't really think that constantly monitoring the temperature and opening the press in Diehr really added enough, but it was apparently good enough for the majority in Diehr, and that is all that matters.

Justice Breyer is careful not to ‘dissect the claim’: “And they insist that a process that focuses upon the use of a natural law also contain other elements or a combination of elements, sometimes referred to as an ‘inventive concept,’ sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the natural law itself.” (emphasis added). So the proscription against ‘claim dissection’ in Diehr is still good law.

But there was quite a bit of obiter dicta in Diehr on pages 189 to 191, which Justice Rehnquist was parroting from Judge Rich, establishing the Three Doors doctrine in Supreme Court jurisprudence. Did Justice Breyer mention or analyse this argument in Mayo? Did any justice write separately to discuss these dicta in Diehr, either to support them or to refute them? Well, much further on in Mayo:

Third, the Government argues that virtually any step beyond a statement of a law of nature itself should transform an unpatentable law of nature into a potentially patentable application sufficient to satisfy § 101's demands. Brief for United States as Amicus Curiae. The Government does not necessarily believe that claims that (like the claims before us) extend just minimally beyond a law of nature should receive patents. But in its view, other statutory provisions—those that insist that a claimed process be novel, 35 U.S.C. § 102, that it not be ‘obvious in light of prior art,‘ § 103, and that it be ‘full[y], clear[ly], concise[ly], and exact[ly]’ described, § 112—can perform this screening function. In particular, it argues that these claims likely fail for lack of novelty under § 102.

This approach, however, would make the ‘law of nature’ exception to § 101 patentability a dead letter. The approach is therefore not consistent with prior law. The relevant cases rest their holdings upon section 101, not later sections. Bilski, 561 U.S. ___, 130 S.Ct. 3218, 177 L.Ed.2d 792; Diehr, supra; Flook, supra; Benson, 409 U.S. 63, 93 S.Ct. 253, 34 L.Ed.2d 273. See also H.R.Rep. No. 1923, 82d Cong., 2d Sess., 6 (1952) (‘A person may have 'invented' a machine or a manufacture, which may include anything under the sun that is made by man, but it is not necessarily patentable under section 101 unless the conditions of the title are fulfilled‘ (emphasis added)).

Justice Breyer even had the chutzpah to list Diehr itself in his list of cases!

Thus all those dicta in Diehr about § 101 being purely about whether the claim recited eligible subject-matter were effectively overruled sub silentio! Judge Rich must have been spinning in his grave!

So, now that the Supreme Court in Mayo have framed Diehr as a case where the industrial process added enough, why is Groklaw, instead of taking a hint from the Supreme Court and letting sleeping dogs lie, putting forth a massive discursive diffuse discussion document, full of theory of computation, semiotics and metaphysics, whose only concluding legal argument is to observe that, under Groklaw's proposed text, the invention in Diehr was patent-eligible because the claim cited a referent?

It seems to me that the Supreme Court has moved on from the old metaphysical ‘a programmed computer is a particular machine and thus patent-eligible!’ / ‘software is math and therefore patent-ineligible’ argument that has been aired repeated before, without apparently inducing anyone to change their mind, and I really think that Groklaw would do better to take the hint and move on also. (But of course, Groklaw is PJ's blog, so it is up to her where she takes it.)

How I think, or at least hope, that the Supreme Court will frame the argument, when they finally get a computer-related case properly before them, is as follows: ‘Abstract ideas, abstract intellectual concepts, and methods that can in principle be performed purely in the mind or with pencil and paper are not patentable. In the 21st century, merely implementing such a process on a computer is not enough to confer patentability.’ And if they do this, all those old arguments about the patentability of mathematical algorithms will lose all their relevance.

(And the Supreme Court GVR'ed Wildtangent v. Ultramercial for reconsideration by the Federal Circuit in the light of Mayo, so they certainly recognize the connection between obvious applications of laws of nature and obvious applications of abstract ideas.)

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• Judge Newman (CAFC) will tell you otherwise. Provided film is useful.-n/t - Authored by: macliam on Wednesday, March 27 2013 @ 04:38 AM EDT
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