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« Court Report | Main | Court Report -- Part II »

November 24, 2014


Hey Kevin,

Another sad story of Mayo causing nonsensical subjective determinations of patent-eligibility under 35 USC 101. What's even worse is that Prometheus' claimed subject matter didn't even involve a so-called "law of nature" as the drug whose dosage was calibrated by the claimed method didn't even exist in "nature."

It looks like Genetic Technologies dropped the case. Will anyone stand up to this nonsense?

Here, too, Mr. Cole, shall I be at pains to say "I told you so"...?

Interestingly there is a granted European equivalent to this US patent.

However, claim 1 is very difficult to distinguish from what was held ineligible in Mayo. So I fear I will have to defer to Skeptical.

Dear Paul:

Except that everything in Mayo was in the prior art, and nothing in this claim is.

Even if viewed as a small difference, one of great significance I think.

Thanks for the comment.

@ Kevin

I completely agree that if this was a wholly new analysis, never done before, then the fact matrix differs from Mayo where the analysis had been done before (amongst other things by the inventors who had published it) and only the interpretation was novel. In their published paper the Prometheus inventors had gone so far as to recommend carrying out the very research that resulted in the patent in issue.

In particular, if a new and useful analysis never done before is discovered by the inventor then it should be possible to claim it. The Hartranft indicia of hand of man and new utility are satisfied.

The claim calls for detecting the presence of two 577R alleles at the loci encoding amino acid number 577 of the α-actinin-3 (ACTN3) protein. If that was not being done before then there is clearly a new process and eligibility should not be foregone by mere recitation of how the results should be interpreted. It all depends on the facts, and I recall that in Ultramercial the Federal Circuit pointed out how fact-sensitive these cases are.

But if that is the case that the analysis was novel, why did the patentees here fold their tents and stipulate dismissal rather than appealing?

Am I the only sane person? How is this not the right conclusion? The claim quoted above seems to have two fatal flaws:
1. it's a method of predicting and it doesn't even claim how to DO the prediction.
2. And, at best, its merely calling out the correlation.

This is nothing more than an a bad attempt at patenting the scientific discovery not an actual thing. It's not a test. It's not a machine. It's not even really a process that results in a tangible anything: not even a numerical value.

We patent folks need to get over ourselves. Courts are doing a darn good job applying Alice. Even if there's something subjective about the analysis, the results make much more sense than rewarding patent attorneys for crafty words.

Dear mmm:

I doubt it. But your comment does illustrate nicely the problems with having a completely subjective test. You say tomAto and I say tomAHto and without some standards (location, historical era, nationality) there is no way of saying who is right. So it is now with the Section 101 standardless standard.

Would you be happier with this claim (or something like it):

1. A method to select individuals having potential sprinting, strength, or power performance in a human population comprising:
a) analyzing a sample obtained from the human for the presence of one or more genetic variations in a-actinin-3 (ACTN3) gene;
b) detecting the presence of two 577R alleles at the loci encoding amino acid number 577 of the a-actinin-3 (ACTN3) protein;
c) predicting the potential sprinting, strength, or power performance of the human, wherein the presence of two copies of the 577R allele is positively associated with potential sprinting, strength, or power performance; and
d) selecting said individuals for athletic training?

But this just begs the question: why should it not be patentable to discover a natural correlation and then determine a way to use that for human benefit? Because while the correlation preexists the discoverer, turning that discovery into something useful does not.

As a historical example of why that is so, assume that the method was directed to predicting who can dunk a basketball. If that test was performed on Michael Jordan, and he and the test were developed in 1856 and not today, would there still be any usefulness in the test? But the correlation would certainly still exist, and then I might concede that it was not patentable because it did nothing anyone knew enough to care about.

Thanks for the comment. HappyThanksgiving.

I wonder if it would be useful in these cases to argue that the pulling apart of a claim does violence to the interpretation by applying the technique to a composition claim, for example, to the first bicycle, assuming that the prior art was horse-drawn wagons and carts (this may not be a good example, but it sprang to mind). Once one disassembles the bicycle into its components--wheels, brakes, handles, and a support frame--one could see they were all in the prior art, yet of course the particular combination was new and useful. I just think the framework for analysis of method claims is broken and maybe there would be a way to get the court to think about that.

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