Subject Matter Flashcards
What is the statutory provision on patentable subject matter?
Section 101: 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.
What are the two groups of Section 101, according to Licthman?
Products and Processes
How long has Section 101 been around?
for over two centuries
What is Section 100?
Defintions: “When used in the [Patent Act] unless the context indicates otherwise:
(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…
What is Diamond v. Chakrabarty about?
Respondent microbiologist filed patent claims for human-made, genetically engineered bacterium that was capable of breaking down multiple components of crude oil. The court affirmed the judgment that allowed respondent’s claims. The court rejected the argument of the patent office board of appeals that 35 U.S.C.S. § 101 was not intended to cover living things such as laboratory created micro-organisms. The court held that respondent’s micro-organism constituted a “manufacture” or a “composition of matter” within the meaning of 35 U.S.C.S. § 101 and thus qualified as patentable subject matter. The court found that respondent had produced a new bacterium with markedly different characteristics from any found in nature and which had the potential for significant utility. The court held that the language of 35 U.S.C.S. § 101 embraced respondent’s invention.
What is the issue in Chakrabarty?
Whether a live, human-made micro-organism is patentable subject matter under 35 U.S.C. $101.
Who is Chakrabarty?
A microbiologist that filed a patent application regarding a microorganism he made that can help with cleaning up oil spills.
What were the three types of claims that Chakrabarty filed?
- Process claims for the method of producing the bacteria
- Claims for an inoculum comprised of a carrier material floating on water, such as straw
- Claims to the bacteria themselves
What was the Patent Office Board’s reason for rejecting Chakrabarty’s third (the relevant one) claim?
That as living things, they are not patentable subject matter under 35 U.S.C. $101
Does the Constitution grant broad or narrow power to legislate to “promote the Progress of Science and useful Arts?
Broad power
What are the three exceptions to patentable subject matter?
- laws of nature
- physical phenomena - products of nature
- abstract ideas - algorithms
Did the court in Chakrabarty consider the mircoorganism to qualify as patentable subject matter? What is the PTO’s line on it?
Yes, it was patentable;
Patent Office: non-naturally occurring, non-human multicellular organisms are patentable subject matter
What was Funk Bro’s about?
Respondent brought a patent infringement claim against petitioner. The infringement claim was limited to respondent’s claim that he provided a mixed culture of Rhizobia capable of inoculating the seeds of plants belonging to several cross-inoculation groups. Petitioner filed a counterclaim asking that the entire patent be adjudged invalid. The United States Supreme Court reversed and found the patent invalid. Respondent’s discovery that certain strains of each species of the bacteria involved could be mixed without harmful effect to the properties of either was a discovery of their qualities of noninhibition. It was not patentable because it was no more than a discovery of the laws of nature. Respondent’s discoveries did not make the bacteria perform in any other way than their natural way. Respondent’s combination of the bacteria was new and useful but lacked the requirements of invention or discovery. Once nature’s secret of the noninhibitive quality of certain strains of the species of Rhizobium was discovered, the state of the art made respondent’s production of a mixed inoculant a simple step.
How does the court in Chakrabarty differentiate it from Funk Bro’s?
The patentee in Chakrabarty has produced a new bacterium with markedly different characteristics from any found in nature and one having the potential for significant utility. His discovery is not nature’s handiwork, but his own.
What are the two argument’s Diamond provides in Chakrabarty, and the Court’s answers to them?
- The passage of the 1930 Plant Patent Act and 1970 Plant Variety Protection Act (which authorized protection only for asexually and sexually reproduced plants) evidences congressional intent that the terms “manufacture” or “composition of matter” do not include living things. (Court said the Congress had recognized the distinction was not between living and nonliving things, but between products of nature, whether living or not, and human-made inventions..)
- Micro-organisms cannot qualify as patentable subject matter until Congress expressly authorizes such protection - resting on the fact that genetic technology was unforeseen when Congress enacted $101. The legislative process is best equipped to weigh the competing economic, social, and scientific considerations involved - relying on Parker v. Flook (“the judiciary must proceed cautiously when…asked to extend patent rights into areas wholly unforeseen by Congress.”) Also, there is a worry that there will be lots of genetic experimentation that will be bad for the human race. (Court says, under Marburry v. Madison, that the Court has the ability to say what the law is once Congress has spoken. Also, Flook did not announce a new principle; such a principle would be against the priniciple of encouraging innovation in patent law. Also, that the patent system will not deter people from doing such experimentation; there are other reasons to do that kind of experimentation.)
