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October 28, 2013

Comments

"Missing from this analysis is that Plaintiffs in the Myriad case deigned not to challenge any of the method claims now asserted by Myriad, and that the method claims invalidated in the Myriad decisions were of a much broader and less specific scope than Myriad's now-asserted claims."

Exactly what eligible, non-conventional, information-gathering steps are in these "more specific" claims that renders them eligible in view of Prometheus?

Do you any of the highly educated writers of this patent blog have any opinion as to whether the recitation of ineligible subject matter can turn a claim that would otherwise be anticipated (or obvious) into an eligible, enforceable claim?

Dear E:

I have no idea whether the claims are novel or non-obvious - that question hans't been litigated anywhere, and while it is recited as an affirmative defense by Ambry and Gene-by-Gene that isn't the point of the post. In their opposition they argue that Mayo and Myriad make the claims facially invalid under Section 101 and that thus Myriad loses its Noerr-Pennington immunity to antitrust liability. Like it or not, the ACLU and PubPat made a strategic decision to challenge claims not infringed by genetic diagnostic methods instead of the method claims Myriad now asserts. Put another way, had Plaintiffs in Myriad challenged claims including ones Myriad is now asserting we would have our answer. We don't.

The fact that you can make arguments that these claims are invalid or Myriad can make arguments that they are not is irrelevant. All they are are arguments, and unless and until a court determines that the synthesis you assert is the law that is all they are.

For what it's worth, I think there are a great many instances where conventional methods (such as formulation methods) are used to make novel and non-obvious pharmaceutical formulations/compositions based on novel compounds. And I think that pharmaceutical composition claims of putatively non-eligible natural products should be patent eligible, because otherwise we will have put doctrinal consistency in place of good sense. But that hasn't happened (yet) and I'm not about to leapfrog over those precedential steps to get to the conclusion you draw.

Ultimately your way may be the way it turns out. But it ain't necessarily so.

Thanks for the comment.

For a person who claims to be an expert (and indeed, I believe you've played on one TV and in the editorial pages of widely read newspapers), it's rather odd that you have "no opinion" on these fundamental patent questions surrounding an intellectual property in a dispute that you've been obsessing over for years. No opinion? That's funny.

"The fact that you can make arguments that these claims are invalid or Myriad can make arguments that they are not is irrelevant."

Sorry, Kevin, but the only arguments and opinions that are "irrelevant" are the ones that are never communicated to anyone.

I asked you a straightforward question and you chose to answer a different question. That's also not "irrelevant". Your opinion about how you wish the Prometheus case had turned out is well-known. But the rule in Prometheus is clear. Care to try answering the question I asked you again, keeping in mind the law that the Federal Circuit is obliged to follow?

The comments to this entry are closed.

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