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« Examination of Myriad-Mayo Guidance Comments -- The Coalition for 21st Century Medicine | Main | Par Pharmaceutical, Inc. v. TWi Pharmaceuticals, Inc. (Fed. Cir. 2014) »

December 02, 2014


This is an excellent analysis and IMO the best way to separate the 101, 102 and 103 analyses in way consistent with both the statutes and Mayo.

There are some major errors here. Both practitioners and the PTO would be unwise to repeat them, much less institute them as guidelines for claim drafting or examination.

The Coalition: ""[i]t is critical to understand the difference between a law of nature and a statistical correlation."

No, it's not "critical" because there is no meaningful distinction between a "law of nature", a "statistical correlation" or any other fact. Certainly the Supreme Court in Prometheus v. Mayo didn't believe the distinction was important because they refer repeatedly in the decision to the "correlation" discovered by the patentee, not the "natural law".

Statistical correlations, facts, and even non-factual information are abstractions. They are all equally ineligible for protection by a patent. In case that's not clear, let's put it this way: patent claims can not be used to protect any kinds of abstractions or to remove abstractions (including information) from the public domain. It doesn't matter what kinds of words you use in your claim.

"[T]he critical question is whether humans truly made the process or not."

Absolutely false. A human may have "made the process" of thinking about an incredibly important life-saving correlation, or writing that correlation down on a piece of paper, or giving a lecture to a person about the correlation, or putting the correlation on a computer for storage and retrieval. Nevertheless, all those methods are ineligible for patenting. This is elementary patent law -- before and after Mayo v. Prometheus -- and the Coalition's efforts to obscure these basic principles is beyond foolish. Equally disappointing is the apparent lack of any critical contribution by the PatentDocs author who, one would imagine, would know better by now.

The Coalition: "the letter acknowledges that "a claim to a statistical correlation may not be patent-eligible as it is arguably an abstract idea."

Arguably? There is no "argument" that I'm aware of. Correlations -- like any other kind of information -- are inelible for patenting, period. That's always been the case.

The Coalition: "The [Mayo] Court found that the only difference between the prior art method and the claimed method was the "wherein" clauses. But these merely describe (or inform an audience about) a pre-existing but newly "discovered" fact about the process; they do not specify any new or even modified step, structure or element of the process. In this way they are not truly a part of the process and do not "meaningfully limit" the claim (or even limit it at all). This simple fact is the central reason the claims in Mayo were patent ineligible[.]"

Again, the conclusion is simply false. The "central reason" that the claims in Mayo were patent ineligible is that the claims protected ineligible subject matter, i.e., the correlation. If the wherein clause wasn't "limiting", then the claim would be anticipated under 102 because (as admitted by all sides) the other steps recited in the process were old. But that certainly wasn't the Supreme Court's holding.

If the addition or modification of some "step, structure or element" of an old process results in a claim that protects ineligible subject matter (e.g., a correlation or any other fact) then the claim is ineligible, whether or not the claim includes a "wherein" clause. The problem with Prometheus' claim was not a drafting problem. The problem was that Prometheus' claim prevented otherwise lawful actors (clinicians practicing the prior art) from thinking about a new fact without becoming infringers.

It would be easy to be amazed that this Coalition -- and the authors of this blog -- with all their degrees and education could possibly still be confused about the basic facts that led to the Mayo v. Prometheus decision. But we all know that certain lawyers will do and say anything if they think they can profit from it. Right?

Which thread was that again in which Dr. Noonan challenged our ever-changing-moniker friend to a battle of transparencies?

One thing at least is transparent, whether this was intentional, well, I am still...

For the record, the "you're only in it for the money" argument is as false as it is nonsensical. The more complicated it becomes to protect commercialization of innovation because the Court has decided that it doesn't like the way a particular angel is dancing on the head of a rhetorical pin, the more money my brethren will make. For someone who believes that some principles are so evident that disagreeing with them is foolish this seems an odd lack of practical understanding.

And, I don't care who the person or persons behind our readers' monikers may be - I expect that everyone is cognizant of our policies here and while you may think a position is wrong it is rarely advocated out of ignorance of the issues.

" The more complicated it becomes to protect commercialization of innovation because the Court has decided that it doesn't like the way a particular angel is dancing on the head of a rhetorical pin, the more money my brethren will make."

That's a very impressive duststorm, Kevin.

Of course, nothing about Prometheus v. Mayo is or was especially "complicated." Nor was the result particularly suprising. Prometheus wanted a patent claim that turned people who practiced the prior art into infringers when those people thought about some new information (a correlation) that Prometheus chose to publish in its patent application. Somehow you could never seem to wrap your head around that, Kevin, and you still seem to have great difficult acknowledging that such claims are floating out there and present real problems for all kinds of people in every field of endeavor.

In short, some people choose to make these issues seem a lot more complicated than they really are, Kevin. And it's pretty clear that the decision is a conscious decision.

As you said, the more complicated it is, the more money lawyers like you (and me) can make. But one of us has spent a great deal of time trying to explain the simple rule in Prometheus to people and another one of us has done everything in his/her power to make it seem more complicated. Gee, I wonder why.

Perhaps "Kaptkor" should realize that his "simple" explanation fails to reach his objective because it stands for nothing more than the banal "claims must be more than mere aggregations."

Is that thought too complicated?

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