About the Authors

  • The Authors and Contributors of "Patent Docs" are patent attorneys and agents, many of whom hold doctorates in a diverse array of disciplines.
2018 Juristant Badge - MBHB_165
Juristat #4 Overall Rank

E-mail Newsletter

  • Enter your e-mail address below to receive the "Patent Docs" e-mail newsletter.

Contact the Docs


  • "Patent Docs" does not contain any legal advice whatsoever. This weblog is for informational purposes only, and its publication does not create an attorney-client relationship. In addition, nothing on "Patent Docs" constitutes a solicitation for business. This weblog is intended primarily for other attorneys. Moreover, "Patent Docs" is the personal weblog of the Authors; it is not edited by the Authors' employers or clients and, as such, no part of this weblog may be so attributed. All posts on "Patent Docs" should be double-checked for their accuracy and current applicability.
Juristat #8 Overall Rank


« Akamai Technologies, Inc. v. Limelight Networks, Inc. (Fed. Cir. 2015) | Main | Court Report »

June 22, 2015


Excellent write-up and analysis, as usual. My quibble: "This is surely not what the Court had in mind when deciding Mayo; they deserve the opportunity to clarify the boundaries of patent eligibility with more care." As to the first part of that statement, I'm not convinced: this may be exactly what the Court wanted. And if it's not what the Court wanted, then I don't think "deserve the opportunity" is the right phrase here, unless you mean it in the sense of "deserve to be punished by hearing another one of these patent eligibility cases".

SCOTUS *should* take up this case and clarify itself (but I'm pessimistic), as Sequenom is the reductio ad absurdum of the line of thinking in Mayo, Myriad and Alice. Sequenom is a case in which an absolutely novel and non-obvious invention is denied patenability because the Royal Nine couldn't be bothered to engage their brains and parse their words before they wrote the nonsense of that trio of decisions.

Then again, as you point out, this mess could also have been avoided had the judges on the CAFC engaged in some useful distinguishing - something we know they're still capable of doing, as they've done it exceedingly well following the SCOTUS Teva decision on claim construction.

Meanwhile, investment capital will continue to flow away from inventions like this one, leaving promising therapies and diagnostic methods on the shelf, and leaving the public to contend with a greater number of "untreatable" diseases than it should have to.

In summary ... the applicant tried to claim something un-protectable and failed to claim something protectable.


I agree that this Federal Circuit could have been more bold and distinguished Mayo, especially given that both the majority opinion and Linn's concurring opinion acknowledged that Sequenom's diagnostic method as meritorious, yet patent-ineligible. But I'm not giving a pass to the Royal Nine and especially Breyer who should be castigated for writing that nonsensical opinion in Mayo that squarely led to this mess, only to be followed be equally nonsensical opinions in Myriad and Alice. The Federal Circuit is now "reaping the whirlwind" in this case of what Our Judicial Mount Olympus has unfortunately sown with its technological ignorance and unwillingness to follow the patent statutes, as written. Our High Court is truly an embarrassment.

EKR is right. The claims are so broad they covered the mere paternity test of one defendant.

Should I say "I told you so" now, or wait for Paul Cole to make a post...

Elizabeth and Paul: overbreadth was not the basis of the decision. If it were, we might be having a different conversation. Would your opinion differ if the claims were limited to a specific disease (hemophilia, for example, which it (usually) inherited by males)? I don't think the court's decision would change under those circumstances. And as an aside, Paul, they may cover a paternity test but ironically that use would satisfy Judge Ilston's requirement that there be a commercially viable alternative at the filing date.

I agree wholeheartedly with Dr. Noonan's take on the case. That said, I notice that he relies rather heavily on In re Bergy. It is probably worth pointing out that the CAFC regards Bergy as having been overruled. AMP v. USPTO, 653 F.3d 1329, 1352 n.7 (Fed. Cir. 2012).

I cannot agree with this conclusion. To my mind, when the SCotUS dismisses an appeal as moot, that leaves the lower court precedent in place. Nevertheless, it is clear that at least some CAFC judges regard Bergy as bad law, so it is no surprise that they do not arrive at the same conclusion as Dr. Noonan on the basis of Bergy.

Section 101 was created by the 1952 Patent Act. Accompanying the 1952 amendment is a very clear statement of Congressional intent and purpose for section 101, independent of the other sections. This intent found in the legislative history reproduced below:

Based on title 35 U.S.C.1946 ed., §31(R.S. 4886, amended (1) March.3, 1897, ch.391, §1, 29 Stat. 692(2) May 23, 1930, ch.312, §1, 46 Stat. 376 (3) Aug. 5, 1939, ch.450, §1, 53 Stat.1212).

