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« Docs at BIO: Steve Burrill's State of the Biotech Industry Report 2012 | Main | Affordable Care Act Survives Supreme Court Review Largely Unscathed, Clearing Way for Biosimilars »

June 27, 2012

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I thought the Armitage brief such a travesty in form and content that I even Googled Armitage.

I was amazed that the man had the credentials he does, and thus even more sickened by the brief.

My biggest fault with the brief is that it has far too many novel interpretations of law supported by far too few citations. Further, some of the citations that do exist are improperly made, incorrectly signaling the supporting case law. It is almost as if the writer thought himself so brilliant that he need not hew to the conventions of law that bind lesser men.

When a statement is made such as "Natural phenomena—gravity being one example—are again concepts." such lack of veracity weighs heavily on my mind. Gravity is more than a concept. And brief writing should be more than an opportunity for commercial expression of fantastical, philosophical, law-should-be-thus pipedreams. We as advocates have a responsibility to advance colorable arguments. The Lilly brief falls far short in this respect.

Kevin,

As you astutely point out, Eli Lilly's "ox" won't be "gored" if Myriad's patents go down. It is also consistent with who pushed for the AIA (the Abominable Inane Act): the multi-national Goliaths.

You are more optimistic than I about the Supreme Court paying attention to this David vs. Goliath issue. So far, the Justices at the Supreme Court (including Breyer) are not taking into account how decisions like Mayo Collaborative Services will continue to slant the playing field in favor of the multi-national pharma Goliaths against the biotech and university Davids. The only mantra that appears to drive the Supreme Court on patent law questions is that all patents are essentially "bad," no matter who gets them (Microsoft v. i4i being the one notable exception).

Kevin-

An excellent analysis, which points out the real sticking points very clearly. I really hope that there are many more impartial and objective opinions expressed like yours, and if we keep at it, the Supremes might actually start to listen in spite of their prior predilections. They seem to forget that Congress can pull the plug on their decisions, by just legislating around them.

That presupposes that enough people are amicably curious enough about their past decisions to suggest that they might have gotten it wrong, and perhaps even doubt their wisdom as regards their qualifications to render decisions like this that are so vitally important.

If they continue, it may take decades to try to *fix* what they wrote.

Best wishes,
Stan~

Stan: "I really hope that there are many more impartial and objective opinions expressed like yours"

Heh -- yes, we all remember how impartial Kevin was when it came to understanding the glaring problem that doomed Prometheus' claims.

You do agree, Kevin, that claims which literally encompass purely mental processes are ineligible for patenting, do you not?

And you do agree that after Prometheus there is no doubt that the mere recitation of an old, conventional step (e.g., "analyzing a blood sample") can not rescue a claim whose only novel feature is thinking a novel thought (e.g., "wherein the presence of X in the sample indicates Y")? Right? Surely you are no longer confused about this predictable result *after* the Prometheus decision.

Or do you find these uncontroversial positions "breathtaking"?

If so, I suggest you get more exercise.

Skeptical "When a statement is made such as "Natural phenomena—gravity being one example—are again concepts." such lack of veracity weighs heavily on my mind. Gravity is more than a concept."

But it surely is a concept, particularly when conceptualizes it. A method of thinking about gravity or any other law of nature or any other fact or even a non-fact is ineligible under 101. And tossing in an old, coventional step isn't going to rescue that claim from ineligibility. The Supreme Court wisely (and predictably) put an end to that game.

If you believe that you can patent a method of thinking about a new concept (any concept, whether true or false, whether rigorous or fanciful, whether useless or profoundly useful) go ahead and try it. You will fail. I mean, some useless examiner at the USPTO might let it slip through the first time but you'll be holding a worthless piece of paper.

Real, Real, Real - take a breath (keeping with the theme of this thread).

The "breathtaking" aspect of the brief is the scope of Lilly's proposed exclusion - claims that not only actually recite a step requiring human thought, but exclusing claims if a step could be performed by human thought, with no exemption if such step could not be (and as you know, it is very had to prove a negative).

As for Prometheus (and this is now pretty old ground), I think there was room to construe the claim so that both the patentee and the Supreme Court could be satisfied - but as I have subsequently learned, Prometheus was not asserting the claim that way. It is certainly the case that you can prevent that sort of extension by merely exclusing the subject matter entirely, but there are babies in that bathwater (and claim 20 is one of them) and I think those claims should be patented. If only because if not, we will return to academic scientists publishing scientific results - target identification - and having that work expropriated by companies foreign and domestic.

There are many who argue that the public should get a benefit from government-sponsored research, and arguably they do when universities support further research or facilities with royalty dollars. I just don't think it is preferable to preclude such a beneficial outcome using per se rules.

And do you seriously think Justice Breyer's opinion is more solid jurisprudence than special pleading regarding his pet peeve/prejudice of the week?

Thanks as always for the engaging dialog.

"The "breathtaking" aspect of the brief is the scope of Lilly's proposed exclusion - claims that not only actually recite a step requiring human thought, but exclusing claims if a step could be performed by human thought, with no exemption if such step could not be (and as you know, it is very had to prove a negative)."

It seems that an acceptable middle ground would be for the Supreme Court (or the Federal Circuit, if they wish to get ahead of the game) to simply hold that any time a practitioner of the prior art is accused of infringing a claim merely because that practitioner has (allegedly) begun *thinking* a "new" thought about the results of his/her conventional measurements, that claim is ineligible under 101.

That approach is entirely consistent with Prometheus and avoids unnecessary speculation about exactly what a human brain is capable of doing.

KIR,

Based on your posts on Patently-O under the pen name MM, I am skeptical that you understand what "approach is entirely consistent with Prometheus" means at all.

You seem to be a one-trick pony with your "new thought" mantra. The many questions you leave unanswered suggest that instead of trotting out that pony you should be shoring up your legal position.

Skeptical: "many questions you leave unanswered"

If you have a question, Septical, go ahead and ask it. Free country and all that.

I would advise reading my comments carefully before doing so, however, lest you appear to be putting words in my mouth or (worse) trolling.

Skeptical: "I am skeptical that you understand what "approach is entirely consistent with Prometheus""

Maybe you have a different understanding of the term "entirely consistent" than the rest of the world. Consider the following:

Does the claim as properly construed prevent any member of the public who is otherwise not infringing a claim from freely (i.e., without infringing) performing acts that are ineligible for patenting? If so, then the claim is ineligible under 101.

Let me know if you believe that the above is inconsistent with the Supreme Court's decision in Prometheus. As you ponder this question, you should be asking yourself: are there any (real or hypothetical) claims that would be found ineligible under that test which the Supreme Court would uphold as eligible under your (thus far not articulated) view of Prometheus? If so, please provide examples of such claims and your reasoning.

Thanks for the engaging dialog.

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