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« AMP v. USPTO -- Federal Circuit Confirms Patent Eligibility of Isolated DNA | Main | Forum on Biologics and Biosimilars »

August 16, 2012


"keeping in mind that Chakrabarty was decided by a vote of 5-4, this prospect, particularly in view of the (easily) perceived concerns and prejudices of the present Court, is disquieting."

Your disquiet is my content. But I don't think they need to undo Chakrabarty, merely clarify it. As I've argued before, sometimes man makes natural products (my synthetic O2 example), and Chakrabarty stands for the exceptions of: abstract ideas, natural phenomena, and laws of nature as well as the dictum that "everything under the sun, made by man" should be eligible. Chakrabarty's invention met the criteria I claim matter, the presence both of man's intention and design in the product. Neither O2 if synthesized, nor the genes at issue in Myriad meet those criteria. As I argue in my latest post, Bryson's reasoning approaches this formulation, and I think it will rule the day in the Supreme Court too. We shall see.

Dr. Noonan,

Do you think the attempt at innoculation of "Perhaps that is why the introductory portion of the majority opinion took pains to announce what the case was 'not' about" will be effective in shepparding what the Supreme Court says?

I am skeptical.

"but rather to a new tool that can be used to determine if that relationship exists.""

A new tool or the only "new" tool J. Moore?

"Keeping in mind that Chakrabarty was decided by a vote of 5-4, this prospect, particularly in view of the (easily) perceived concerns and prejudices of the present Court, is disquieting. "

As usual Kev, even though you are no doubt against a finding of invalidity on preemption grounds, you are at least perceptive enough to know when it is coming.

One other thing to keep in mind David is what has Congress said, explicitly or implicitly, about the USPTO's policy of approving the award of patents on isolated gene sequence for at least a decade. As was pointed out by Judge Lourie in the original AMP decision (see slip opinion at pages 29-30), Congress included language in its 2004 appropriation for the USPTO affirming the USPTO's policy of not granting patents on human organisms. At the same time, Congress also stated that this appropriation language didn't change the USPTO policy of granting patents on "genes, stem cells, or similar inventions."

More significantly, Judge Lourie said the following at page 50 of the slip opinion in the AMP remand:

"Congress is presumed to have been aware of the issue, having enacted a comprehensive patent reform act [i.e., the America Invents Act] during the pendency of this case, and it is ultimately for Congress if it wishes to overturn case law and the long practice of the PTO to determine that isolated DNA must be treated differently from other compositions of matter to account for its perceived special function."

In other words, Congress had the chance to speak on this issue in the AIA but chose not to do so. (There are also the Becerra bills that tried to similarly exclude the same or similar subject matter as Myriad's but have gotten nowhere.) So when you, the ACLU, PubPat and others talk about resolving this issue based on "policy" or "philosophy," you need to keep in mind what Congress has already said (or chose not to say) on this issue.

I'm well aware of you O2 example, and you need to address this from the standpoint of science/chemistry and patent claim terminology, not philosophy as you've done. First, I would agree that no one could claim O2 per se as O2 exists in nature (just as no one could claim native DNA). But there's a big difference between O2 in its native state in say air where it's present at ~20% with the other ~80% being nitrogen, and having say a tank containing 100% O2 (which to my knowledge doesn't exist in nature). And thank goodness there is, or our atmosphere would autoignite. Please also note here that I'm talking the difference between a native composition containing O2 (i.e., air) and one created by man (tank containing 100% O2), be it synthesized or purified.

The same is true of Myriad's isolated DNA sequences (as Myriad has defined them and as molecular biology defines them) versus native DNA. Native DNA and Myriad's isolated DNA sequences are different chemical molecules, and Myriad certainly doesn't "own" native DNA (yours, mine, or anyone elses). In fact, without man creating it, there is no Myriad "isolated DNA sequence." Also, for the purposes that Myriad's isolated DNA sequences are used for, native DNA is essentially worthless. And as Kevin and others have stated, researchers are free to investigate native DNA to their heart's content, and are even free to think about, talk about, and even write about Myriad's isolated DNA sequences.

I realize that you and I come from different viewpoints to this issue, and that's fine. But as far as I'm concerned, the question before us in the AMP case isn't about "philosophy," it's about the science/technology involved, what the terms in a patent claim mean (and what they actually cover), and what 35 USC 101 permits to be patent-eligible as deemed by Congress and without resort to "policy questions" that Congress has chosen not address expressly or implicitly.

"and having say a tank containing 100% O2 "

Are you claiming the tank of 100% O2 or just O2 by itself?

"native DNA is essentially worthless."

Excepting of course to make the isolated genes and then use them for those purposes. Because you arbitarily determine that the native gene is not useful for that purpose because, gasp, the patent, by its existence means you can't attribute the usefulness of the claimed isolated gene to the native gene TOO. Which is of course nonsense.

"Because you arbitarily determine that the native gene is not useful for that purpose because, gasp, the patent, by its existence means you can't attribute the usefulness of the claimed isolated gene to the native gene TOO. Which is of course nonsense."