What does the dissent in Chakrabarty argue?
- That the Acts stongly evidence a limitation that excludes bacteria from patentability.
What is one reason for reading the broad terms of $101 narrowly?
The Nation’s deep seated antipathy to monopolies. - the dissent in Chakrabarty
What is Myriad about?
Appellees challenged the patentability of certain claims relating to human genetics. The court affirmed the decision to exercise declaratory judgment jurisdiction because at least one plaintiff had standing to challenge the validity of appellant’s patents. Next, it reversed the decision that appellant’s composition claims to “isolated” DNA molecules covered patent-ineligible products of nature under 35 U.S.C.S. § 101 because each of the claimed molecules represented a nonnaturally occurring composition of matter. The court stated that one distinction between products of nature and human-made invention for purposes of § 101 turned on a change in the claimed composition’s identity compared with what existed in nature. The court also reversed the decision that appellant’s method claim to screening potential cancer therapeutics via changes in cell growth rates of transformed cells was directed to a patent-ineligible scientific principle. It affirmed the decision, however, that appellant’s method claims directed to “comparing” or “analyzing” DNA sequences were patent ineligible; such claims included no transformative steps and covered only patent-ineligible abstract, mental steps.
What were the three issues in Myriad and how did the Court come out on each of them?
- Whether the claims to “isolated” DNA molecules covered patent ineligible products of nature under 35 USCS $101. (No, the DNA molecules were patent eligible because each of the claimed molecules represented a nonnaturally occurring composition of matter. The court stated that one distinction between products of nature and human-made invention for purposes of § 101 turned on a change in the claimed composition’s identity compared with what existed in nature.)
- Whether method claims directed to “comparing” and “analyzing” DNA sequences were patent ineligible (Yes, the method claims were patent ineligible because such claims included no transformative steps and covered only patent-ineligible abstract, mental steps.)
- Whether the method claim to screening potential cancer therapeutics via changes in cell growth rates of transformed cells was directed to a patent-ineligible scientific principle. (No, the method claim was patent eligible because claim 20 applies certain steps to transformed cells that are a product of man, not of nature.)
What court was Chakrabarty in?
US Supreme Court
What court was Myriad in?
United States Court of Appeals for the Federal Circuit
What court was Funk Bro’s in?
US Supreme Court
What is the dissent’s argument in Myriad?
The majority characterizes the isolated genes as new molecules and considers them different substances from the
corresponding native DNA. 2 Because the native BRCA genes are chemically bonded to other [*129] genes and histone proteins, the majority concludes that cleaving those bonds to isolate the BRCA genes turns the isolated genes into “different materials.” Yet there is no magic to a chemical bond that requires us to recognize a new product when a chemical bond is created or broken, but not when other atomic or molecular forces are altered.
What is the weird thing about Myriad’s summary of Chakrabarty?
It sounds a lot like Funk Bro’s. 4 plasmids in a microorganism vs. 3 things in a bottle.
Extra:
What if you put it in 4 different microorganisms in a solution instead? Would that make it less patentable? Is it less innovative? But he wasn’t the first to put stuff in a new microorganism… not that innovative.
What about the dissent’s kidney example in Myriad? What could the majority have said in response (but didn’t)?
It’s bad. They might have said that it’s the same as it was when it was in the body, but they didn’t. They said, it’s not a composition of matter.
Could have said, when you take the kidney out, it’s the same as it was in the body
What was Park Davis?
Learned Hand case about purification of adrenaline being good enough b/c it has an awesome utility.
Is a genetically altered organism a manufacture or a composition of matter? What case is this?
Both, but it doesn’t really make much of a difference; Diamond v. Chakrabarty
How did Chakrabarty define “composition of matter”?
“composition of matter” includes “all compositions of two or more substances and … all composite articles, whether they be the results of chemical union, or of mechanical mixture, or whether they be gases, fluids, powders or solids.”
How do blocking/improvement patents work? Must you get permission from both inventors?
Yes; also, the second inventor must license what he improved on in order to use it
Does a patent holder have the exclusive right to to make, use, sell, offer, and import his/her invention?