The corresponding section of existing statute is split into two sections, section 101 relating to the subject matter for which patents may be obtained, and section 102 defining statutory novelty and stating other conditions for patentability.

"Process" has been used as its meaning is more readily grasped than "art" as interpreted, and the definition in section 100 (b) makes it clear that "process or method" is meant.

The remainder of the definition clarifies the status of processes or methods which involve merely the new use of a known process, machine, manufacture, composition of matter, or material; they are processes or methods under the statute and may be patented provided the conditions for patentability are satisfied. (34 J Patent Office Society 549 Full Report House Judiciary Committee May 12 1952)

How has this statute been shifted so far off its intended target?

This isn't any surprise or anything the Federal Circuit didn't already do with the Myriad method claims (In re BRCA1- and BRCA2-Based Heredity Cancer Test Litigation). "The [claimed steps] do nothing more than spell out what practitioners already knew—how to compare gene sequences using routine, ordinary techniques. Nothing is added by identifying the techniques to be used in making the comparison because those comparison techniques were the well-understood, routine, and conventional techniques that a scientist would have thought of when instructed to compare two gene sequences." The rule is that the eligible subject matter part of the claim needs to be patentable (new and non-obvious) separately from the ineligible part. Alice gets you there, and SCOTUS did that on purpose.

Where are the bellows of outrage coupled with calls for statutory reform? What is the biotech and pharma industry waiting for? Surely it is clear that the courts have no interest in fixing this mess they have created, and in fact are making it worse with each decision - I see little point in trying to parse out the nuances and read the tea leaves in the decisions to find a path to what these courts would find to be patent-eligible, while at the same time commercially relevant. I submit that there is only one option, and it must be championed by the biotech/pharma lobby ASAP.


In re Bergy CANNOT be overruled by the case you cite.

In re Bergy is properly referenced as sub nom Chakrabarty - a Supreme Court level case.

Point 1:
Next time I write an application, I will not say anything is "standard" or "routine" or "known in the art." The courts will hold it against me. I will say what was done in a very factual matter. The Background section - which is usually brief, just shrank even more.

Point 2:
I've read Section 101 numerous times, and I fail to find the phrase "inventive concept." I hate this importing of the obviousness considerations into the patentable subject matter analysis. I also detest the Supreme Court's usurping of Congress' job - and that is saying something, because I don't think much of Congress.

Dear Skeptical,

To be clear, I am not saying that the CAFC purports to overturn Bergy in AMP v USPTO. Rather, Judge Lourie notes in his AMP (2012) opinion that he understands the Supreme Court to have overturned Bergy. He cites Parker v. Bergy, 444 U.S. 1028 (1980), which says (in relevant part) "Judgment as to In re Bergy et al. vacated and case remanded with directions to dismiss the appeal as moot." Therefore, Judge Lourie does not regard Bergy as binding precedent.

Diana: You are correct and many groups are involved in calling for legislative reform. BUT the problem is that the Court has the power to make its version of subject matter eligibility the only one, based on its capacity to decide whether Congress has overstepped its exercise of one of the enumerated powers (think Commerce Clause cases from law school). So we need to move gently (much like Judge Rich and PJ Federico did in codifying obviousness) to prevent this outcome. I think the best way is to put into the statute the requirement that the claims be considered as a whole per Diehr (which Mayo did not overrule). But getting this through Congress will be difficult particularly because the Obama Administration is comfortable with the Court's circumscription of patent rights for political and financial reasons.

Thanks for the comment.

Mike: While I agree there are some similarities I think this reading of the Court's precedent goes beyond what was said in Myriad III (but the sum of the CAFC judges involved in both decisions is one of the reasons why I think en banc review will not happen). Here the panel expressly recognized that the invention was groundbreaking etc. and still affirmed, and also argued that the claim "begins and ends with the natural phenomenon." There seemed to be some opportunity after Myriad III that a claim constructed "just so" might pass muster, but that hope is dashed by this opinion.

Thanks for the comment.

Precedential or not, it is Judge Rich's application of the Flook decision to the facts that is illustrative of how concepts like "conventional post-solution activity" have no place in claims to life sciences inventions. Where is the "solution" in these claims? Flook was about an algorithm (which in pure form is an abstract idea), whereas the cffDNA and amplified versions thereof are tangible products of nature or human intervention, respectively. IF the inventors were trying to claim cffDNA per se the panel might have been on firmer ground in relying on Myriad, but the sad truth is that these claims are exactly the type of claims that Justice Thomas referenced in citing Judge Bryson's dissent in the second Myriad CAFC decision. The panel fell into the same trap that the district court did: applying Flook as if it answered the questions left by Mayo.

