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« Court Report | Main | AMP v. Myriad: A Bad Day At Black Rock »

June 16, 2013

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Sometime in the not too distant future, someone is going to argue the Myriad sub silentio repudiates the "inventive concept" concept. Probably won't gain much traction...

Do you really think that a decision from the Court based on one doctrine means that any and all other doctrines are repudiated?

I am VERY...

Prometheus is an example of bad claims making bad law. Hopefully the Federal Circuit will do its part to limit it to its facts -- a method relating to a correlation involving a known compound/parameter with no active steps other than measuring and determining.

cDNA passes the Supreme Court's 101 hurdle, but will likely trip over the 103 hurdle.

What, me worry?

Please read the decision again closer. Not all cDNA passes the 101 hurdle.

I agree with you regarding the 103 hurdle, especially given the obvious to try, marketplace as a driver, combining items without synergy cloud that has developed around 103 since the KSR decision.

cDNA will only trip over the 103 hurdle if the gene or the protein it encodes had already been identified. If you identify a novel gene, describe a sufficient utility (which would likely require linkage to some disease or condition) and claim the cDNA sequence corresponding to the novel gene, then there is no basis for an obviousness rejection. Now, if the protein product had been identified previously and is in the prior art, then you will hit the 103 hurdle and fall on your face (see In re Kubin - Fed Cir case from 2008 or 2009- I think that's the name of the case).

Thanks Matthew for the in re Kubin reminder.

This was an intersting read: http://www.patentdocs.org/2009/04/in-re-kubin-fed-cir-2009.html

However,... since that time, the Supreme Coourt has taken upon itself EVEN MORE of a penchant for confusing 101 with rationales of dubious 103 nature. Not only have 103-like methods gone beyond making 103 rejctions for compositions, these same 103-like method rejections are being inserted into patent eligibility considerations.

Someone (more like 9 someones) are forgetting that something pretty significant happened in 1952 when the common law ability to define invention was stripped from the courts and the pre-cursor of 101, and placed in 103, with a direct admonition not to negate patentability because of the manner in which the invention was made.

Is there anyone in Congress who can step up and tell the nine Justices that their robes are missing?

I am...

Courtney: "Prometheus is an example of bad claims making bad law."

What's "bad" about the holding in Prometheus, Courtney? I don't think it was particularly controversial or "bad" that Myriad lost their method claims which covered merely looking at someone's DNA sequence information and "determining" that they had a particular mutation or not.

I also don't see how the holding in Prometheus was necessary or sufficient to reach the Court's decision here. Any Supreme Court decision can be misapplied. The Funk Brothers case seems to have been the key bit of "bad law" that the Supreme Court relied on, somehow, to reach the result in Myriad.

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