No; he/she has the right to exclude others from doing those things
Which courts are involved in patents?
- District Courts
- Federal Circuit
- Supreme Court
What does the ITC look at?
When people are importing things wrongly
What are the upsides and downsides of going to the ITC?
Up: they’re fast, and they’re experts
Down: they can only ban importation (can craft interesting injunctions or award damages)
What happened to Kodak?
it has a ton of patents; it decided to fight Apple; chose one patent in one court (ITC), which is a strategic mistake
What is Texas’ well-known bias?
in favor of patent holders
Which digits of the patent are used to identify it?
The last three digits
Why is the patent issue date important?
if you infringe the patent past that date you’re in trouble; also relevant to a patent’s expiration
So what does “patent pending” mean?
be careful; don’t build your infrastructure on this invention, because we will pull the rug out from under you
there are retroactive damages, but it has never been successfully used before
What about software patents?
People didn’t really use to bring them in the 80’s and 90’s and so they are hard to bring now, because there isn’t a prior art list
What are the benefits of giving the patent office lots of prior art?
- Flood them down
2. If you can get past all that, looks good in court
What are some issues when you are drawing a patent picture?
Want to make sure you are capturing it physically without limiting it artificially
What is the prose part of the specification?
the place to start reading a patent
What’s wrong with claiming “the coffee cup and the coffee cup holder”?
Want to allow the cupholder to be isolated, because then it’s a more powerful patent; some uses of a cup holder that aren’t holding a cup of coffee
Is it OK to make up new words in claims?
Yes, because sometimes there just wasn’t a vocabulary for parts of an invention
Are claims about disclosing the invention? What is it about?
No, that’s what the specification does
asserting your legal boundaries
What are the three parts of a claim?
- preamble
- transition phrase
- body
What is a preamble? What is it’s practical importance?
the first phrase that tells you the general nature of the invention (e.g., a cup and holder combination; a machine; a method of preparing beverages; a steering wheel unit)
they look at this to determine which officer to send it to; don’t hold you to preamble when interpreting the claims (a cup holder won’t keep your patent from claiming holding things that are hot), except you put a bunch of detail in the preamble as to where it breathes “life and meaning” into the claim
Why would you have a verbose preamble?
- To thread a needle somewhere, where the prior art is very thick
- Otherwise, probably poor patent writing
What is the transition phrase?
almost always the word, “comprising”
What does “comprising”’s specific meaning?
A, B, C; I claim anything that has A, B, C. This includes something with A, B, C, D, not A, C, D,
What is the body? What are elements?
where you lay out the components of your invention or the steps of your method (these are the elements of the claim)
What about the elements in the body?
They interrelate and are written that way.
What is a dependent claim?
a claim that refers back to an independent claim, and narrows it
Why do you claim in an inverse pyramid, narrowing as you add claims?
- the risk that your broad claims will get blown up
- if you want to litigate a claim in front of a jury, want to be able to map it to the product you’re accusing (want to choose the narrow claim that wins the case, rather than a broad one that will just confuse the jury)
- Easier to prove that I enabled a narrow claim, than it is to prove that I enabled a broad claim
What is the first canon of claim construction?
Read claims in light of the other claims listed
What happens to Samsung phones that have already been sold?
Those are fine; will have already paid damages that approximate the licensing on those phones
What were the three Apple patents we went over?
- Pinch to zoom
- Bounce Back when scrolling
- Double tap
What are there fights about in terms of what is patentable subject matter under 101?
- Refinements of naturally occurring things
2. Manmade organisms
Why is Chakrabarty going for more than the method for producing the bacteria?
- in case someone finds a different method for making that bacteria
- make the bacteria abroad and bring it over
What was probably the real invention in Chakrabarty?
that he made this new type of bacteria - to put on straw or otherwise, but of course he would try and patent ways to use this new bacteria
Was the court saying that there was no innovation in Funk Bro’s?
Not quite; just not protectable innovation
Bilski v. Kappos - what court?
