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« Impact of Interim Guidance on Business Method and Software Claims | Main | Court Report »

December 17, 2014

Comments

Dear Myriad,
Rule #1 when you're in a hole: Stop digging.

Kevin,

Well, in addition to a "patent hostile" SCOTUS, we now have a "patent hostile" Federal Circuit. Thanks much Royal Nine, and Judge Dyk for screwing up our area of the law with your nonsensical reasoning that pays no attention to what the patent statutes expressly say.

Following Myriad and Alice, I don't see how you can get to any different conclusion on the claims as written. Frankly, this is the correct outcome.

There is nothing that said Myriad couldn't have merely claimed their actual invention: how they actually implemented their test. But no, they claimed merely comparing in an attempt to capture the unpatentable discovery, rather than the patentable invention. It's an overreach.

The other good thing: it makes it clear, crafty drafting shouldn't be enough to convert the unpatentable to patentable.

I have seen elsewhere the explanation of gorillas being trained to beat each other down instead of reaching for a banana.

The current mindset of the CAFC exemplifies this paradigm.

What Congress set up to be the definitive word on patent law and to bring order out of chaos has been drenched with the cold water of repeated Supreme Court beat downs.

The proxy of Congress has lost their way.
The authority of Congress has been usurped by the Royal Nine, who no longer even attempt to hide their writing of patent law (explicitly including the term 'technological,' and thus showing that their moves become ever bolder, expanding beyond the "implicit').

We need a redux of the movement that brought us the Act of 1952.

Will we see such? Sadly, I remain...

"Unfortunately, the opinion doesn't even give lip service to the direction in the Alice opinion that the claims must also be considered as a whole"

In fact they gave plenty of lip service to the rest of the claim.

The point of "looking at the claim as a whole" is to make sure that one isn't simply identifying some ineligible subject matter lurking in the claim and concluding the eligility analysis there. This is the holding from Diehr (the only worthwhile part of the entire Diehr opinion and the only part that is going to stand the test of time).

But that's not what happened here. In fact, the more you look at Myriad's claims "as a whole" the more transparent their attempt to fence off a part of the human genome becomes.

All this was explained to you numerous times, Kevin.

Please try to do a better job of educating your readers about subject matter eligibility. You're still avoiding the fundamental issues as if pretending they don't exist will make them go away. The issue with Myriad's claims is and has always been their attempt to prevent people from using tools in the public domain to look at parts of the genome that Myriad wishes that it could exclusively control.

The issues are not going away, Kevin. All you're doing by pretending that they issues don't exist is creating unnecessary confusion about the law regarding subject matter eligibility. But of course you may have good reasons for doing that, as we've already discussed.

the Patent Office, which only on Monday issued revised guidelines that acknowledged that functional differences between a patented invention and a natural product can be sufficient for patent eligibility,

This is a completely misleading statement about patent eligibility. To the extent the PTO ever made such a blanket generalization, it is surely wrong. Repeating it doesn't help anybody.

An ineligible nucleic acid composition doesn't become eligible for patenting because someone identifies a new "function" for that nucleic acid.

Functional limitations in claims that are *not* linked to distinguishing physical structures (which are also recited in the claim) are highly suspect limitations and always will be. The PTO was wrong to suggest otherwise and you are wrong to support the PTO for suggesting otherwise.

Again: why create unnecessary confusion, Kevin? Not enough patents out there for you? Serious question. We both know there's no shortage.

Let me be clear: I write not to dispute the outcome but rather how the Court performed the analysis. The primer claims per se may be unpatentable because any particular primer is likely to have been part of a previously disclosed sequence. There is an argument that selection of a particular (and particularly advantageous) primer pair should evince sufficient human inventive contribution to be eligible, but that claim had not been put at issue.

The way the court assessed the method claims ignores entirely the requirement from Diehr (and reiterated in Alice) regarding evaluating the claim as a whole and that is error even if the outcome is correct.

Thanks for the comments

Let me clear: I write not to dispute the outcome but rather how the Court performed the analysis. The primer claims per se may be unpatentable because any particular primer is likely to have been part of a previously disclosed sequence. There is an argument that selection of a particular (and particularly advantageous) primer pair should evince sufficient human inventive contribution to be eligible, but that claim has not been put at issue.

The way the court assessed the method claims ignores entirely the requirement from Diehr (and reiterated in Alice) that the claims be construed as a whole and that is error even if the court comes to the correct conclusion.

How the court performs the assessment of patent eligibility is important because otherwise it is a subjective test (like our friend the Kaptain, who just keeps saying it must be so because it must be so). Not all claims are sound, and claims can be invalid for many reasons. But part of the court's job is to tell us why, according to the rubrics set out by precedent, and to take the shortcut of just not doing the analysis is error if only because it deprives the public of the rationale that should be used in the next case.

Thanks for the comments.

"part of the court's job is to tell us why, according to the rubrics set out by precedent, and to take the shortcut of just not doing the analysis is error"

I don't see any "shortcut." What I see is that you think "consideration of the claims as a whole" means something different than what it actually means.

Again: "consideration of the claims as a whole" means that you need to look at what the claim is protecting and whether that protection accords with restrictions on subject matter eligibility. The CAFC did perform that analysis. Maybe you don't agree with their conclusion but the analysis is there. It's very similar if not identical to the analyses presented in the comments of these threads when this case was discussed earlier.

And to be clear: "consideration of the claims as a whole" also means that you can't simply say "Hey there's ineligible subject matter in the claim so the claim is ineligible," or, conversely, "Hey there's some eligible subject matter (e.g., an old method or an old composition) in the claim so the claim must be eligible."

The first proscription appears in Diehr. The second proscription is Mayo. This is incredibly important stuff and you would be doing your readers a big service if you stopped scratching your head about the latter proscription and began expressing some understanding of why it is so incredibly important to any patent system. Maybe you don't have that understanding. If not, you should acquire it because the courts understand it and so do many of us patent attorneys out here who care as much (or more) about the proper functioning of the system as you claim to.

"If not, you should acquire it because the courts understand it and so do many of us patent attorneys out here who care as much (or more) about the proper functioning of the system as you claim to."

KK (aka MM),

What bunch of malarkey! Kevin isn't the only one to point out that the reasoning in Ambry Genetics is problematic. And "many of us patent attorneys" do care about the "proper functioning of the patent system" and they frankly don't include you. Over and out.

The comments to this entry are closed.

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