Wednesday, July 4, 2012

Government innovation

Here is a link to another post on a current project -- analyzing governmental choices of innovation mechanisms. It appeared in IP Osgoode Hall's IPilogue blog.

Thursday, March 22, 2012

Back to blogging

With Mayo v. Prometheus decided, I have gotten back to blogging on patent eligible subject matter. Here is the link to my post on More to come here after a while....


Sunday, October 16, 2011

Back on line

Well, it's been a busy time, but I'm back blogging again. Here are two posts I recently made, on Patently-O and Madisonian, regarding the new patent law.

I have also filed a number of amicus briefs on patentable subject matter issues, since the Supreme Court's decision in Bilski. The briefs were in the Myriad Genetics (Association for Molecular Pathology v. US PTO) Federal Circuit case on genetic sequences, available here, and the Mayo v. Prometheus Supreme Court case on medical treatment methods, available here. The briefs address the importance of treating new scientific discoveries as prior art and why prior art treatment may be a constitutional requirement.

Monday, March 1, 2010

Going, going … but not entirely gone!

All good things must end, they say, and it looks like I will be making a transition soon. I will be leaving my clinical teaching position at the Washington College of Law, American University at the end of June, to become a full-time, tenure-track Associate Professor at DePaul University College of Law in Chicago, where I am currently visiting. Among other things, the change will allow me to join some fabulous new colleagues at DePaul and in the Chicago intellectual property community, to work with old friends and new partners in another established IP program – the Center for Intellectual Property and Information Technology (CIPLIT®) – and to have more time for writing and to teach new courses, including a patent law seminar and hopefully soon a class on Intellectual Property and Climate Change – for which I have begun the process of conceptualizing and editing a research handbook written by experts in various fields. I’m very excited about the opportunities and my new institutional affiliation, home, and colleagues.

At the same time, I am leaving some good friends and tremendous colleagues at WCL and its Program on Information Justice and Intellectual Property and Clinical Program. Foremost among these is my mentor Peter Jaszi, who brought me to WCL to help form the Glushko-Samuelson Intellectual Property Law Clinic and remains an inspiration to me (and to other to academics and public interest advocates) in all his endeavors. Also, my dear friend and IP Clinic partner Vicki Phillips, who will shoulder the burden of managing the IPClinics listserv and the growing community of IP, entrepreneurship, small business, and related clinics that it serves; my former (and current) IP Clinic colleagues Christine Farley, Ann Shalleck, Richard Ugelow, and Jessica Hayes; my PIJIP colleagues Sean Flynn, Mike Palmedo, and Stacey Jackson-Roberts; my newest PIJIP colleague (but old friend) and PIJIP Director Michael Carroll; and many other faculty members and staff at WCL. I also wish to thank Dean Claudio Grossman for having made these many years possible and for his support of my many research endeavors.

Since you take your past with you, I’m not so much leaving WCL behind as moving part of WCL to Chicago. (I hope the others like the food in Chicago as much as I do….) And as I’ll continue to maintain close connections with PIJIP and my WCL colleagues on various projects and to preserve my affiliations with various Washington institutions, there is no doubt I’ll see them often, if not as much as I would like.

Monday, November 9, 2009

Bilski -- The Oral Argument

Here are my thoughts on the Bilski v. Kappos oral argument held today, which is better informed by also having watched Pamela Samuelson, John Duffy, Kevin Collins, and John Whealan discuss the argument late this afternoon at George Washington University. The argument was fascinating, and the Justices were very well prepared and were a very hot bench (particularly Justice Sotomayor).

