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Patent
University of Minnesota Law School
Gifford, Daniel J.

Subject Matter
35 U.S.C. 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.

Manufacture: the production of articles for use from raw or prepared materials by giving the materials new forms, qualities, properties, or combinations, whether by hand labor or machinery.(American Fruit Growers)

Composition of matter: 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. (Shell Development Co.)

Non patentable
· Abstract ideas
· Naturally occurring natural phenomena
· Laws of Nature
· Nuclear weapons
· Human life forms

Living Organisms/Naturally Occurring Natural Phenomena
In re Bergy
· The fact that microorganisms are alive is without consequence
Chakrabarty (U.S.)
· Engineered strain of Pseudomonas
· Congress intended a broad reading of PMMC
· Anything under the sun made by man
· It isn’t just Physical Phenomenon that are non-patentable, it is Naturally Occurring Physical Phenomenon
· Chakrabarty has been construed to apply also to multicellular organisms (plants, animals)
· Leave it to Congress to take things off the table (see above)

Laws of Nature
O’Reilly v. Morse
· Claimed the power of electromagnetism, however developed for printing intelligible characters, signs, or letters, at any distance…
· Too broad:
o Does not confine itself to any specific machinery or parts of machinery
o Not supported by the specification
o Could prevent a future inventor from improving the product
o Shuts the door on other inventors and saves the work for himself
· No patent for a principle of nature
o Neilson discovered the hot air principle…patent for the machine only
o Morse discovered that motive force can print at a distance…patent for the mechanism only
The Telephone Cases
· Bell claimed a method of and apparatus for transmitting vocal or other sounds telegraphically
· Both discovery and invention involved in the creation of this device.
· For such discoveries, the law grants patents
o As discoverer, for the art, method, process
o As inventor, for the practical reduction
· Claim allowed because, unlike Morse, the general principle is tied to a particular process

Purified Natural Substances
Parke-Davis
· Purified natural products are patentable
· Even if it were merely an extracted product without change, there is no rule that such products are not patentable (for practical purposes it is changed into something new)

Law Before Parke-Davis
· Ex parte Latimer: fiber from pine needle not patentable
· Such items patentable only where they have been treated and transformed into something new and different from what it was in its natural state
Law After Parke-Davis
· Merk v. Olin, ct sustained patent on vitamin B12 even though it is found in nature (cattle, microorganisms)

Funk Bros.
· Combination of known Rhizobium
· S.C. holds that it is no more than discovery of nature’s handiwork, and not patentable
· Bacteria do not assume new qualities in the mix that they did not have otherwise
· No new behavior, or enlargement of range of infection
· No inventiveness; In more modern terms fails non-obviousness
· Even though this is a product of skill, it is not a product of invention

Lab. Corp. of America v. Metabolite Labs. Inc.
· Metabolite holds patent for correlation of homocysteine levels with vitamin B12/B9 deficiency; sued Lab Corp for infringement
· Plaintiffs won at trial
· Affirmed by the Federal Circuit
· SC. granted cert and then denied hearing
· Justices Breyer, Stevens, and Souter Dissented the dismissal
§ Precedent gives that natural phenomenon are not patentable
§ Patents may stifle research in the area…improperly gain a monopoly over a basic scientific fact
§ This test is not a process of transforming a patient sample in any way, but merely 1) get the results, 2) think about them.
§ No more than to read some numbers in light of medical knowledge
§ By this, anything could be reduced to “process” patent
§ Infringement can occur by thinking

Computer Software
Now qualifies as a literary work, copyrightable (only prevents copying, not independent development)
Can also qualify as a trade secret (no protection against reverse engineering or independent development)
Nether of these really work for a firm that wants to market a piece of software

Computer/mathematical Processes
Gottschalk v. Benson (U.S)
· Process of converting numerical data in a general purpose computer
· Ct days must for patentability process must be
o tied to a particular machine
o transform an article to a different state of thing
· An algorithm is like a law of nature, which is not patentable
· Re-adopted by the Fed Cir in Bilski (post-KSR)
Parker v. Flook (U.S.)
· Catalytic converter system . . . setting of alarm limits
· Unlike Benson, tied to a specific machine
· However, unpatentable because the only inventive part is the algorithm, which is not patentable
Diamond v. Diehr (U.S.)
· Process for curing rubber, several steps are computer executed
· Mathematical formula is not patentable; insignificant post-solution manipulation will not transform to patentable subject matter
· In this case, held patentable because, unlike Gottschalk, petitioners are transforming an article

Determining whether software is patentable after the Trilogy
1. Characterization of the claim – -process, machine, composition of matter, article of manufacture
Mathematical equations not patentable per se, software not patentable per se, but if involves a process, machine, article of manufacture, there may be patentable process
If directed to a specific useful task, may is patentable
Blending of patentable subject matter with utility (as in the Parke-Davis case)
2. Physical transformation
3. Pre and post-algorithm steps
4. Would not pre-empt use of the equation

Alappat (Fed. Cir)
· Machine application – rasterizer for oscilloscope
· Fed Cir held to be patentable – useful, concrete, tangible
State Street Bank

s
· Would a claimed process preempt al practical applications of an algorithm? If no not patentable. (Even if limited to a particular field of use)
· Re-emphasized the presence/absence of pre/post algorithm steps (Diehr) Diehr had non-trivial post-steps, whereas Flook did not
· Hints at agreement with Breyer that Lab Corp patent on b12 . . . Is not allowable. Not enough.
· Three so-called dissents. But only one would have gone the other way. The others concur in the judgment, with different routes. (abstract idea, business methods not patentable)
· Judge Meyer’s view is that business methods are unconstitutional . . . Not a useful art

§ 273 Business Methods Exception
In the wake of State Street…gives business method infringers a defense
Creates prior user rights if process in use (more than 1 year)
Limited to a method, defined as a method of doing or conducting business

A first invents and uses a process – kept as a trade secret
B indep invents – gets patent
B could exclude A.
Not fair?
Prior user rights give A the right to use the process irrespective of the B patent

This is indirect congressional approval for patenting business methods

Utility
Operability

Moral or Beneficial Utility
Lowell v. Lewis: injurious purposes are not patentable
Juicy Whip, Inc. v. Orange Bang: deceptive practices are now ok

Substantial Specific Utility
Brenner v. Manson
· Interference proceeding
· Manson loses because had no specific substantial utility as of the antedate
o Not enough that it shares characteristics with other steroids…this art is too unpredictable
o Not enough …by scientists…does not speak to this specific compound
o Not enough that the production of a steroid is the purpose of the process
In re Brana
· Chemical compound – PTO found insufficient utility
· Activity against induced tumors in mice
· B argues that the compound has similarities with known cancer drugs…(was not sufficient in Brenner)
· The Fed Cir reverses
· Brenner approach distinguishable
§ Treatment of the induced disease in mice sufficient demonstration of utility
§ There is a specific disease involved…a human disease…even if the mice are a model…in vitro effects on human cells…thus there is a firm basis to believe there will be a beneficial use in humans
· PTO utility not at the same level as FDA requirements of utility and efficacy
In re Fisher
· 5 ESTs claimed
· 7 uses of the ESTs given, genome mapping, detect polymorphism…
No knowledge about the gene identity