USSC: 6/18/2010
The case involved an invention that was claimed to be a “process” under 35 U.S.C.S. § 101. Under the court of appeals’ formulation, an invention was a “process” only if (1) it was tied to a particular machine or apparatus, or (2) it transformed a particular article into a different state or thing. The Supreme Court found that adopting the machine-or-transformation test as the sole test for what constituted a “process” violated statutory interpretation principles. The machine-or-transformation test was not the sole test for deciding whether an invention was a patent-eligible “process.” Based on prior precedent, petitioners’ claims were not patentable processes because they were attempts to patent abstract ideas. Two claims in petitioners’ application explained the basic concept of hedging or protecting against risk. The concept of hedging was an unpatentable abstract idea. Petitioners’ remaining claims were broad examples of how hedging could have been used in commodities and energy markets. However, limiting an abstract idea to one field of use or adding token post-solution components did not make the concept patentable.
What is the prohibition against patenting products of nature not about?
Because it will be found anyway, don’t need to incentivize - because there are probably many things out there that are very expensive to find, and are not being found without a patent incentive
Should one company control the transistor?
Lichtman thinks no
What are some problems with having patents on naturally occurring things?
- Accidental infringement - my patented plant might accidentally grow in your yard and you would infringe
- Not so much who discovered it first, because it’s first to file anyway
What is hedging per Bilski?
When you bet against what you want to happen in case it happens; that way you can have some sort of insurance
What was the Fed. Circuit’s holding on Bilski that made the USSC want to talk about it?
that the machine or transformation test is how we decide whether something is a process
What is the machine or transformation test about? What does it (and the Fed. Cir. in Bilksi) not want in the patent system?
a claimed process is surely patent-eligible under 101 if (1) it is tied to a particular machine or apparatus, or (2) it transforms a particular article into a different state or thing
so it’s about what a process is in 101
What are the claims in Bilski?
- initiating a series of transactions…
- identifying market participants…
- initiating a series of transactions…
What does the Supreme Court say about the machine or transformation test?
That it violates statutory interpretation principles; can’t be the sole test for defining what a process is
Why did the USSC find claims 1 and 4 of Bilski unpatentable?
Claims 1 and 4 tried to patent an abstract idea
Is Bilski saying that abstract ideas aren’t patentable or that abstract ideas aren’t processes and maybe they can be products somehow?
the former
Does Bilski tell us anything about what an abstract idea is?
Not really
Why doesn’t Lichtman like the machine or transformation test?
Because he doesn’t know what it correlates to; we use machines for abstract ideas in a lot of cases, why does that make them automatically patentable?
What’s the problem with just requiring people with abstract ideas to specifically implement them?
Because that makes the patents useless; too narrow
Why was the Black-Schoals and Case-Shiller index interesting?
Because it’s not quite a law of nature, it’s kind of an interesting predictive self-fulfilling prophesy; so it brought up the idea that 100% certainty is unpatentable, but less is just predictive?
What was Myriad not about?
patentability; was only about eligibility, i.e. whether there was subject matter at all
not about it being “too broad”; that’s under patentability under enablement
What does Myriad say about “compositions of matter”?
Lichtman thinks it’s a pretty broad welcome, as long as it wasn’t exactly as it occurred in nature
What was another problem with Funk Bro’s claims?
He claimed too broadly: the idea of mutually non-inhibitive
On remand, does Myriad go under obviousness?
in light of DNA in the body (which under a certain theory is prior art), is it obvious?
What was interesting about the case that Lichtman was working considering subject matter?
whether figuring this out about baby’s blood being in mom’s blood was patentable in some way, because without a patent, it wouldn’t get investment, and without investment, it doesn’t become a reality
What are the three things to take away from Myriad?
- the Fed. Cir. seems to be focusing on whether the patented item is different in a very literal sense (e.g., the covalent bonds); if it’s different, then it’s not a natural phenomenon
- processes that are tied to man made things stand a better chance (claim 20)
- a process that merely adds simple mental steps to laws of nature or natural phenomena, then that’s not enough (no dressing up a natural law)
What are the three things to take away from Myriad?
- the Fed. Cir. seems to be focusing on whether the patented item is different in a very literal sense (e.g., the covalent bonds)
2.
What is the issue in Lichtman’s baby blood case?
whether or not the natural law functions as prior art, so that it would be an obviousness inquiry, rather than a subject matter inquiry - which is to say that merely amplifying or purifying is too obvious when that’s what any scientist would have done under the circumstances
What’s the standard move when finding a new natural law?
Patent all the processes and products around it
What’s a policy problem with not allowing patents on naturally occurring things?
People will hide that thing until they find a way to patent it