Benson and Flook were cabined by Diehr as explained in Bilski.

Unfortunately, there was a rather large (purposeful?) degree of misrepresentation after the Bilski case that sought to revive Benson and Flook as if those cases were not affected whatsoever by Diehr.

Thus, we have arrived at further case law that treats the decisions as "interchangeable" when the historical development clearly impugns otherwise.

When the Court itself simply feels that it can do whatever it wants, it does.

Sadly, some do not see this as the problem that it is. Especially in regards to patent law, which is not a vehicle of common law. The Court indeed has usurped the role of the legislative branch. And Congress yawns.

"Precedential or not,... Judge Rich's application of the Flook decision to the facts [in Bergy]... is illustrative of how concepts like 'conventional post-solution activity' have no place in claims to life sciences inventions."

I agree 100%. The Ariosa decision's recourse to the "conventional post-solution activity" trope rather misses the forest for the trees. Sure PCR was routine by the time the inventors filed their patent, but the use of PCR to detect congenital disease in a fetus without amniocentesis was not at all routine.

This decisions reads like a parody. It is a reductio ad absurdum of Mayo, and I am afraid that we have not yet seen absurdissimum to which we are presently reducentes.

Kevin - I understand your concerns, but I think the correction needs to be more specific than asking giving SCOTUS the right to interpret "claim as a whole" - because they claim to have already considered the claim as a whole and STILL came up with (IMO) the wrong answer (see, e.g., Mayo).

Article I, Section 8:
"The Congress shall have power ... To promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries."

35 USC, Section 101:
"Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title."

DISCOVERIES (which presumably many of us believe include specific uses of laws of nature that don't completely preempt the law itself, and natural products which are put into a useful form by the hand of man) appear to me to be subject matter explicitly enumerated and thus intended to be considered patent-eligible by the US Constitution, as well as by the statute. It is the definitions of Section 100 that may need to be made correspondingly more explicit, since SCOTUS seems to be struggling with this as a "judicially-created exception" (and thus THEY are acting unconstitutionally).

35 USC Section 100:
When used in this title unless the context otherwise indicates—
(a) The term “invention” means invention or discovery.
(b) The term “process” means process, art or method, and includes a new use of a known process, machine, manufacture, composition of matter, or material. ...

While this all looks pretty clear to me (has the 35 USC 100 argument been made in these cases?), how could 100 be amended to make it even more clear that discoveries that comprise useful forms of naturally occurring compositions of matter and application of laws of nature which don't preempt all uses of the law are patent eligible? For example:
- If the claim as a whole is directed to a natural product or a law of nature, but the natural product is materially changed by the hand of man into a product that is useful in any way that it would not be, but for the hand of man, including but not limited to level of purity or formulation that does not occur in nature, then it is patent eligible.
- If the claim as a whole is directed to a new use of a known process which uses a law of nature, but which does not preempt all uses of the law of nature itself, then it is patent eligible.

That is just off the top of my head, and I know better minds have already addressed these issues, but I'm not sure I understand why there is a Constitutional question involved that is at all within SCOTUS's purview, since this is a particular area that has clearly and specifically been enumerated and carved out as a power given to the Congress.

And Congress is NOT exactly controlled by Obama.

No, Diane, but the Court asks for the Solicitor General's views often and the Administration can influence the debate. Is there any question that the Court in Myriad merely repackaged the "magic microscope" argument in rendering its decision?

I agree that Section 100 is another avenue to get the definitions we want but have no faith that anything short of an intense lobbying effort by the diagnostic equivalent of the genetic Pharma industry will get anything passed.

As for the Court, it always takes more seriously challenged to the enumerated powers of Congress; done improperly and only a Constitutional amendment will be able to undo the damage.

Greg - judgment was moot - the legal point, not so much.

Judge Lourie is wrong.