Surprisingly, but from my perspective happily, Justice Scalia focused very early into the Petitioner’s argument on the “useful arts” language from the Constitution (or on similar language from early patentable subject matter statutes -- “new and useful art” -- as Justice Scalia did not explicitly reference the Constitution) and whether patent eligible inventions must fall within manufacturing and similar industries. Michael Jakes did a very good job responding – and holding his ground when pushed under substantial questioning from many Justices to define a limit to what qualifies as patent eligible – by adverting to examples of patentable business inventions from his brief and reasons why “technologies” have and should continue to be viewed broadly and why the patent system is not limited to traditional industrial inventions. Jakes to his credit (and as a testament to zealous advocacy on behalf of a client with a possibly losing position) also refused to provide any helpful response to the Justices when pressed to offer a fall-back position in case his basic position was rejected. This was particularly notable in his responses to Justice Breyer’s repeated requests for more guidance, after Justice Breyer clearly signaled that the Court might not agree that patentable subject matter is as broad as Jakes was arguing. Justice Roberts also pressed Jakes on the issue of why Claim 1 was not merely an abstract idea, and Justice Stevens pressed Jakes on the difference of the claim at issue from that in Diehr (particularly in regard to its physicality). Jakes made clear why he believed his clients’ claim was both practical and physical, focusing in particular on the step of entering into transactions. He also articulated why his clients are entitled to have their claim reviewed on the other patentability criteria, although some of the Justices may believe that the claim also may not be new or at least is obvious. Although his clients’ invention provided little in the way of physicality like that of traditional industrial processes, Jakes nevertheless presented a strong (maximalist) approach to patentable subject matter to justify treating the invention as potentially eligible, the scope of which appeared to be limited only by the Court’s historic, articulated exclusions for science, nature, and abstract ideas (understood narrowly but applied to all four categories of statutory subject matter, i.e., processes, machines, manufactures, and compositions of matter). Thus, when pressed by Chief Justice Roberts, Jakes argued that an alphabet could be patented, which led to an unproductive exchange with Justice Sotomayor about Morse’s code claim, which was in fact found patentable as Jakes articulated but which raises unanswered questions of claim interpretation regarding how closely “tethered” that claim was to Morse’s apparatus. This argument may not have been the best strategic choice by Jakes, as his clients’ position could readily have been sustained without trying to uphold alphabet patents. Curiously, Jakes also argued that the Bell telephone patent would not pass the Federal Circuit’s transformation test, which led to an unproductive exchange with Justice Scalia about whether the Bell telephone patent involved a physical transformation (of sound into electrical signals and back again). Jakes also conceded (at no cost to his clients’ position) that mental processes and data (by itself), literature and fine arts are not patentable subject matter.

Many of the Justices appeared concerned over certain types of inventions being considered patent eligible, although their reasons for wanting to keep them outside the system were not entirely clear. For example, Justice Breyer express concern over hypothetical claims directed to teaching antitrust courses; Justice Ginsberg expressed concern over tax and estate planning method inventions; Justice Kennedy expressed concern over inventions relating to insurance risks determined from actuarial tables; Justice Stevens expressed concern over the invention at issue in the State Street Bank case – a programmed computer performing calculations for use in business; Chief Justice Roberts expressed concern over the patenting of alphabets; Justice Scalia expressed concern over the method of winning friends and influencing people; and Justice Sotomayor expressed concern over patents for speed dating. All of the Justices clearly understood that the case would have implications for software and medical diagnostic inventions, so the myriad amicus briefs were at least successful in getting this point across. The issue of the effects of the machine or transformation test on such inventions became a focus for discussion of the kinds of line drawing that the Court should adopt – and that the claim at issue did not require. As Samuelson put it in a discussion after the argument – perhaps with J.R.R. Tolkein’s masterpiece in mind – the question is whether there will be “one test to rule them all.”

