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Title: “Discussing What Is And What Isn’t Patentable”
Guest: Tom McNulty of Lando & Anastasi
Interviewer: Nathan Gobes – Radio Entrepreneurs

Click here to read the transcript

Nathan (1s):
Welcome back Radio Entrepreneurs, listeners and fans. I’m producer Nathan Gobes back here in the studio for another interview, filling in for Jeffrey Davis. I’m joined again by one of our esteemed reporters, Tom McNulty of Lando and Anastasi. Welcome, Tom.

Tom (17s):
It’s always good to be here. Good to see you.

Nathan (20s):
Thanks. And you have an interesting topic for us this morning. Why don’t you fill out listeners?

Tom (25s):
Well, I certainly hope so. You know, I do intellectual property law and kind of the main factor of intellectual property law that most people think of is patents. And when people think about getting patents, they think about things like, is it novel? You know, has it been done before? Is it obvious, you know, that sort of thing, but over the last several years, maybe the last 10 years, a different, a different element of, of patentability has kind of crept into the, into the public awareness and that’s a patent subject matter eligibility. So that’s whether whatever it is that your invention is, is even the subject, the type of subject matter, that that is amenable to patent protection.

Tom (1m 7s):
You know, patents are Penn law is kind of set for statutorily and the statute on, on subject matter eligibility, which is section 1 0 1 basically says that any new, useful, new, and useful process machine manufacturer or composition of matter or any new and useful improvement thereof is basically subject matter on which you can get a patent, excuse me. So things like literary works, musical compositions, things like that don’t fall under one of those categories. So they wouldn’t be subject for patent protection, you know, potentially protectable and copyright and trademark and different things like that, but not under patent protection.

Tom (1m 51s):
So this sort of everyone sort of went along for a while. The S the common elocution of this was basically anything under the sun is patentable, you know, at least in the, in the sort of technological fields, but they’re crept up a number of judicially created exceptions to patentable subject matter. And the, the prime goal behind this seem to be, to prevent monopolization over like fundamental, basic tools of science and technology. You know, the whole point of patent law is to, to have the science and technological fields advanced and grow, and, and you don’t want to restrict that ability. So the types of things that are generally considered not to be patentable subject matter are under these judicial exceptions, abstract ideas, anything that attempts to claim a law of nature, or a product of nature, and anything that attempts to cover algorithms and, or mathematical equations.

Tom (2m 51s):
So basically, you know, try trying to preclude monopolization of these kind of fundamental things.

Nathan (2m 57s):
Yeah. That makes sense. Do you want to talk, you know, in opposite to those exceptions, maybe some of the things that entrepreneurs are not considering as patentable. Cause I think, you know, maybe a lot of people come into starting launching their business, whatever they’re doing, and they’re thinking, oh, I’m not building a widget. So therefore it’s not patentable probably, but they’re probably mistaken.

Tom (3m 18s):
Yeah. There’s, there’s a number of things, you know, like the laws of nature, if you isolated DNA, that DNA that you isolated would not be patentable because it’s a natural product, but if you came up with a new way of isolating it, you know, that might be patentable. If you came up with a artificially created DNA strand, that would be patentable. So it’s really often, often there are kind of ways around these things by claiming message rather than products or,

Nathan (3m 49s):
Oh, I understand there’s some potential shift in the, the judicial standing on these exceptions. Why don’t you talk to us about that? Okay.

Tom (4m 0s):
Well, over the years, you know, these have been, these have been used to try to, you know, like I say, really kind of keep these building blocks clear, but it’s been sort of creeping closer and closer to getting to things that normally would have been considered patentable. There was a process patent was, was found invalid for claiming an eligible subject matter. And this was a test had been developed to measure, excuse me, the levels of metabolite in a patient’s bloodstream, a metabolite being kind of a by-product of you give them the drug and the body breaks it down. And they, they discovered that you could use the metabolite level to determine, you know, changes in dosage that might be needed.

Tom (4m 46s):
They conceded that the actual way to test for the metabolite was all stuff that had been done before. And the, the court invalidated that because they found that, given that all the other stuff in the claim had been done before the test was effectively trying to claim the body’s ability to break down this drug into metabolite, which is a law of nature. So that was sort of invalidated on that ground. Excuse me, you get a lot of these sorts of discussions and issues in the, in the computer field, the software field, there was a claim for using a general purpose computer.

Tom (5m 28s):
So, you know, a standard run of the mill computer programming it, using an algorithm to convert binary code of decimal numbers into pure binary numbers. This was found to be no more than abstract mathematics, because it was taking a mathematical algorithm and just using a general purpose computer to then accomplish what it had done. And that’s, that’s sort of has become one of the themes in the, in the software side is if you take something that has existed before or something that people have done before, and you simply automate it using a general purpose computer, it will be found not to be patentable under an under 1 0 1.

Nathan (6m 5s):
Generally makes sense. It sounds like, you know, it’s, it’s something that, like you said, everybody’s been already doing, just because you, you make it run without having a human sitting there pressing keys doesn’t mean that you’ve really developed anything new.

Tom (6m 20s):
Yeah. I mean, I think a lot of these make sense in terms of whether the claims ultimately should be allowable, but the real question is whether it should be done under subject matter eligibility under some other, you know, anticipation or obviousness kind of test, you know, there’s a lot of these, a lot of these are, are basically looking at whether the, the non law of nature non algorithm part has been done before, which feels much more like a, you know, anticipation or obviousness type of analysis. But the, I mean, the advantageous part of this for accused infringers is these are often being decided at the outset of a litigation. So somebody will file a patent infringement complaint and the defendant rather than answering the complaint will move to dismiss on the grounds that the patent subject matter is not eligible.