With all due respect, I agree with Diane C.'s point of view, as well as that of Skeptical. The problem is that the Royal Nine doesn't constrain its constitutional role properly in interpreting the patent statutes, as written and enacted by Congress, and thus their decisions in the patent area become "arbitrary and capricious" where the doctrine of stare decisis, as illustrated by the Kimbel case, is invoked simply as an excuse to justify otherwise bad precedent, or ignored, as in the case of Diehr in Mayo and Alice, when it becomes inconvenient with their philosophical/political agenda. Also, as Professor Mossoff of George Mason has astutely observed, Our Judicial Mount Olympus ability to factually, correctly, and without revisionist "spin" articulate the history behind the Patent Clause is abysmal, as witnessed by the their reliance upon Thomas Jefferson in Graham when they should have relied upon James Madison who was actually at the Constitutional Convention and wrote about the respective IP Clauses in the Federalist Paper No. 43. (I also won't go into detail on how the Royal Nine have allowed the Commerce Clause to be "used and abused" either.)

You don't engender respect from the patent bar when you act in the manner that the Royal Nine does, including using their ignorance of the technology as an excuse to render decisions having no basis in the facts, invoking "policy concerns" (i.e., "patents may inhibit research") having no factual basis in the record before them, and generally impugning the reputation of the patent bar with snide comments like not letting the "draftsman's art" control claim construction when 35 USC 112, 2nd paragraph says otherwise. It also doesn't help when Our Judicial Mount Olympus continually "browbeats" the Federal Circuit which Congress, in 1982, created that Court to be the arbiter of patent law jurisprudence and with a not so subtle hint to the Royal Nine to "cease and desist" from doing so except in truly egregious cases. The ultimate insult is when the Royal Nine can't even characterize the majority holding of the Federal Circuit correctly, as embarrassingly happened with Alito's opinion in Akamai. How does that engender respect from the patent bar?

Sorry for the long diatribe, but in my opinion, it's the Royal Nine that has overreached its constitutional authority in the area of patent law. And we're paying and going to continue to pay a serious price in technology not being funded or developed, or being simply driven underground and protected as trade secrets because of this unconstitutional overreach. No one individual or group is above the law, and that includes the Royal Nine, whether they recognize or not.

Dr. Noonan,

The answer to your dilemma at 4:30 is to remove the Supreme Court from patent cases.

As long as some Article III court has review power, Marbury will remain satisfied, and patent cases are not within the original jurisdiction of the Supreme Court, so it is well within the authority of Congress to keep such cases away from the so-called Royal Nine.

Will this happen? Well, I remain...


I concur in Skeptical's most recent comment. The only way to avoid the current mess we have with Royal Nine meddling in patent law jurisprudence is for Congress to remove its ability to hear appeals of patent cases. And as even Our Judicial Mount Olympus recognizes, Congress has the constitutional prerogative to do so.

As much as we may think the Court to be an inefficient venue for deciding patent cases, unless amended the Constitution gives the Court the power to "check" the exercise by Congress of the patent clause. The Court might abdicate this responsibility under circumstances (such as a treaty) where signatories agree to be bound by a specialized patent court but I don't see that happening

Thanks for the comments

Dr. Noonan,

I disagree with your post at 12:25. ALL courts are of limited jurisdiction - even the Supreme Court. That same constitution that you mention also provides the power to Congress to set aside matters from that same Supreme Court. All that THAT action need to take into account - from a constitutional firmity point of view - is that said matter NOT be a matter of original jurisdiction of the Supreme Court.

Patent case appeals do not fall into the Supreme Court's original jurisdiction.

I threw the matter in of having at least an Article III Court in the loop for review in order to make sure that the case of Marbury does not open a back door to the Supreme Court. I would beckon you to review that case again, as nowhere in that case did the Court declare that it must be the Supreme Court that must have review, but rather, the Court's holding was that the Judicial Branch have the power of review. A lower court - still within the Judicial Branch - as set up by Congress (again, within the constitutional power of the Congress) meets this requirement.

The path I outline is FULLY constitutional and inoculates patent law from the Supreme Court effects.

Getting Congress to take up this matter is, well, where I remain...

Well, Skeptical, we will need to agree to disagree. I think that patents being an enumerated power makes a difference and that the Court would declare unconstitutional any effort by Congress such as you propose. I am also skeptical that anything like this will ever pass Congress.

I am currently working on a posting concerning this decision.

The same patent survived opposition in Europe, see Appeal Case T 146/07 of 13 December 2011. Surprisingly the CAFC decision does not even mention this, although the decision is accessible with only a few clicks on a web browser, and any knowledgeable person (including patent-experienced judges) would be likely to look at the EPO record as a matter of natural curiosity. Indeed, in the current state of web technology and the extraordinary generosity of the USPTO and the EPO in putting data online, it is arguable that the judges or their law clerks would be negligent if they failed to carry out this simple and straightforward cross-check.