Malcolm Stewart for the Government also did a good job articulating the Government’s basic position, which was that they are hoping to establish the “machine or transformation” test in this case as the baseline, and to leave questions about what that means and how it applies to subsequent development in cases where some machines are employed or more substantial physical transformations are at issue. However, serious concerns were expressed – particularly by Justice Stevens -- about whether implementing a process like the claim at issue (or software) on a computer was sufficient for patentability. Various Justices pressed Stewart on the patentability of the State Street Bank machine claim and whether the Court’s holding in this case can and should be limited to “processes,” given the ability to draft process claims in programmed computer (machine) formats, even though the process or software is the real invention. Thus, after expressing skepticism about the patentability of claim at issue, Chief Justice Roberts took serious issue with a footnote in the Government’s brief that stated that if Bilski’s claim included implementation by an interactive website or calculations performed by a computer it might be patentable. Justice Alito in contrast focused on whether the Court should avoid ruling on the broader (but more important) grounds of the “machine or transformation” test, given the Government’s alternative argument that the claim would not survive the “preemption” test (articulated in Gottschalk v. Benson, where a claim preempts all uses of the abstract idea). Stewart responded that the Government would much prefer the machine or transformation grounds for the holding, so as to give the PTO and the Federal Circuit the opportunity to develop further rules on eligibility elaborating the test. Stewart also provided two very helpful arguments that support Petitioners (and others seeking broader protection). Stewart argued against alternative bases for the Court's holding that were suggested by Justice Ginsberg, i.e., finding that business methods are entirely outside of the patent system or that claims like the one at issue are not technological (like in foreign jurisdictions). Stewart sought to warn the Court off the broad business method holding by arguing that some business-related computer-implemented inventions (particularly software inventions) have been held patentable by the Federal Circuit and should be held patentable. Similarly, he sought to warn the Court off a holding based on limiting the definition of technology, because of the difficulty of defining technology and because of the consequent need to determine whether a claim is sufficiently technological when it incorporates particular machines or achieves some physical transformations. (Implicit in these arguments and in the Justices concern over line drawing is the point at the heart of the amicus brief that I filed, that the Court must confront point-of-novelty analysis and determine what the “invention” is; otherwise, it cannot determine whether the machine implementations or physical transformations are mere additions to the claimed invention or are integral to it.) Justice Ginsburg also asked about the origins of the machine or transformation test and Justice Kennedy tried to get Stewart to provide clarity over what constituted a transformation, referring to the State Street Bank invention. Stewart noted the origins of the test in the Government’s Benson brief (written by Richard Stern, when he was at the Department of Justice, who also filed an amicus brief in the Bilski case tat focused on the historic meaning of “useful arts”) and acknowledged that it was asserted by the Government below in the Bilski case. Stewart argued that the Government now clearly supports the State Street Bank holding; in contrast, the Government had hesitated at Court of Appeals to approve of the invention at issue in the State Street Bank case. This led Justice Stevens to make cogent points about machine claims not being materially different from process claims, and Justice Roberts then noted that the State Street Bank invention did not transform anything physical. Possibly, some other Justices also may want to assure that whatever restrictions their holding imposes, it will not be avoided simply by changing claim formats.

Surprisingly, there was little discussion of statutory construction of the term “process,” of the 1952 Act, or of the later-enacted Section 273. Stewart did focus briefly on the “anything under the sun” language from the 1952 Act’s legislative history, noting that it applied only to machines or manufactures and not to processes. The lack of discussion of the statutory language may suggest that the Court is likely to follow its prior holdings of not reading “process” literally and then providing judge-made limits on what can be patented. There was also little discussion over the historical meaning of “useful arts,” although Justice Scalia made a humorous point about the importance of horses to the American economy. Nor was there any discussion of the other potential constitutional limits on the patent power, i.e., “promoting the Progress” or “Inventors … for their … Discoveries,” although Jakes did refer on a few occasions to the benefits of both invention and disclosure accomplished by granting patents. Nevertheless, again as Samuelson put it, the “spirit” of the Constitution and the beliefs at the time of its framing were clearly “in the air” from the Justices discussions of numerous old technologies (including Justice Kennedy’s references to the discoveries of calculus and of life expectancy and actuarial tables in 1680). Stewart also made the point about the “dog that didn’t bark,” arguing that American economic history would have looked very different if business methods such as the method of allocating risk at issue would have been considered patent eligible. Thus, although a strong constitutional holding that would limit or strike down legislation is unlikely, the Court clearly was concerned about the constitutional purposes and may read the statutory term “process” narrowly in light of those purposes (as I argued it should in my brief, citing the constitutional conflicts that would result from a broad interpretation that should be avoided by statutory construction under the Ashwander doctrine).

