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« Enzo Biochem Inc. v. Applera Corp. (Fed. Cir. 2017) | Main | News from Abroad -- Briefing on Supplementary Protection Certificates for Medicinal Products »

August 08, 2017


Hey Don,

Yet another poster child for the SCOTUS travesty called the Mayo/Alice framework by the serial accused infringer that started all this nonsense. One can only hope that Mayo one day is hoisted on their own patent-ineligible petard.

Thanks for the report, Don. I'm glad these diagnostic tests just develop themselves, without investment from anyone. It means that patent protection is completely unnecessary in the process of bringing a diagnostic test to the market. Heck, I wonder why people even sought these patents in the first place, seeing as how they're completely superfluous. I look forward to the future introduction of more diagnostic tests, which will no doubt continue at the same pace it did prior to the Mayo/Myriad/Alice trifecta.

/end sarcasm/

If you look at the opinion, claim 1 is very broad, but many of the dependent claims are specific and on any reasonable view fall into the domain of eligibility.

Could "new use" claims for the non-natural material have helped?
Would anything that could still be done in a [narrowing] reissue help?
Will the Fed. Cir. panel be able to distinguish Mayo?

Paul: Only claims 6-9 were being asserted by Athena, but I'm not sure that made much of a difference to the District Court, which thought the claims in this case were very similar to the claims at issue in Mayo v. Prometheus.

Paul: When I read the District Court's statement that "[c]ontrary to Plaintiffs' argument, the '820 patent is not a composition patent directed at the creation of the 125I-MuSK auto-antibody complex [but r]ather, the patent is directed at a method for the diagnosis of a disease," I wondered whether a product-by-process claim directed to 125I-MuSK auto-antibody complex might have eliminated the patent eligibility issue while providing some level of protection.

Product-by-process does not save you if the product (by any process) is in the prior art.

Once Athena makes an arguably novel compound to test for a disease condition, how can the claim be abstract. The compound never before existed, and it matters not whether one is claiming a method that requires that novel compound.

This case reasoning demonstrates how the Alice section 101 analysis has slipped into what is a 103 inquiry. I agree claims 1 and 2 are garbage, claims 3-7 are close under Alice, but the 101 analysis should stop with claim 8. Now claims 8-9 maystill be invalid under 103, but in no way should section 101 apply to these claims.

Will or has Alice already poisoned method of treatment claims given the patent has satisfied Rochester. Are Rochester claims now garbage under Alice, rather than 112?

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