I agree that what you just wrote here is nonsensical. Care to try again?

MM, I'm simply pointing out that the native gene is not worthless. It has worth at least in enabling the procedure of creaing an isolated gene which then has many uses. All those uses could be attributed to the native gene just as well as they could to the isolated gene except for the arbitrary distinction which patent lawlyers like to try to make. They assert that, at the point where their claimed subject matter comes in is where the "worth" or usefulness all begins.

Obviously this is not factually the case in many cases. In the instant case, the natural gene has worth in so far as it allows the construction of a specific isolated gene. That is a substantial use. You could, for instance, claim the method of creating an isolated gene from the natural gene and it would posssess utility even if it went down for other reasons. Just the same for the natural gene.

In just the same manner one can attribute the downstream uses of the isolated gene to the natural gene just as well. We say, for instance, that aluminum is useful to make bicycles with. Silicon is useful to make semiconductors with. In just the same way you could say that aluminum is useful for making this bike, specifically:


Or you could say that silicon is useful for making a very specific transistor.

To take it even a step further, you can say that aluminum ore, or a single teeny tiny crystal of silicon is useful to make those things.

Just so with the natural gene, it is useful to perform all those downstream applications of the isolated gene.

It's the same old nonsense that people advocating for B claims and claims to "programmed computers" (which they presume are new machines per alappat) use. What they do is state that the underlying subject matter (usually judicially excepted like the native gene, or the programming/software per se) is worthless by itself, and then assert that once you have added a further layer of "the hand of man" by either isolating the gene or programming a computer, you have achieved some end which you could not before. They do this by attributing the "ends" that flow from the claimed subject matter solely to that which has been claimed, rather than ALSO to the underlying subject matter (natural gene, software etc.) which is (usually) preempt by the claim.

If it doesn't make sense to you, sorry brosensky I don't have all night to hold your hand through it, nor am I being paid to.

EG, you have never been coherently able to state your position on my claim that your view violates the law of identity. Logic is the background against which all of reality can be understood, especially science, without it, we have mere "texts" or "narratives." I am always astounded by the prevalence of postmodernists in patent law, and saddened. Did man design O2 and intend it to be as it is? No, no more so than man designed the relations between metabolites and safe dosing in the Mayo case. Anyway, as I mentioned in a previous post, my challenge remains at my blog, where I prefer to consolidate my discussions htt://whoownsyou-drkoepsell.blogspot.com

Give me a counterexample, just one, of something man-made but not the product of man's intention and design, that is clearly not a product of nature.

You might also benefit from my course, Logic for Lawyers ;)

Once again 6 you paraphrase what I said out of context. What I said was that native DNA is worthless "for the purposes that Myriad's isolated DNA sequences are used for." I didn't say that native DNA is worthless in general. Please keep the context in mind before making such statements.

"you have never been coherently able to state your position on my claim that your view violates the law of identity."

Only because you want to play on your "philosopher's" playing field, whereas I'm talking about the "science" and "patent law" playing fields. Let's face it Dave, we simply don't speak the same language.

And I've already given you a "counter example" to your O2 scenario, namely a tank containing 100% O2. Tell me/show me where in nature that exists?

Thanks but no thanks on your invitation to your course. I've had more than enough "schooling" from professors, and certainly enough mention by law professors about "logic" and "thinking like a lawyer," only to find out that many of the court cases I read in law school were driven not by "logic," but instead by "politics" and "philosophy." As one who got a degree in chemistry (and a liberal arts education to boot), I had a far better understanding of "logic" before I got to law school.

"Once again 6 you paraphrase what I said out of context."

If your context makes a difference here then I appologize for my having missed it. I saw nothing more than the rank and file arguments of a patent lawlyer made just as they are in other cases.

" What I said was that native DNA is worthless "for the purposes that Myriad's isolated DNA sequences are used for.""

I understand what you want that to mean, and the distinction you desire to create, but I also know what you said actually does mean. It means that you do not attribute all the purposes that Myrad's isolated DNA sequence are put to unto the natural gene which they discovered. But, just as we can attribute all Si based semiconductors to the single crystal used to make the beginning boule, or the aluminum ore used to make the aluminum in a bicycle all those purposes ARE attributable to the natural gene. Factually speaking of course.

Sorry if you took my comments about worthlessness to mean something different. Surely you were aware that it can be used to make an isolated gene. I do not mean to say that you believe otherwise. I merely mean to say that you do not attribute the downstream purposes that Myriad puts the isolated gene to unto the natural gene as is just as well proper to do.


I have answered your questions before but here we go again, the quantity of O2 is an artifact, but the O2 molecules are not. No claim could logically encompass the molecule O2 despite its origin through manufacture, as no matter its source, it will always be a product of nature, not of man.

Your disrespect for the universal nature of logic is truly remarkable. I too was disturbed by the rule of politics and power, rather than logic in law school and practice. I'd think then that we would find common ground in pulling for its resurgence. There was, in fact, a time when it was taught in law schools, and if you ask me, things have gone downhill since its departure.


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