Although some of the discussion focused on examples of transformations and whether they were sufficient for patentability, there was almost no discussion of what kind of “particular” machine may have been needed for patentability. This is not particularly surprising, given that the claim at issue did not present any question of machine implementation. But it forced the Court to resort to hypotheticals (and the State Street Bank invention) to try to draw out the implications of the various potential holdings. Jakes was not willing to offer up lines that would help the Court restrict subject matter, and Stewart similarly was trying to avoid any ruling that would prejudge such line drawing in future cases. The discussion of how to draw the lines thus was less than edifying for the Court, and at least Justice Stevens and possibly Justice Kennedy appeared unconvinced that the invention at issue in State Street Bank – even though it was claimed in machine format – should have been patent eligible.

If I were to make a prediction, it would be that the Court is likely to do what it did in the eBay v. MercExchange case. There will be a unanimous, core holding of nine Justices that the claim at issue is not patent eligible, and the Court will thus affirm the PTO’s rejection of it. And there will also be a series of concurrences (perhaps with more factions than the two in eBay) articulating different perspectives on what lines of distinction the future cases should consider. The core holding will be very narrow – likely limited to saying that the claim at issue (and others like it) that are not tied to any physical technology and that are not traditional physical processes (like industrial or chemical production) are not the kind of processes that the patent system was designed to encompass. The Court may also distinguish the claim at issue from the industrial process at issue in Diamond v. Diehr (which the Court found to be eligible). The decision will probably mention the constitutional language of “useful arts,” and possibly even mention “promote the Progress” (although it is unlikely to focus on “Inventors … for their … Discoveries,” which was the focus of my brief), but in doing so may not imply any actual limitation on legislative power. Rather, it may imply that Congress would not have lightly meant to extend the patent system beyond the traditional limits to apply to such “abstract” inventions, and may briefly mention and dismiss as not dispositive the recognition by Congress in Section 273 that business methods had become patent eligible as a result of the State Street Bank decision – suggesting that the history does not signal a legislative intent to expand the patent system beyond its traditional contours. The Court may also indicate (contrary to the Government’s desire) that the machine or transformation test has never been framed as a strict limit, and more importantly that the machine or transformation test is not helpful to deciding what is eligible as it provides no test for what kind of machine implementation or physical transformation is sufficient. And thus the hard issues will be left for future cases – and the bar will have lots of continued work advising clients in prosecution and litigating these issues until the next time the Court provides more guidance.

The concurrences, in contrast, will articulate very different potential tests of patent eligibility and thus very different routes to reaching the core “holding.” Justice Stevens will likely write a concurrence – possibly joined by Justices Kennedy and Breyer -- reasserting his position in Parker v. Flook that patent eligibility requires a different inventive concept than the mere application of science, nature, or abstract ideas to a particular context without significant post-solution activity (on which grounds the claim at issue should fail). Chief Justice Roberts – possibly joined by Justice Alito – may write a concurrence based on the “abstract” v. “applied” approach to eligibility and suggesting why the claim at issue is abstract even though it requires some physical activity. Justice Ginsburg – possibly joined by Justices Scalia and Sotomayor -- may write a concurrence based on excluding business methods from the patent system or holding that such methods are not technological and that nothing in the claim requires technology so as to bring the claim back within the scope of the patent system. That leaves Justices Thomas, who having (as usual) asked no questions remains an enigma.

P.S. Justice Breyer clearly understood the potential takings concerns of a broad holding of patent eligibility, noting that Congress had never taken out of the patent system any technologies or activities found by the Court to fall within it. This will supply further grounds to rule narrowly, particularly if the Court is reluctant to reach software claims in this case that does not present them (as articulated as the major concern of the Government). Although Jakes coherently responded that Congress had in fact responded to the Federal Circuit's expansions of patentable subject matter by limiting enforcement of business methods and medical and surgical procedures, it is not a full response to Justice Breyer's concern--as it does not take such patents out of the system and (as evidenced in the Laboratory Corp. v. Metabolite case) they still may provide the basis for secondary liability (and for business methods, which were not at issue in LabCorp, for extensive direct liability).

