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« USPTO Issues Several Final Rules for Implementing AIA Provisions | Main | Association for Molecular Pathology v. United States Patent and Trademark Office (Fed. Cir. 2012) »

August 16, 2012

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Dear Kevin et al.,

Why did the result in this decision not surprise me? Also, Lourie's opinion includes a lengthy paragraph regarding what this case is not about.

No big surprise, but as stated before, big mistake for Myriad. SCOTUS won't buy it, like they didn't buy it in Prometheus. All gene patent supporters will regret this move.

"we reverse the district court’s decision that Myriad’s composition claims to “isolated” DNA molecules cover patent-ineligible products of nature under § 101 because each of the claimed molecules represents a NONNATURALLY OCCURRING COMPOSITION OF MATTER."

An irrefutable, basic fact and not surprisingly the same basic fact that good ol' Skeptical refused to acknowledge.

"SCOTUS won't buy it, like they didn't buy it in Prometheus. All gene patent supporters will regret this move.

David,

Only if SCOTUS basically guts Diamond v. Chakrabarty, which I doubt. Also, even though you don't agree, this case isn't about "gene patents" but about patenting isolated DNA sequences which don't exist in "nature." No matter what you (or others) want to call these isolated DNA sequences, these isolated DNA sequences are man-made "compositions of matter" as Judge Lourie correctly characterized them that nature cannot make and are within the statutory classes of 35 USC 101.

As Judge Lourie also correctly pointed out "policy" considerations should be left to Congress; this case is strictly a matter of claim construction and statutory construction. While SCOTUS might like to believe otherwise, SCOTUS doesn't earn my respect or others in the patent bar by ignoring proper paten claim construction (as Breyer did in Mayo in characterizing "wherein clauses" as a method "steps"), as well as ignoring what the patent statutes say, including 35 USC 101.

"No big surprise, but as stated before, big mistake for Myriad. SCOTUS won't buy it, like they didn't buy it in Prometheus. All gene patent supporters will regret this move."

I love it when they double-down!

Can you tell us what judicially excepted subject matter is pre-empted by Myriad's composition claims, David? Nobody else can. Be the first.

DavidK "SCOTUS won't buy it, like they didn't buy it in Prometheus."

The SCOTUS didn't "it" in Prometheus because "it" was a claim that, when merely read and understood by practitioners of the prior art, turned those practitioners into infringers. Mayo's doctors were accused of infringing simply because they performed unpatentable (old) tests and THOUGHT about the results. That's why the Supreme Court didn't buy "it."

None of those issues are in play with respect to the composition of matter claims.

Easily one of the most unremarkable "remarkable" decisions in the history of patent law. Why doesn't Myriad just give the money it has spent on lawyers in this case to me? Once Prometheus v. Mayo blew up the only patents that actually matter to Myriad's BRCA1/2 testing franchise, Myriad should have exited the case. Myriad doesn't care about the cancer cell screening claims, or the full-length cDNA claims. It might care about the oligo claims, but these are invalid in view of prior art anyway.

"SCOTUS doesn't earn my respect or others in the patent bar by ignoring proper paten claim construction (as Breyer did in Mayo in characterizing "wherein clauses" as a method "steps")"

Stop dissembling, EG. The patentee (Prometheus) insisted that the wherein clauses be construed as steps of thinking about the relationship between the determined TG levels and the need to administer more or less drug. Do I need to explain to you why they insisted on that construction? Hint: all the other steps in the claim were old.

The construction was adopted by the district court and the Federal Circuit.

You've been told this irrefutable fact repeatedly. It's the truth. You have never demonstrated otherwise. What do you call a person who ignores the truth and keeps repeating false or misleading information?

Gary " It might care about the oligo claims, but these are invalid in view of prior art anyway."

Maybe the broadest claims ... but all of them? Curious as to the facts. Can you be more specific?

Keep: It's been discussed here before:

http://www.patentdocs.org/2010/03/caught-in-a-time-warp-the-invalidity-of-brca1-oligonucleotide-claims.html

I'm not going to do a search, but I promise you Myriad will never sue for infringement of these claims.

Thanks for the refresher, Gary. I forgot about that thread!

No "dissembling" KIR. From page 9 of slip opinion in Mayo:

In doing so, it [Prometheus claim] recites an “administering” step, a“determining” step, and a “wherein” step.

