Friday, March 23, 2012

Horse-and-buggy thinking at the US Supreme Court?

A post by Kevin Noonan on Prometheus includes the text:

Despite sentiments (dicta, to be accurate) from Bilski v. Kappos regarding the dangers of imposing horse-and-buggy thinking about technology to the 21st Century, the Court seems happy to do so.

Apart from the consequences of the resounding 9-0 vote against the Prometheus claims, Noonan did observe:

In an interesting departure from its recent denigration of the efforts of the legal academy, the Court also signaled its willingness to credit their theories of what drives and sustains innovation against the arguments, based on actual experience, from groups and individuals who have created companies and been involved in innovation in the biotechnology industry.

Work by Lemley first appears in the Prometheus decision in the following:

And so there is a danger that the grant of patents that tie up their use will inhibit future innovation premised upon them, a danger that becomes acute when a patented process amounts to no more than an instruction to “apply the natural law,” or otherwise forecloses more future invention than the underlying discovery could reasonably justify. See generally Lemley, Risch, Sichelman, & Wagner, Life After Bilski, 63 Stan. L. Rev. 1315 (2011) (hereinafter Lemley) (arguing that §101 reflects this kind of concern)

and then

Section 112 requires only a “written description of the invention . . . in such full, clear, concise, and exact terms as to enable any person skilled in the art . . . to make and use the same.” It does not focus on the possibility that a law of nature (or its equivalent) that meets these conditions will nonetheless create the kind of risk that under­ lies the law of nature exception, namely the risk that a patent on the law would significantly impede future innovation. See Lemley 1329–1332 (outlining differences between §§101 and 112); Eisenberg, supra, at ___ (manuscript, at 92–96) (similar). Compare Risch, Everything is Patentable, 75 Tenn. L. Rev. 591 (2008) (defending a minimalist approach to §101) with Lemley (reflecting Risch’s change of mind).

These considerations lead us to decline the Government’s invitation to substitute §§102, 103, and 112 inquires for the better established inquiry under §101.

Yes, it was interesting that a not-yet-published manuscript was cited by the Supreme Court:

See also Eisenberg, Wisdom of the Ages or Dead-Hand Control? Patentable Subject Matter for Diagnostic Methods After In re Bilski, 3 Case W. Res. J. L. Tech. & Internet 1, ___ (forthcoming, 2012) (manuscript, at 85–86, online at files/eisenberg.wisdomordeadhand.patentlyo.pdf (as vis­ ited Mar. 16, 2012, and available in Clerk of Court’s case file))

When IPBiz tried to access files/eisenberg.wisdomordeadhand.patentlyo.pdf, obtained simply a white screen. If somebody does better, please advise.

***Separately, the oral argument for Prometheus


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