By: Robert R. Sachs

On January 31, 2014, Fenwick & West and the Center for the Protection of Intellectual Property (CPIP) at George Mason University School of Law held a roundtable on Patentable Subject Matter at Fenwick’s Silicon Valley office. 

Our approach to this roundtable was different from the typical conference or roundtable on patent eligibility. As I have made clear in other posts, the question of patent eligibility reaches outside of the strict confines of the courtroom, the Patent Office and the patent statute; it is intimately grounded in science and philosophy, in the nature of human creativity and in the types of things that can be said to be the subject of human creation. In particular, the fundamental questions of patent eligibility—what is a law of nature, an abstract idea, or a natural phenomena—are questions that are ancient in origin, and that have been addressed in considerable detail outside the boundaries of the law.  

Accordingly, in addition to the usual suspects, such as law professors and patent practitioners, we included in our roundtable experts in a number of extra-judicial disciplines. Mark Turner, professor of Cognitive Science at Case Western Reserve University, is one of the leading theorists and researchers in studying the nature of human cognition, and one of the originators of the theory of Conceptual Blending, which describes how we combine abstractions from different domains to understand and imagine. Gregory Salmieri, visiting fellow in Philosophy at Boston University, provided insights on the historical and analytical issues underlying abstract ideas and laws of nature. Ted Brown, Emeritus Professor of Chemistry at University of Illinois at Urbana-Champaign, discussed the role of metaphor in scientific thinking, and how chemists and physicists think about laws of nature. Steve Rosenberg, Ph.D., Chief Scientific Officer at CardioDx, and an inventor on over 20 patents, brought his expertise in biochemistry and genetics to bear on these topics as well.

Our academic contingent included Adam Mossoff, Mark Schultz, Matthew Barblan, co-directors of CPIP; Kristin Osenga, professor of law at University of Richmond School of Law, with expertise in the role of linguistics in patent law; Christopher Holman, professor of law at University of Missouri-Kansas City, who has extensive experience in biochemistry and molecular biology; Andrew Chin, professor of law at the University of North Carolina, a specialist in the mathematical considerations under debate; and Saurabh Vishnubhakat, post-doctoral associate at Duke Law School and an expert advisor to the USPTO on patent policy. 

Our practitioners included myself, Courtney Brinckerhoff, partner at Foley & Lardner LLP, an expert in biotechnology patent issues and James Calkins, Vice President and Global Head of Patent Support at Sanofi (and former clerk to J. Giles Rich of the Federal Circuit), who explained the impact that the uncertainty in patent eligibility has on investments by companies in biotech innovations.

We will publish a white paper on the roundtable shortly. 

By: Robert R. Sachs, Daniel R. Brownstone

Last week, we filed two amicus briefs with the Supreme Court in Alice Corp. v. CLS Bank, one on behalf of Advanced Biological Laboratories (ABL), and one for Ronald M. Benrey (Benrey). It goes without saying that this is the bellwether case for the patent eligibility of software. The question presented by the Court and the parties was whether claims to computer-implemented inventions—including claims to systems and machines, processes and items of manufacture—are directed to patent-eligible subject matter within the meaning of 35 U.S.C. § 101 as interpreted by this Court.

Our two briefs focused on different aspects of the issue. The ABL brief set forth a new framework for patent eligibility called “objective preemption.” The core thesis is that patent eligibility is a question of law, but must be predicated on objective analysis based on POSITA, the person of ordinary skill in the art. This conforms the analysis to how obviousness is determined, a question of law based on the Graham factors, as well as claim construction, enablement, written description and doctrine of equivalents infringement. In all of these, POSITA is used to ground the analysis in objective factors, not the subjective beliefs of the Court based on what it had for breakfast. The brief explains how POSITA would be used to understand the scope of the claim, and whether the claim preempts all practical applications of some abstract idea. The brief concludes by showing that Alice’s claims, which were held invalid by the district court and the Federal Circuit, are valid under objective preemption.

The Benrey brief is more narrowly focused. Benrey is the author of Understanding Digital Computers (1964). This book was cited by the Solicitor General to the Supreme Court in Gottschalk v. Benson in support of the proposition that computers perform mental steps like humans. This became a core principle over the years and persists today; Judge Lourie of the Federal Circuit has repeatedly stated it as a fact and continues to use it to invalidate software patents. The problem is that Benrey never suggested that computers in fact operate like human minds.  Benrey’s brief explains that he was quoted out of context, that computers do not perform mental steps, and that mathematical formulas are not scientific truths per se as apparently believed by the Court. Benrey’s brief goes on to explain that the mental steps doctrine was extended to computers only on the basis of this misunderstanding of the nature of computers and mathematics. It further shows that the notion that general purpose computers cannot impart patent eligibility is scientifically unsound, based on the work of Alan Turing.

