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« Biogen Idec, Inc. v. GlaxoSmithKline LLC (Fed. Cir. 2013) | Main | IPO Conference on a Harmonized Patent World »

April 18, 2013

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Kevin,

Very nice article. Glad you noted at the end the soliloquy between Justice Alito and Hansen. There's a real life example of that hypothetical: it's called Taxol. Or to put it differenlty, you could chew on the bark of the Pacific Yew tree to your heart's content, and not get any significant anti-cancer benefit from the Taxol contained therein.

Dr. Noonan states "Claim 1 is not patent-eligible today, as it reads on the molecule as it exists in nature..."

But does not state the legal basis for this.

Some will say that 102 is sufficient.
Some will say that this is a 101 issue.
But after Prometheus, no one should be saying that 102 does the work of 101.

Preventing patents on those items from nature's warehouse is not a prior art legal issue - thus 102 is not at play. Being known prior is not the driver of that philosophy (as simple 102 doctrine would then suffice).

That leaves [pun intended] 101. And since this decision was expressly remanded in view of Prometheus (and the Federal Cicrcuit gave barely even lip service to that critical driver), should anyone be surprised that the Court makes this 101 focus a central point in their decision?

Thanks, Kevin, for clarifying the issues in a way that (quite frustratingly) has not happened much with this case. I think you pointed to the key argument for patent-eligibility and I hope that this view prevails:

MR. HANSEN: No, that may well be eligible, because you have now taken what was in nature and you've transformed it in two ways. First of all, you've made it substantially more concentrated than it was in nature; and second, you've given it a function. If it doesn't work in the diluted form but does work in a concentrated form, you've given it a new function. And the -- by both changing its nature and by giving it a new function, you may well have patent -

Wow. Absolutely NONE of your examples is legally patentable. I am sure you disagree, but that is because you care more about corporate profits than the law.

@RMJ - The hypotheticals are provided to assess the specific question of subject matter eligibility - not whether they are "legally patentable" (whatever that might mean).

"Not only do not answer the question but obscure it. It is also disquieting to hear that the Justice thinks that the "product of nature" prohibition is "horn-book law"; were that the case, the Court would not need to consider the question before it."

You guys have me to thank for that *muah*.

"Claim 1 is not patent-eligible today, as it reads on the molecule as it exists in nature,"

As, strangely, the discoverer noted when he declined to patent it.

Normally I ignore the posts of Renee Marie Jones as they are typically mindless anti-patent squawking.

But in a sense, here there is a difference.

Looking closer at the claims 2 and 3, the "legally patentable" question is in fact NOT answered on its face.

By the way, I would take "legally patentable" to include both the concept of patent elibility and patentability, so I don't have too much of a qualm with that part of her reply as does Paul.


Claim 2 may not be patent eligible (or patentable for other reasons) on its face. What is missing is whether or not the specific activity is different enough from that which the product of nature has. In this sense, mere isolation may not confer enough for patentability, and is a direct result of the Court's Prometheus case.

As for claim 3, this too may fail, and again can be linked directly to the reasoning of Prometheus. The mere preamble labelling of "pharmaceutical composition" lends nothing to patentabililty (or patent eligibility), and the "diluent, excipient or carrier" portion is effectively equivalent to Prometheus' admonition that the Court's exceptions cannot be circumvented by attempting to limit the use of the item to a particular technological environment (here - the delivery mechanism, which like Prometheus is merely common and old in the art). Also like Proometheus, this is simply not sufficient to transform the nature of the claims. The "effective amount" postion falls to the same (possible) reasoning as in claim 2.

Dear Skeptical:

I think Justice Breyer was careful to recognize an exception for a novel drug, and the hypothetical should be read to be at a time when penicillin was not known in the art. I doubt that the Court will ever say that a beneficial drug was not patent-eligible (see Justice Alito's concerns quoted in the post). And I agree that the specific activity is important per Mr. Hansen's response to the Justice.

Thanks for pointing out the need for clarification.

Dear RMJ:

If you are not Professor Jones, my apologies to her. If you are, a few points. First, please justify your conclusions: after all, the Court is deciding the extent to which claims like the last one are patent-eligible, so a flat "not eligible" is, at best, anticipating the future.

And second, if you are teaching your students that ad hominem attack (however tempting) is an acceptable way to craft a legal argument you do them a disservice. "Renee, you ignorant slut" may be satisfying to say but is hardly persuasive legal argument.

Dr. Noonan, I do hope that Renee is of vintage to recognize the Saturday Night Live context.

Thanks for noticing, Skep. Of course that was my reference, and I would never impugn the good Professor in that way in earnest (despite her willingness to impugn my motives).

Great insights on bad analogies. Thanks for the post!

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