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« Examination of Myriad-Mayo Guidance Comments -- The Coalition for 21st Century Medicine -- Part II | Main | PTAB Update -- Amending Claims in an IPR Proceedings »

December 03, 2014

Comments

First table labels are switched...

101 and done.

I think that the prediction of a disposal on remand under section 101 is quite plausible (albeit appalling). I do have to wonder, however, the CAFC explicitly mentioned that the district court might want to consider *enablement* on remand, but did not mention subject matter eligibility. It is almost as if the CAFC judges did not want to have to deal with a 101 invalidation in this case.

Thanks, Skeptical

I think that both courts failed to show proper deference to the USPTO on obviousness. Obviousness was raised during prosecution, and overcome with multiple declarations. Since allowance, the roaring success of the drug should be further evidence of nonobviousness.

The 101 argument should give all pharma companies concern. If you can invalidate on 101 in this case, then you have essentially declared that improvements in formulations are unpatentable, even if the formulation is clearly better than the prior art.

Anon: " If you can invalidate on 101 in this case, then you have essentially declared that improvements in formulations are unpatentable, even if the formulation is clearly better than the prior art."

How on earth do you come up with that?

"The 101 argument"

What 101 argument?

Kevin: "the novelty of the Par claims, like the novelty of Prometheus's claims, reside in the "wherein" clauses, which were in Mayo and are likely to be here insufficient to provide that ineluctable "something more" required by the Mayo opinion to provide subject matter eligibility."

The recitation of some previously undescribed corollary or underlying "result" of an otherwise obvious method is "likely insufficient" to justify a patent on that method. That's the correct result.

But it's a different issue than the issue presented in Mayo.

Of course, the holding of the Federal Circuit was that the method was not obvious. Illustrating that invalidating under Section 101 permits a court to make an obviousness determination outside the scope of Section 103. Need I point out that this cannot have been the will of Congress?

More than that, Dr. Noonan, anyone understanding the history of 103 would see that the will of Congress was expressly the opposite.

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