You, Breyer, the Federal Circuit, or Prometheus can call them anything you want to, but the proper patent claim terminology for those "whereins" are "clauses" (not separate "steps") which relate to (modify) the "determining step."

"An irrefutable, basic fact and not surprisingly the same basic fact that good ol' Skeptical refused to acknowledge."

You sure do not do justice to your moniker as this is not at all on point to our discussion. Keep it real? Anything but. I am curious though about one thing? Since you raise such a seriosu stink over at Patently-O about sockpuppets, why do you use a different moniker here?

Now to the point at hand: if you read the actual decision, and if you read my actual posts, you will see that they do match in so far as the court ruled that the composition claims in Myriad were not Products of Nature. They evinced a change in kind by the hard work of man and thus were not items in Nature.

This comports completely with my views on the law involved, and with the possible out that I foresaw for Myriad. I was honest in that I stated that I did not know how the case WOULD turn out, as I did not know if the judges would agree that "enough" had been reached. I did say that if the judges DID find enough had been reached, Myriad's claims would stand. Go back and see for yourself.

Can you do that MM? Can you actually read the case and read what I actually posted and understand both?

I am skeptical.

EG, Keep it Real et al., keep dreaming folks. You'll be sorely disappointed. My analysis is well laid out in my various posts over the years, and most recently, at http://whoownsyou-drkoepsell.blogspot.com I'd rather keep my discussion all at one place than skip around the internet.

I've laid out a challenge for counterexamples in my latest post, please do chime in THERE if you can come up with any. I know you're terrified of the Supreme Court on this one, despite your attempt to seem unconcerned with what they do. You believe they will do the "wrong" thing, I believe they will do the right thing. Bloviate all you want, but only time will tell now.

cheers,
David

EG "In doing so, it [Prometheus claim] recites an “administering” step, a“determining” step, and a “wherein” step."

More dissembling.

Are you a patent attorney, EG? Or just an agent?

Yes, the claims "recite" those words. And then there's this thing that courts do called "claim construction." The "wherein" clause was construed by the district court, the Federal Circuit and the Supreme Court to include the process of thinking about the correlation "discovered" by the inventors. It's odd that anyone who alleges to understand anything about patent law would disagree with this. It was indisputed that all steps prior to the wherein clause were old. If the "wherein" clause was not a step of thinking a new thought, how was it that the case was not summarily dismissed as anticipated? That's a rhetorical question. Please don't embarass yourself further by attempting an alternative "explanation."

Or maybe you can tell us, EG: when is the last time you "whereined" something? Tell us how you carry out a "wherein" step.

See, once again we're at that weird juncture where we have to ask whether you are dishonest or ignorant. It's not fun. Okay, it's sort of fun.

Skeptical "you will see that [my earlier drivel does] match in so far as the court ruled that the composition claims in Myriad were not Products of Nature."

Your rank dishonesty is nauseating. In fact, it was this very statement that you hysterically refused to confirm was true or false after it was presented to you for that sole purpose several times.

I'm pretty much finished trying to have any sort of discussion with you. But I will continue to point out where you are full of b.s. whenever it seems prudent or fun to do so. I would advise you to stay on your toes but I know that's impossible for you. I also know that you don't need a tougher skin because you seem incapable of understanding when you've been flogged into ribbons.

Malcolm,

You are all bluster and venom with no substance.

It is easy to see the over-compensation on your part that is going on.

It is easy to see exactly who is "hysterical."

And it is easy to see that you have not understood the conversation from the start.

Skeptical "it is easy to see that you have not understood the conversation from the start."

LOL. One of us has practiced in the exact area at issue here for decades and one of us hasn't. One of us has predicted the result of this case (and the application of Prometheus, another case in this technical area) with perfect accuracy.

The other party to this conversation refused to answer the most fundamental questions about the facts of this case and then pretended that refusal never occurred, almost as if this other party did not understand that the Internet is capable of storing information for easy retrieval. That other party would be you, Skeptical.

Keep digging your hole deeper. Blogtrolls are most attractive when viewed from a great distance, looking down.

Malcolm,

I asked you to check out what was actually written ("almost as if this other party did not understand that the Internet is capable of storing information for easy retrieval" - indeed).

Please return to Patently-O for your games, insults and accusations of things that you yourself engage in.

The comments to this entry are closed.

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