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IP, Patent

Bilski Was Just The Beginning, Showdown Over Patent-Eligibility Looms Large

Queuing up a possible rehearing with the full slate of Federal Circuit Judges, Chief Judge Rader signed on to an opinion, and then penned his own thoughts, reaffirming his take on patent-eligibility* as a “coarse filter” in yesterday’s decision in Classen Immunotherapies v. Biogen.  In the process, Rader implicitly rejected the approach taken to rob Cybersource of its fraud detection patent by explicitly stating that a mathematical algorithm, if written as “an encoded tangible medium” is patent eligible.  Cybersource will likely ask the full panel of CAFC judges to hear its case, and chances of reversing Judge Dyk’s flawed logic are looking a little better today.

*Note: Some people refer to this same concept as “patentable subject matter” or “patentability.”  While the former is certainly less confusing than the letter, I use the more precise term of “patent-eligibility” because the Bilski/Section 101 doctrine stands only to determine whether a patent deserves to be evaluated on its merits.

First, in dealing with the specific patents at issue in Classen, the court considered claims exemplary of the patents at issue.  The first patent considered included claims directed to “[a] method of immunizing a mammalian subject,” including steps for “comparing the effectiveness of … screened immunization schedules” and then “immunizing said subject according to a subject immunization schedule.” Before you start asking how this could possibly be patentable, remember the patent-eligibility test is all that’s at stake.  Is this a process that we should evaluate substantively or not.  Ultimately, the court agreed that this claim should move forward, but expressed its doubts about whether it was defined clearly enough to merit patent protection.

On the other hand, another patent at issue was not so worthy.  The claim considered, reproduced below, was not eligible for patentability consideration, most likely because it only recites a specific application of the scientific method:

1. A method of determining whether an immunization schedule affects the incidence or severity of a chronic immune-mediated disorder in a treatment group of mammals, relative to a control group of mammals, which comprises immunizing mammals in the treatment group of mammals with one or more doses of one or more immunogens, according to said immunization schedule, and comparing the incidence, prevalence, frequency or severity of said chronic immune-mediated disorder or the level of a marker of such a disorder, in the treatment group, with that in the control group.

In other words, as I suggested several months ago, the eligible process accomplishes a specific result (immunizing a subject), while the ineligible process merely produces knowledge (determining effectiveness of an immunization schedule).

With the boring part over, Judge Rader proceeded to make his personal views known, in a separate opinion joined by Judge Pauline Newman.  In a joke that only lawyers would find funny, Rader suggested that “section 101 has become the ‘substantive due process’ of patent law.”  In other words, its bound and application are ill-defined, leading to activist decisions aimed at accomplishing a political agenda.  One particular agenda of concern to Rader are feared attempts to wipe out biotech and software-related inventions in the US.

Excluding categories of subject matter from the patent system achieves no substantive improvement in the patent landscape. Yet, these language games impose high costs on patent prosecution and litigation. At the same time, the new games can cheat naïve inventors out of their inventions due to poor claim drafting.

Rader also provided a brief history lesson to back-up his reasons for suggesting that Section 101 be used sparingly. “Europe became known for subjecting [biotech] inventions to delays in the patent office, challenges in litigation, increases in cost, and uncertainties in the legal landscape. With those difficulties as a primary contributing factor, investors, corporations, and clinics shifted their research from Europe to the United States. … Europe lost innovation investment to the United States. Our country became the world leader in biotechnology innovation.”

Of course, Americans should not be so quick to gloat because “the tide can turn against us, too. The effect of eligibility restrictions can send innovation investment elsewhere. Maybe an accommodating clinic in another country would be happy to take the additional funding and opportunity.” This is Judge Rader’s second attempt to discourage parties from using Section 101 as a weapon against issued patents.  In the first, Rader upheld patent eligibility of a method–likely, though not explicity software-implemented–for halftoning of gray scale images by utilizing a pixel-by-pixel comparison.  (See CAFC Prematurely Ends “Bilski” Hunting Season discussing Rader’s decision in Research Corp v. Microsoft).  In that case, Rader wrote that a patent should only be held to be ineligible if it is “manifestly abstract.” I think it’s fair to say that a claim covering performance of the scientific method qualifies, but few other things will, including software-related inventions.



3 thoughts on “Bilski Was Just The Beginning, Showdown Over Patent-Eligibility Looms Large

  1. Decisions like the one in Classen may render it all too easy for clever patent claim drafting to compensate for weaknesses in a supposed “invention.”

    Posted by patent litigation | September 5, 2011, 4:08 pm


  1. Pingback: Chief Judge Of Patent Appeals Court Resurrects ‘State Street’ And Approves Software Patents « Gametime IP - September 15, 2011

  2. Pingback: The Future Of Patent Licensing In Europe « Gametime IP - October 17, 2011

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