The variance in outcome raises, amongst other things, TRIPS compliance. Ignorance about TRIPS amongst even senior members of the US profession is profound, and it is possible for a European practitioner to raise the issue in a room full of leaders in the profession only to be met with expressions of utter indifference. Non-compliance with international treaties is a matter that SHOULD concern US practitioners, doubly so where the treaty concerned was initiated largely at the initiative of the US and with the objective of bringing other countries into line with what was then US practice.

Interestingly in Europe the problem addressed by the inventors was held to be the detection of foetal nucleic acids with improved sensitivity, or possibly the provision of an alternative source of foetal nucleic acid, and the claimed solution was held to be unobvious. It is interesting to consider how this finding fits with the claim wording in the EPO and in the US and what the implications for 35 USC 101/103 might be.

Dr. Noonan,

Can you tell me more about this "enumerated powers" angle?

As far as I can tell, that in and of itself will not (and cannot) be a deciding factor. Different perhaps - distinctive? I don't see it.

Also, I just don't see that aspect playing out with what is provided by the government's view: http://www.fjc.gov/history/home.nsf/page/jurisdiction_original_supreme.html

As to the actions of Congress, we align there. But that is merely because we lack a Churchill for our times. With continued erosion of its powers, the sleeper may yet awaken.


I'm still with Skeptical on this one. Please note that initially there was no appeal from decisions by the former CCPA until later put in by statute. So providing no appeal in patent cases is not something that hasn't been done before by Congress.

Please also note that Article III, Section 2 gives Congress the authority to "make exceptions to and regulations of the appellate jurisdiction of the Supreme Court," including eliminating any such judicial review by the Supreme. The fact that the Patent Clause is an "enumerated power" as you note does not, in my opinion, affect Congress' ability to limit the scope of the Supreme Court's appellate jurisdiction.

Of course, Congress couldn't remove the Supreme Court's ability to rule on what is truly a constitutional question. But given that the Supreme Court has rarely questioned Congress' authority to enact legislation under the Commerce Clause (also an enumerated power in Article I), do you really think the Supreme Court, with a straight face, would argue that it's view of what "promotes progress" under the Patent Clause is superior to that of Congress? Also, how would you explain the exacting deference the Supreme Court gives to Congress under Copyright Clause as to what constitutes a "limited time" for copyright? Indeed, the differing standards that the Supreme Court seems to apply to the Patent Clause versus the Copyright Clause seems to be completely "arbitrary and capricious" to me.

Dear Skeptical: I think I understand the misunderstanding. The link you posted with your comment above relates to the Court's original jurisdiction, which is limited to those times when the Court is essentially the trial court, mediating a dispute between the States as independent sovereigns.

What I am referring to is the more traditional appellate role stemming from Marbury v. Madison-the Court decides what the law is, where Congress makes those laws.

Here, the issue is how Congress is exercising the power to grant patents, which is a specifically enumerated power ( as opposed to powers to prevent discrimination in favor of locally produced apples, for example, under the Commerce clause due to the effects on interstate commerce that would occur if different states were permitted to raise barriers to sale of apples from other states).

As I see it, the Court is so focused on limiting patent-eligible subject matter because they believe that acting outside the scope of what the Court thinks is patent eligible would not promote progress and thus is outside the scope of Congress's power to do.

Whether we think their view if grounded in fantasy or reality is immaterial - we have the responsibility to do what we can to prevent the Court from rendering an opinion that raises the Constitutional stakes beyond those that Congress can remedy.

Thanks for giving me the opportunity to clarify.

I did mention that the Marbury case is satisfied by an Article III review. Nowhere in that case does it call for a Supreme Court review - I would posit that this is not a mere technicality, given that ANY Article III court is a part of the judicial branch and it was merely a branch to branch review that was at issue in that hallowed case.

I would also add that the Court's "fearfulness" over FUTURE merely possible (read that as conjectural) events is also problematic from the limitations on that body: the requirement for a PRESENT case or controversy and the restriction against advisory opinions.

If the Court is acting out of turn AND doing so for reasons clearly beyond the scope of THEIR authority then we have a duty to correct that situation, NOT shy away from the potential of a more difficult path or mere avoidance of conflict. This touches the meme of the Churchill versus Chamberlain comments.

The comments to this entry are closed.

June 2024

Sun Mon Tue Wed Thu Fri Sat
2 3 4 5 6 7 8
9 10 11 12 13 14 15
16 17 18 19 20 21 22
23 24 25 26 27 28 29