Monday, October 19, 2009

Debate exhaustion and exhiliration

I just posted on a short comment on a terrific debate on ScotusCast about the exhausation doctrine after the Supreme Court's Quanta v. LG decision. Worth listening to, a fabulous format for public edification and education, and almost nothing said in my post about patentable subject matter for a change.

Monday, October 12, 2009

Bilski, What is Patentable, and the Constitution

I recently filed an amicus brief in the pending Supreme Court case, Bilski v. Kappos, about whether business methods are patent eligible “inventions,” on behalf of eleven law professors and AARP (for whom I filed an amicus brief in the LabCorp v. Metabolite case about diagnostic methods). Although the Bilski brief focuses on business methods (and the legal category of unpatentable “abstract ideas”), it also explains how to draw the line between the patentable inventions and unpatentable science and nature. In addition, the brief explains why these concerns are of Constitutional stature, and not just questions of how far Congress has legislated and whether it has sought to extend the patent system beyond its historic contours.

As the brief argued, the patent system does not apply to science, nature, and abstract ideas, whether claimed “as such” (familiar terminology to Europeans under the EPC) or claimed without “invention in their application.” The reason for excluding science, nature, and ideas as such is based on historic beliefs (reflected in the Constitution) that such foundational information should be “free for all to use,” and that those who discover such information have a moral duty to freely disseminate it. The reason to prohibit claims lacking invention in the application (i.e., to go beyond claiming such public domain science, nature, and ideas as such) is that once such information is treated as public domain information, a patent without any additional inventive contribution (i.e., creative technological advance) would both improperly reward the scientific discovery with exclusive rights and overcompensate the discoverer for disclosing only what is supposed to be free for all to use. Stated differently, without “invention in the application,” there is simply no patent-eligible invention to patent; the claim is no more than a mere application of the public domain information, which may be new and a human creation but is not an invention.

Allowing patents for such claims would permit the public domain to be appropriated in a piecemeal fashion, rather than in one large bite (“as such”), but adds nothing to the store of technological knowledge (assuming again that the disclosed science itself is treated as if already known). Of course, scientists and others might -- absent patent protection for science, nature, and ideas “as such” or without additional invention -- choose to withhold such information from the public because they cannot turn it into their private property. But as Lord Camden stated over two Centuries ago, “[t]hey forget their Creator, as well as their fellow creatures, who wish to monopolize his noblest gifts and greatest benefits.” The law should neither encourage nor reward such withholding behaviors. (On alternative incentives and funding for scientific discovery, see below.) Whether one has the same, different, or no religious beliefs, patentable subject matter thus raises important moral concerns (and not just of utilitarian morality).

Because all countries prohibit patenting science, nature, and ideas as such, the approach suggested by the brief is quite similar to the approach in many other countries. This includes the “technical effect” approach of Europe, the Japanese requirement for “creation of technical ideasutilizing laws of nature,” and the requirement for industrial application reflected in, among other things, the TRIPS Agreement (recited along with novelty and inventive step patentability requirements, given the treaty’s notable lack of a definition for “invention”). The approach adopted by the brief, however, does not define the minimum threshold of what constitutes an invention (i.e., a creative technological advance), and countries may differ in where they set that threshold – as well as in regard to the qualitative degree of creativity that they believe would justify granting a patent (the subject of the inventive step requirement).

Instead, the brief sketches important and relevant patent law cases from the last two-plus centuries to show how the “invention in the application” test of eligibility has been applied, providing concrete examples of that minimum threshold. The “invention in the application” test thus provides analytic clarity regarding both the history and the theory of patent law in the U.S. and thus should be of help to the courts, the PTO, and the patent system as a whole. By articulating and analyzing the “invention in the application” test, the brief explains how patentable subject matter determinations differ from novelty, non-obviousness, and adequate disclosure patentability requirements, how it generates the “machine or transformation” precedents, and why those precedents establish a (possibly) necessary but (necessarily) insufficient condition for patent eligibility. The brief also explains why “preemption” of science, nature, and ideas is not the test of eligibility (which it would be if science, nature, and ideas were only prohibited from being claimed “as such”), but rather is the consequence of improperly claiming science, nature, and ideas without invention in the application (or any other meaningful limitation on claiming science, nature, and ideas “as such”).

