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« USPTO News Briefs | Main | Do Diagnostic Method Claims Fall under the Safe Harbor of 35 U.S.C. § 287(c)? »

April 10, 2012



Nice summary of this case. When I first read this case, my initial reaction was "oh no, here comes the collateral damage we feared would come from Mayo Collaborative Services." But having reflected on this case some more, and especially the claims involved, I think Judge Howell's ruling of patent-ineligibility under 35 USC 101 is definitely supportable.

First, I wouldn't characterize ABL's claims as involving medical diagnostics. Instead, as the preamble says, what this method does is to aid in selection of a treatment regime for a patient based on 3 knowledge bases. In fact, I would view the ABL claims as more analogous to those in Bilski, rather than Mayo Collaborative Services.

Second, the only relevancy I see with regard to Mayo Collaborative Services is that patent-eligibility under 35 USC 101 is to be treated as a “threshold” inquiry for patent validity. (In my view, the ABL claims also present potential issues under 35 USC 112, first and second paragraphs.) While I, like others, have reservations to this approach to determining patent claim validity (including no objective standard provided by SCOTUS as to what is or is not an "abstract idea"), the one clear statement from Mayo Collaborative Services is that this is the approach to be taken from now on.

Third, the statement by Judge Howell that: "The Court may conduct a section 101 analysis before the Court conducts a formal construction of claims" I find very problematical. This statement is based on Ultramercial but Ultramercial found the claims patent-eligible under 35 USC 101 and was also based on patent-eligibility being a "coarse screen," not a "threshold" inquiry. Diehr wasn't overruled by Mayo Collaborative Services and Diehr virtually mandates that you must construe what the claim means to determine patent-eligibility under 35 USC 101. In fact, if you don't construe what the claim means before determining patent-eligibility under 35 USC 101, you not only violate what Diehr says, but you also violate at least the second paragraph of 35 USC 112 that the invention is defined by the claim for validity purposes.

Fourth, Judge Howell relies heavily upon In re Meyer, but the ABL claims are much closer to those in In re Grams (claims held patent-ineligible) which she cites only in passing. She also would have been well-advised to address and rely upon the primary holding in the Classen remand decision and not simply make reference to the "additional views" opinions by Newman and Rader. If I were ABL, I would make mention of that in any appeal they might make to the Federal Circuit as that is probably the only chance (and in my opinion, a slim one at that) they've got to gain reversal on the ruling under 35 USC 101.

Fifth, the two "generating steps" in the ABL claims are essentially equivalent to "data gathering" steps. As such, these "generating steps" in the ABL claims are very problematic now in reaching the patent-eligibility zone because they don't prescribe a particular course of treatment. And as Judge Howell correctly notes, these claims read too much like what a doctor might do without using a computer, bringing the "mental steps" doctrine into play. In fact, these ABL claims are in far more danger of being "preemptive" compared to Prometheus' claimed method in Mayo Collaborative Services. The holding in either In re Grams or with respect to the '283 patent claims which were held to the patent-ineligible in the Classen remand are likely to be difficult for these ABL claims to overcome in any appeal to the Federal Circuit.

This comments section is too tight of a spot to explicate on why the SmartGenes decision arises from a judge (B. Howell) who is probably well meaning but suffers from the Technologically-Ignorant-Genes syndrome.

At one point, the court assumes (without supporting evidence) that computers operate just like the human brain operates. This step alone embraces two continents' worth of Technological-Ignorance: (1) How computers operate and (2) How the human brain operates.

What we are seeing from Mayo and its progeny is the extent to which Technological-Ignorance is pandemic within the judicial system. Sigh.

Pardon me for flogging my own pet (and dead) horse. How ironic it is for Einstein to become a poster child for unpatentability. He who began his career working in the Swiss patent office. If we are to take Einstein and Newton as exemplars of natural law, then how to explain that they are in conflict? Newton's law of universal gravitation is in conflict with Einstein's general relativity. Newton's three laws of motion are also not "natural laws," because they are valid only in inertial coordinate systems, which do not exist "naturally" in nature. I guess I would grant patentability to both Newton and Einstein because their laws are incredibly useful products of the human mind.

Morton Tavel, PhD (Physics)

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