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September 20, 2015


Justice Breyer is a sharp dude. I don't suppose that appealing to his worldliness can hurt although I don't think it'll make much a difference in this particular case. I also don't believe it helps much to pretend that the patent system is somehow necessary or even helpful (on balance) for promoting "innovations" like the one that Sequenom *claimed* and is working feverishly to resurrect.

Here's a hypothetical for the defenders of this claim to consider:

Biologist uses PCR to identify a new uncultured bacteria that lives in soil. Biologist claims "use PCR to detect [insert name of new species here]".

Question: Is that claim eligible? If so, why? If the claim is eligible, could the claim be made any simpler (i.e., broader?) including specific reference to all additional known methods?

If the claim isn't eligible, why is that the case and how does it differ from Sequenom's claim? What could/should be added to the claim to make it eligible?

These are the sort of immediate and obvious questions everybody should be asking rather than running around spouting hysterical nonsense like "diagnostic claims are dead!"

Oh, and here's a non-hypothetical situation for the defenders of this claim (and the unnecessary expansion of patent right generally) to consider:


.... just a friendly reminder about the totally awesome people out there who'll be taking advantage of every opportunity that you hand them. Biotech trolling was dealt a serious blow by the Supreme Court (because identifying a "correlation" is quite possible the lowest form of innovation that a kindergartner can engage in). Let's not dig that corpse up if we can avoid it, mkay?

You do realized that the story you post was posted in that other blog against you, right? That the items therein are NOT a product of your obsessed against patent system, right?

Get well soon, Patent Docs.

Your citation of the Daraprim situation would be more germane, MM, if it wasn't the case that the drug has been off patent for about 50 years and the reason (for now) that the price can be raised so much is that there is no generic version (because the market is to small to make it worth a generic company's while to spend the money to file an ANDA). Manipulating the FDA regulatory regime in this case at least has nothing to so with the patent system, and nothing to do with the issues in this case.

Your proposition is too general.

PCR is not magic. It uses a specific pair of primers to amplify a specific sequence.

What is the procedure for testing for these bacteria in a sample of soil? What is the skilled person actually doing?

And what of economic or practical value flows from the detection of these bacteria?

Incidentally, there has been proposed a factual matrix, but no specific claim for us to consider. A claim is made of words, and the words are needed before the proposition can be properly considered.

Paul, those are interesting questions you asked. It's unclear whether they are part of your eligibility analysis. Does the "importance" of the "new" fact affect the eligibility of that fact?

As for this: "A claim is made of words, and the words are needed before the proposition can be properly considered"

Riiiiiight. I gave you the claim, Paul. Of course, I could use more words and end up with a claim of the exact same scope (which is pretty much what Sequenom did). Does the number of words in the claim affect your eligibility analysis?

Here's my advice to you, Paul, and others who wish to defend Sequenom's claim: answer the questions I asked. They aren't going away and if you keep running from them like you ran away from similar obvious questions about the claims at issue in Prometheus, it makes your "position" with respect to the law even more transparent -- and weak -- than it already is.

In short: please face the issue and address it. The tiresome "argument" that "this claim must be eligible or else nobody will patent anything anymore" is going to find any more traction this time around then it did when the exact same "argument" was floated in "defense" of Prometheus' claims.


Regrettably detailed facts are important because cases are won or lost on detailed facts.

use of PCR to detect streptococcus charcoalis.

Might be patentable. Might not. All depends on the surrounding facts which we don't know.

So please show us your genius by setting out a detailed claim for us to consider. If it is a method claim, it has a starting point, a set of intermediate human activities and an end point. So what are they in the claim we should consider?

"Might be patentable. Might not. All depends on the surrounding facts "

What "facts" did you have in mind, Paul? That's exactly what I'm trying to get you to articulate. It's like pulling teeth. And -- yes -- this reticence is familiar, as I've already noted.

I gave you a simple, straighforward hypothetical claim and factual scenario for two reasons: (1) so you don't wander off into the weeds obsessing about some sideshow issue; and (2) because it's very similar if not identical to the equally simple "I-claim-the-detection-of-the-fact-I-detected" claim that Sequenom is trying to resurrect.

Just answer the questions, man. They're important.


Why should I answer your questions when you don't answer mine? And yours are insufficiently complete for an answer to be given.


Don't bother to ask, as MM (aka "Malcolm") will never bother to answer your questions, only repeat (over and over) his same old refrain. I learned that long ago.

Paul Cole "Why should I answer your questions when you don't answer mine? "

Last time I checked I asked my questions first, Paul.

But go ahead and avoid the issues, Paul. After all, that strategy has been so successful for you lately.

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