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« Will "Open Source" be the Future of Genetic Diagnostics? | Main | Peschke Map Technologies LLC v. Rouse Properties Inc. (E.D. Va. 2016) »

March 21, 2016

Comments

Hey Kevin,

Nice job summarizing Sequenom’s petition for cert in Ariosa. In explaining why the “discovery” of the value of the non-cellular portion (previously discarded) of the maternal blood sample was crucial to the claimed invention, SCOTUS might want to also consider EIBEL PROCESS CO. v. MINNESOTA & ONTARIO PAPER CO., 261 U.S. 45 (1923), a case now almost 100 years old. Here’s what Chief Justice Taft (he uses the phrase “discovery” 23 times) had to say there about patenting a Fourdrinier machine that relied upon the "discovery" of importance of the pitch (tilt) of its forming wire (i.e., an application of the effect of gravity):

“[W]e must not lose sight of the fact that one essential part of Eibel's discovery was that the trouble causing the defective paper product under high machine speed was in the disturbance and ripples some 10 feet from the discharge, and that [261 U.S. 45, 68] they were due to the unequal speeds of stock and wire at that point and could be removed by equalizing the speeds. The invention was not the mere use of a high or substantial pitch to remedy a known source of trouble. It was the discovery of the source not before known, and the application of the remedy, for which Eibel was entitled to be rewarded in his patent. Had the trouble which Eibel sought to remedy been the well-known difficulty of too great wetness or dryness of the web at the dandy roll, and had he found that a higher rather than a lower pitch would do that work better, a patent for this improvement might well have been attacked on the ground that he was seeking monopoly for a mere matter of degree. But that is not this case. On the other hand, if all knew that the source of the trouble Eibel was seeking to remedy was where he found it to be, and also knew that increased speed of the stock would remedy it, doubtless it would not have been invention on his part to use the pitch of the wire to increase the speed of the stock, when such pitch had been used before to do the same thing, although for a different purpose and in less degree. We cannot agree with the Circuit Court of Appeals that the causal connection between the unequal speeds of the stock and the wire, and the disturbance and rippling of the stock, and between the latter and the defective quality of the paper in high speeds of the machine, was so obvious that perception of it did not involve discovery which will support a patent. The fact that in a decade of an eager quest for higher speeds this important chain of circumstances had escaped observation, the fact that no one had applied a remedy for the consequent trouble until Eibel, and the final fact that, when he made known his discovery, all adopted his remedy, leave no doubt in our minds that what he saw and did was not obvious, and involve discovery and invention.”

The current SCOTUS could use some of this wisdom from Chief Justice Taft in Ariosa.

EG,

Gravity is a law of nature, and all that we have here is "apply it."

(translating Eibel into modern Supreme Court gobbledygook)

Hey Skeptical,

LOL! My point about the Eibel case is that other justices of SCOTUS have recognized that "discovery" of what makes the "invention" work can be just as important and sometimes even more so, than the "invention" itself. That current SCOTUS has effectively discarded the term "discovery" as being irrelevant to patent-eligibility, much less patentability, even though expressly stated in 35 USC 101, in favor of "implicit exceptions" which are not even in 35 USC 101 is shameful judicial activism untethered to the actual law as written by Congress.

EG

Unfortunately for your argument "discovery" when read in context in the Constitution means disclosure, not new finding as in: "Discover me this plot." That is consistent with "respective writings and discoveries", the latter term covering also drawings and models which at the time were customarily produced.

Of much more value is the case law concerning the "process" category of Section 101 which is well summarised in the relevant section of MPEP.

mmmm I disagree EG.

The result in Eibel was not an abstraction; it was improved production of paper using machinery- an entirely tangible process with an entirely tangible result, which included a physical modification of previous mechanical arrangements.

The result in Sequenom on the other hand is intangible- gaining knowledge of genetic defects- and the invention involves no tangible change to any physical process- only the application of knowledge about where to look for an effect using well-known, unmodified techniques of detection.

The patent has not been barred as an "abstract idea" but it may as well have been had the exception for "natural phenomena" not been available. I think the patent should fail for the former more than the latter, because the patentee is not seeking a monopoly on the phenomena itself, but rather an abstract use of it.

I predict no cert because the question is difficult and the policy problem not great enough to motivate the court to modify its current jurisprudence right now.

"The result in Sequenom on the other hand is intangible- gaining knowledge of genetic defects- and the invention involves no tangible change to any physical process- only the application of knowledge about where to look for an effect using well-known, unmodified techniques of detection."

Martin,

Utter factual nonsense. Without the "discovery" of the value of what was in the non-cellular fraction (cffDNA) which had previously been discarded as worthless, there would have been NO GENETIC TESTING METHOD. That's my point in citing Eibel.

You also have made the same technical mistake that SCOTUS made in Myriad: genetic material, be it isolated DNA or cffDNA, is still a tangible chemical molecule, not solely intangible information. You are way beyond your technical depth.

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