Tom (7m 6s):
And they get out of it, you know, very early and considerably cheaper than going through a full blown litigation, you know, but at the same time, there’s a lot of factual analyses that go into whether something has pre-existed, you know, whether it’s been done before that, you know, basically gets done not by a jury, but by a judge and with no real factual basis or no real, no real record to base these decisions on.

Nathan (7m 30s):
Interesting. So if a business owner or entrepreneur out there gets a copyright infringement claim on them, maybe

Tom (7m 37s):
This is

Nathan (7m 40s):
Totally different. A patent infringement claim, perhaps this is something they should be taking a look at or contacting you guys to, to consider.

Tom (7m 49s):
Yeah, I think so the, the one case that sort of brought this to my, I guess, immediate attention came out last year, this company called American axle, they designed a truck axle that has vibration dampening sleeves, which apparently can be they’re very cheap, could be cardboard, could be something like that, excuse me. But the, the claims that they were trying to get were methods of making these, these axles. And apparently the, the real improvement is there’s two different types of vibration that they, that they’re trying to dab in, that they say that their invention does dampen and that’s considered to be an improvement over prior art axles that could dampen one or the other, but not both of these modes, but the problem is the vibration dampening is based on what’s called Hooke’s law, which, you know, generally very generally speaking is, is a law that relates to the detention on a spring versus the stretch on a spring.

Tom (8m 49s):
So it relates to, you know, it relates to dampening and the way they had claimed this, it was basically they identified some of the components. And then the method included a step of tuning them to reduce the vibrations. And the specification made reference to this Hooke’s law, excuse me. And the district court found in the federal circuit agreed that what they were effectively doing was taking a standard, you know, conventional axle and standard axle components, and trying to basically monopolize Hooke’s law with respect to these axles and that they didn’t really put in, you know, in the claims, for example, how you tune it or, or, you know, whether there’s some specific, you know, thickness or dimensionality that that would result in, in these things, they just basically used Hooke’s law to do.

Tom (9m 36s):
So this went to en Banc review at the federal circuit. And the federal circuit is the single circuit court that handles patent law. So they’re effectively, you know, setting the nationwide standard for this sort of thing. And the on-body court basically kind of came to a six, six split, which effectively means that the initial federal circuit opinion stands. And this was very surprising because this is, you know, it’s a clear, tangible thing that’s being, that’s being described. And perhaps not claimed it’s a method of making the axle, but effectively that’s, what’s being claimed. And, and people were very surprised that something, this sort of tangible and concrete might somehow be found not to be eligible.

Tom (10m 20s):
You know, like I say, the statute itself identifies improvements on, on, you know, machines, manufacturers, processes, you know, this would certainly seem to qualify statutorily.

Nathan (10m 35s):
I would agree neither, neither of us are on the courts.

Tom (10m 40s):
No, no, no. So the Supreme court is currently a, there’s a petition for a cert at the Supreme court, and they are deciding whether to take it or not. They have a whole bunch of Amicus briefs and, and they’ve asked for the solicitor general of the United States to chime in, which is usually a sign that they’re going to take it. And if they did, that would likely be this, this term. So it’s an interesting one to sort of follow and see where it says,

Nathan (11m 4s):
Whether they take it on or maybe whether they don’t, but, you know, if you want to maybe summarize what your opinions on what the implications could be for entrepreneurs down the road with, obviously it depends on how they they side, and maybe we do a follow up after that, but, you know, if, do you have any thoughts on it now?

Tom (11m 23s):
Yeah, I think in this case, you know, these are sort of outlining there’s there’s ways you should look at writing your claims when you’re filing a patent application. You know, if you put more specificity into, you know, exactly what physically mechanically would result in these things, these claims would likely have been allowable. And, and quite frankly, if you had put in the specific physical structures and never mentioned to ex law, you know, my opinion examiner probably would not have come up with it on his own or the courts rather, probably when they come up with it on their own, it wasn’t a Chabad, you know, so I think, I think it’s, it’s going to be in part a way of making sure that you’ve worded things appropriately.

Tom (12m 7s):
And in part it’s going to be, you know, really discussing upfront cause Baton applications are not cheap and litigation is not by a significant, significant factor, more, not cheap. So it’s something that people are really going to have to take a look at, really look at claiming from a variety of different angles and, and really consider what you’re getting into in light of the sort of shifting framework. You know, if you’ve got a patent 10 years ago, the, the standards that were applied are not the same as today. And perhaps, you know, perhaps the validity and the eligibility are, are going to be looked at under a different light in a less favorable light.

Nathan (12m 44s):
Hmm. That makes sense. That makes sense. So obviously the, as you said, you know, the specificity and how it’s put together as is highly important. So it’s, it’s definitely good that if people are interested that they reach out to somebody like yourself or any of your, your fellow attorneys and partners at Lando and Anasazi, Tom, how can people reach you if they want to, to get in touch?

Tom (13m 8s):
Well, then get me a T McNulty TMC on U L T And you can find our

Nathan (13m 19s):
Great. And of course you can find Tom all over the Radio Entrepreneurs website. He’s a regular on our show. We’re also on LinkedIn, Facebook, iTunes, YouTube, we’re all over the place too. So search Radio Entrepreneurs, and you’ll, you’ll find us and you’ll find Tom there too. Tom, I want to thank you again for joining our show. We’ll always happy to have you and give us updates like these.

Tom (13m 41s):
It’s always a pleasure.

Nathan (13m 42s):
Thanks. And we’re back with more segments on Radio Entrepreneurs.

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