Copies of the briefs are available at the links below. We look forward to further discussion with those on all sides of the issue over the coming weeks, and ultimately, resolution regarding this question that remains critical to the future of innovation.

Oral argument is set for March 31, 2014.  We’ll be there.

Brief for Amicus Curiae Advanced Biological Laboratories, SA in Support of Petitioner

Brief for Amicus Curiae Ronald M. Benrey in Support of Neither Party

By: Robert R. Sachs

Having now discussed the underlying clarity issues that the USPTO is seeking to address with its proposal to include glossaries in patent applications and the fundamental linguistic elements that would impede the success of such a requirement, I’ll now discuss some of the problems that would arise in the implementation of patent glossaries.

Continue Reading The Problem of Patent Glossaries Part III: Patent Glossaries in Practice

By: Robert R. Sachs

What motivates the USPTO to consider the use of glossaries in patent applications is surely the hue and cry that software patents are frequently, if not inherently, vague and ambiguous, and that something must be done to help clarify—and more importantly, narrow—the scope of patent claims. See, Government Accountability Report “Assessing Factors That Affect Patent Infringement Litigation Could Help Improve Patent Quality,” August 2013, p. 28, 30. 

My experience in prosecuting patents, and in particular in evaluating software patents for essentiality to technology standards, is that claims in software patents are no more or less ambiguous to one of skill in the art than claims in other disciplines. There is a difference between claims that are broad and claims that are vague, and this difference is lost on most observers. Indeed the examples used by critics of the patent system are typical of broad claims, not vague ones. See Chin, On Abstraction and Equivalence in Software Patent Doctrine: A Reply to Bessen, Meurer and Klemens, J. Int. Prop. Law, v.16, no. 2, pp. 197-240 (Spring 2009). 

Continue Reading The Problem of Patent Glossaries Part I: Ambiguity in Patent Claims

By: Robert R. Sachs

Humpty Dumpty smiled contemptuously. “Of course you don't—till I tell you. I meant ‘there’s a nice knock-down argument for you!’”

“But ‘glory’ doesn't mean ‘a nice knock-down argument,’” Alice objected.

“When I use a word,” Humpty Dumpty said, in rather a scornful tone, “it means just what I choose it to mean—neither more nor less.”

“The question is,” said Alice, “whether you can make words mean so many different things.”

“The question is,” said Humpty Dumpty, “which is to be master—that’s all.”

    Lewis Carroll, Through the Looking-Glass (1872) p. 72.

At last month’s Software Partnership Meeting in Berkeley, the USPTO discussed its proposed inclusion of glossary sections in patent applications to assist examiners in claim interpretation.

Continue Reading The Problem of Patent Glossaries: An Analysis of the USPTO’s Glossary Pilot Program

By: Robert R. Sachs

Alternative universes make for compelling drama on the big screen, especially when the plot involves the reversal of identities or roles. What is surprising is how exciting this theme can be when set in the scholarly suites of the Federal Circuit courthouse. The following commentary is highly tongue-in-cheek. Reader discretion is advised.


These are the voyages of the Starship Federal Circuit…

…whose never ending mission is to seek out new forms of patent eligible subject matter…

… to boldly claim what no man has claimed before!

Mirror, Mirror [1] A transporter malfunction in the U.S.S. Guidewire [2] sends Capt. Rader and First Officer Lourie into an alternate legal universe, where Rader advocates for Lourie’s legal theory of preemption from The En Banc Maneuver,[3] while Lourie devises a new theory of method claim estoppel to escape the consequence of his own inviolable logic.[4]

Continue Reading <i>Mirror, Mirror</i>: The Alternative Legal Universes of <i>Guidewire</i> and <i>Ultramercial II</i>

By: Robert R. Sachs


"To coin a phrase, the name of the game is the claim.”
Judge Giles S. Rich, Federal Circuit (1990)

“We look to the words of the claims themselves … to define the scope ofthe patented invention.”
Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576 (Fed. Cir1996)

“It is a ‘bedrock principle’ of patent law that ‘the claims of a patent define the invention to which the patentee is entitled the right to exclude.’”
Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc)

The above quotations are often cited in discussions and analysis of claim construction, typically in prelude to infringement or validity analysis. But when it comes to determining patent eligibility, there is a clear split within the Federal Circuit as to the importance of claim language, driven by the divergent stances that various members of the court take toward the fundamental question of what counts as an invention.