The brief also argues that protecting the public domain of science, nature, and ideas is a constitutional, not just a legislative, requirement. Although originalism is always a difficult position, one need not be an originalist to believe that the value of protecting the public domain of science, nature, and ideas from encroachment is so important that it should continue to receive constitutional protection, and thus should not be subject to legislative override. The brief thus articulated three grounds (in less detail than in the amicus brief filed in the Court of Appeals below) for why the Constitution restricts legislative power, and explains why a broad interpretation of the statute (of Section 101 alone or in conjunction with Section 273) should not be adopted, as to do so would raise constitutional conflicts that should be avoided. These are: (1) that “Inventors” and “Discoveries” excludes science, nature, and ideas (which either are not human creations or are not the kinds of things that are properly subjected to private ownership); (2) that “useful Arts” imposes limits by requiring that patents be for technological advances, and eliminating the requirement for invention in the application extends the patent system beyond technology – however defined; and (3) that patents on the fundamental infrastructure of science, nature, and ideas impedes rather than “promote[s] the Progress of [both] Science and useful Arts.” Although I don’t expect the Court to rule on constitutional grounds, as Section 101 (alone or in conjunction with Section 273) can readily be construed to avoid violating such constitutional limits (and the brief argues that the statute should be interpreted to do so), I still hope the Court will reach the constitutional issues. It would be good for the Court at least to provide a clear statement on the meaning and limits (if any) of the Authors and Inventors Clause. Following Eldred, the statement in Graham that the Constitution limits legislative power may be widely viewed as repudiated dicta. A clear statement of the Constitution’s limits would potentially restrain Congress (and lobbyists) from testing those limits, as well as reinforce the constitutional policies behind those limits and provide guidance for future courts in assessing the constitutional validity of any future legislation that tests the limits.

Finally, in tardy response to comments of Anonymous and by Richard Aron Osman on my earlier post on the ACLU challenge to gene patents, I agree that we don’t want to “destroy this potential” for funding biotechnological advances, and that gene patents are an “easy target” whereas natural pharmaceuticals may make for harder cases. But the fact that hard cases may exist should not deter the courts from ruling on them, even if they may sometimes make mistakes. And permitting patents where there is “invention in the application” will preserve patents for some pharmaceuticals (and not just “minor follow-ups”), even if it denies patents for many pharmaceuticals that reflect no creative technological advance beyond the natural discovery. I also agree with Osman that we should be reluctant to prohibit patents on such medical advances without providing adequate funding for their scientific discovery. But I don’t think we are in serious danger of doing so if the prohibition on patenting science, nature, and ideas were made clearer. Rather, I think the justification for government funding would be easier to make (and the funds would become easier to obtain). Similarly, I think that personal incentives to engage in scientific (and other fundamental) discovery already exist, and that we don't need to provide patent incentives for them. But if we do need something more than already exists, there are better alternative than exclusive patents rights for providing them (e.g., prize funds, greater publicity and social recognition, more job security, etc.). Lastly, whether or not we wish to provide broad patent incentives for “pioneering” inventions is a complicated issue. The brief notes that some patents on non-inventive applications of science, nature, and ideas also may fail under Section 112 disclosure doctrines. But not all scientific, natural, and abstract discoveries are “pioneering.” For broadly applicable and important scientific discoveries, it is precisely their status as pioneering and foundational that suggests why (on utilitarian grounds) they should not be the subject of private exclusive rights. But even for patentable technological inventions, broad “pioneering” genus claims may sometimes do more harm than good, and I do not believe in granting broad patent rights to effectuate a "prospect theory" of the role of patents. The best discussion of this issue that I have seen is in Merges and Nelson’s On the Complex Economics of Patent Scope, 90 Colum. L. Rev. 839 (1990), which I believe is a strong repudiation of the prospect theory of granting broad patent rights in order to control the development of sequential innovation. But I’ll have more to say about pioneering inventions and genus and species claims soon, after our IP Clinic files an amicus brief in the Ariad v. Lilly written description case….