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« Conference & CLE Calendar | Main | Court Report »

April 10, 2016

Comments

The term "directed to" in the first stage of the Mayo/Alice framework is applied unduly broadly.

Consider the process for cooking an omelette. It starts with eggs. It ends with an egg product. That does not mean that the process is directed to eggs. It involves eggs, but it is an over-simplification to say that it is therefore directed to eggs.

Another unfortunate and grossly misapplied instance of the Mayo/Alice framework.

I have seen the following notion expressed elsewhere: ALL pharma should be wary of this case and its logic, as all medicine is "directed to" natural law (what other law is there?) and the use of items that do nothing more than "apply it."

@ Skeptical

Unfortunately I have to agree with you. That is why further explanation of the Myriad/Mayo framework is important, and in the absence of legislative action it can only come from the Supremes.

Although the procedure for invalidation is distressing, the claims looks like it fits well within precedent. My mental model is to look for specific compositions by sequence or structure, or it's too easy to say it pre-empts all uses of a natural law. Detection claims seem all done for.
I've been waiting for cases incorporating measured thresholds or multi-marker algorithms. The patent office is still issuing those kinds of claims, but there don't seem to be any cases to test them yet.

What I find disturbing is the court's misunderstanding of the scientific basis of the invention. The court states that "the patent claim focuses on a newly discovered fact about human biology (the linkage of
coding and non-coding regions of DNA)." This is patently untrue. Linkage disequilibrium was discovered in the 1960's and was taught by standard genetics textbooks prior to the filing date. The court's concern about preemption is misplaced.

Kevin: "that "simple comparison step" was not simple in 1992"

Yes it certainly was, Kevin.

Kevin: "the claimed method enabled the comparison otherwise unavailable in the art."

The "claimed method" did not "enable" one to do anything new at all because there is no new technology recited in the claim. It's just PCR on a non-coding sequence that happens to be genetically linked with another sequence. People had looked at non-coding sequences before using other detection methods. Nobody in the art doubted that those non-coding sequences couldn't be detected with PCR.

By your logic, Kevin, the art also didn't "enable" me to use PCR to detect my son's DNA because my son wasn't conceived. I assume you can see the problem that result presents to the patent system. Let me know if you can't see the problem with that result and I'll simplify it for you even further.

Kevin: "no diagnostic method claim will be safe from the logic set forth in [Ariosa] and in this opinion"

That's not true, of course.

So why would Kevin say it?

It's pretty easy to answer that question. We'll give Kevin a chance to take a breath and walk his assertion back before we waste our time explaining the basics to him ... again.

C'mon, Kevin. You're a smart guy, on paper at least. You think you can swallow your pride, stop the fearmongering and get a grasp on reality? Give it the old college try.

Tell you what, MM. Write me such a claim - a simple one - and I'll let you know what I think

Kevin: "Write me such a claim - a simple one"

I'll give you two such claims.

A. A diagnostic method, comprising [carrying out one or more steps utilizing a structurally distinguished novel non-obvious composition of matter or apparatus].

B. A diagnostic method, comprising [carrying out one or more steps that necessarily result in a previously undescribed non-obvious physical transformation of matter].

Let me know what you think. But please don't waste everyone's time pretending that the GTG's claims fall within the two classes I just described. They don't.

Eric Grote: "Linkage disequilibrium was discovered in the 1960's and was taught by standard genetics textbooks prior to the filing date."

The more granular "discovery" alleged by the inventors was the "discovery" that so-called "non-coding DNA" could be in linkage disequilibrium. The key word here is "alleged" because GTG's game from the beginning has been to kick up dust and flip/flop back and forth between so-called "non-coding DNA" and "junk DNA" whenever it suits them (not that their game affects the 101 analysis, which is the beauty of applying 101 to these claims).

"The court's concern about preemption is misplaced."

What's your reasoning, Eric?

The A. and B. offered by M(alcom or emory) M(ooney or otel) cannot be the sum total of the law, as those options simply do not give full weight to the subject matter category of process.

In each of these simple examples, the invention is simply not in the process, but in the "hard goods" item that can be claimed independently of the process.

It is beyond clear that his attempt to use ONLY the Machine or Transformation "clue" is an attempt to elevate MoT to something more than a clue.

The Supreme Court has made this clear that such "thinking" is simply not correct. MoT is neither required nor sufficient.

It is also undoubtedly clear that M(whatever) M(whatever) is well aware of this fact.

So, to use his own words:

So why would [sockpuppet of the moment] say it?

It's pretty easy to answer that question. We'll give [sockpuppet of the moment] a chance to take a breath and walk his assertion back before we waste our time explaining the basics to him ... again.

C'mon, [sockpuppet of the moment]. You're a smart guy, on paper at least. You think you can swallow your pride, stop the fearmongering and get a grasp on reality? Give it the old college try.


OK, moment's over: simply put: his simple examples fail to cover what the statutory category of process allows.

This is analogous to pretending that one OPTIONAL claim format must be the de facto ONLY legal claim format - something no self-respecting attorney would attempt to do.

Will this commentator do what he asks others to do, to stop and think about these simple points?

Sadly, there is over a decade of evidence available that dictates otherwise.

Sadly, I remain...

Dear Skeptical: there is no need to rebut our friend - he does it so eloquently in his own words.

But thanks for the comment

Skeptical,

"OK, moment's over: simply put: his simple examples fail to cover what the statutory category of process allows."

Further to your point, the claim requirements being proposed by [sockpuppet of the moment] have not been required of patented chemical processes.

You have my problem with the claims I gave you, Kevin?

Let me hear your "thoughts" on why those claims are ineligible. I'm sure they are very serious and thoughtful.

Let's hear them.

Rational Person: "the claim requirements being proposed by [sockpuppet of the moment] have not been required of patented chemical processes."

Maybe you should learn to read English and take a look at the statement of Kevin's that I responded to.

Whether something or the other has "not been required before" is not the issue.

Kevin asked for a simple claim that would be safe from the reasoning in Ariosa and GTG. I provided examples of such claims.

MM: at that level of abstraction they are remarkably worthless. Give me a claim, not your interpretation of what such a claim should look like. You can craft it, or find it in an issued patent.

And I'll tell you what: I'll donate $100 to a charity of your choice if you do it (even if I disagree with you thereafter)

Kevin: "at that level of abstraction they are remarkably worthless."

No, they're not worthless at all for the purpose of this discussion, Kevin. I can understand why you would feel uncomfortable discussing these claims, of course, because they demonstrate why your broad assertion above (which I challenged) is complete baloney.

"You can craft it"

LOL! One of the key points to be made here, Kevin, is that a patent attorney should not be able to sit in front of the computer and pump out an eligible patent claim "on demand". I left out the parts that require some actual innovation for a reason: I'm not innovating an eligible diagnostic claim. I'm discussing what an eligible diagnostic claim will look like, in general. What I've done avoids the confusion created by discussing hypotheticals using non-realistic scenarios (e.g., "imagine that PCR was never invented blah blah blah). You should try it sometime.

"find it in an issued patent"

Why? You can do that as easily as anyone else. I've just given you the roadmap.

Is your "expert" position now that such claims don't exist?

Used to. Not anymore.

The comments to this entry are closed.

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