Continue Reading The Importance of Claim Language in Determining Patent Eligibility

By: Robert R. Sachs

The Federal Circuit’s en banc decision in CLS Bank Int’l v. Alice Corp., __  F.3d __, No. 2011-1301, 2013 WL 1920941 (Fed. Cir. May 10, 2013) was roundly criticized as a “nightmare,” further cementing the impression that the court was confused and in conflict over the requirements of patent eligibility under 35 U.S.C § 101. The six non-precedential opinions were seen as leaving patent applicants and owners alike without guidance, let alone predictability, as to whether their patents were valid. Alice Corp.’s patents covered computer-implemented methods and systems for a third-party intermediary to ensure real-time settlement of currency exchange transactions between counterparties. Judges Lourie, Dyk, Wallach, Reyna and Prost appeared to take a hard stand against such software-based financial inventions, finding that neither the method nor system claims were patent-eligible. Under Lourie’s “integrated approach,” the patent claims lacked any “meaningful limitations” and thereby preempted all “practical applications” of the abstract idea of third-party settlement. Taking a middle position, Judges Rader, Moore, Linn and O’Malley agreed that the method claims were not patent-eligible, but argued that the system claims were patent-eligible because they contained limitations that were not necessary and inherent in the abstract idea. At the other end of the bench, Judges Linn and O’Malley argued that the method claims were indeed patent-eligible because they included limitations that prevented the claims from being “unduly preemptive.”

Continue Reading Rader’s Olive Branch: <i>Ultramercial II</i> Resolves the Judicial Deadlock of <i>CLS Bank</i>

By: Robert R. Sachs, Jennifer R. Bush

In our previous post, we explored the philosophical aspects of what is a law of nature. We can now apply that analysis and consider whether Prometheus’ claim recites a law of nature under the variously described criteria. Here is the claim 1 of the ‘623 patent:

1. A method of optimizing therapeutic efficacy for treatment of an immune-mediated
gastrointestinal disorder, comprising:

(a) administering a drug providing 6-thioguanine to
a subject having said immune-mediated gastrointestinal disorder; and

(b) determining the level of 6-thioguanine in said
subject having said immune-mediated gastrointestinal disorder,

wherein the level of 6-thioguanine less than about
230 pmol per 8×108 red blood cells indicates a need to increase the
amount of said drug subsequently administered to said subject and

wherein the level of 6-thioguanine greater than
about 400 pmol per 8×108 red blood cells indicates a need to
decrease the amount of said drug subsequently administered to said subject. 

Continue Reading <i>Prometheus</i> Unbound II: Does Prometheus’ Claim Recite a Law of Nature?

By: Robert R. Sachs, Jennifer R. Bush

In March 2012, the Supreme Court ruled, in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. ___ (2012), that a patent claim on a method of determining whether a given dose of a particular type of medication was safe and effective was a “law of nature” and thus invalid. In the following two-part series, we will show that the Court’s characterization of Prometheus' patent as nothing more than a law of nature does not withstand critical analysis. 

Prometheus Labs is the exclusive licensee of U.S. patents 6,355,623 and 6,680,302. The patents deal with a protocol to determine the safe and effective dosage for thiopurines, which are medications that treat autoimmune diseases such as Crohn’s disease and ulcerative colitis. These medications metabolize in the patient’s body into 6-thioguanine (“6-TG”). The different rates at which the medications metabolize make it difficult for physicians to determine whether a given dose is too high (and thus toxic) or too low (and thus ineffective). The Prometheus patents’ claims identify the range for safe and effective dosages as those which result in a concentration of 6-TG between about 230 pmol and about 400 pmol per 8×108 RBC red blood cells (“RBC”). The patents claim no underlying biological process that accounts for the differences in metabolization.

The Supreme Court ruled that Prometheus’ claims were not eligible for patent protection, holding that Prometheus did nothing more than identify a law of nature. However, The Court’s analysis of the claim as a law of nature is based on a superficial understanding of the scientific status of laws of nature.

Continue Reading <i>Prometheus</i> Unbound I: The Untethering of Laws of Nature and Patent Eligibility from Scientific Reality