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« Amicus Briefs in Support of Sequenom's Petition for Rehearing En Banc: Paul Gilbert Cole | Main | PTAB Finds Two Sets of Claims to Be Not Abstract »

September 23, 2015


Hey Kevin,

Interesting amicus brief by Novartis, especially its Point II (The Panel Decision Conflicts with the Broader Patent Law by Construing Patent-Eligibility More Restrictively Than Patentability). That is exactly what Ariosa does. Unfortunately, that problem is also attributable to the nonsensical reasoning, as well as the tests, postulated in Mayo (dicta and otherwise), and especially Alice. The damage caused by these broken tests created (out of thin air) by the Royal Nine for patent-eligibility is now cascading downwardly to the Federal Circuit, as well as the district courts, at an alarming rate, some of the latter being acutely aware of how broken and illogical these tests postulated by the Royal Nine for patent-eligibility are. And the result is also predictable: utter chaos and uncertainty as Novartis aptly notes in its brief.

"The panel decision threatens Novartis's "own inventions related to personalized medicine, biomarkers and point-of-care testing"

No doubt many of Novartis' incredibly junky patents are plagued with subject matter eligibility problems. That, however, was *always* the case.

Here's a fact to remember: Novartis -- a Swiss company with $57 billion in sales that always puts its bottom line ahead of every other consideration -- sided with the patentee in Prometheus v. Mayo. Those claims, as every intellectually honest attorney knows, covered a method of (1) collecting data using an old technique and (2) thinking a new thought about that old data.

Is anyone surprised that Novartis is defending Sequenom's tanked claim here? A class of claims that -- if resurrected per Novartis' wishes -- would allow massive companies like Novartis to control who has access to "detect" countless fundamental facts about the human body and a zillion other patent-ineigible natural phenomenon? For that matter, is anyone surprised that Kevin Noonan is carrying water for this incredibly lucrative client? I'm not.

EG: "The damage caused by these broken tests created (out of thin air) by the Royal Nine for patent-eligibility is now cascading downwardly to the Federal Circuit"

There's been no "damage" unless you are counting the invalidation of junk patents that should never have been granted in the first place.

"illogical these tests postulated by the Royal Nine for patent-eligibility are"

What's "illogical" about the test used to find Sequenom's ineligible? You may not like the result but there's nothing "illogical" about it.

I remember quite well, EG, when the issue in Prometheus v. Mayo was set out for you in very plain terms and you were somehow unable to understand the simple logic that mandated such claims be found ineligible (in a nutshell, if you allow people to patent otherwise ineligible facts by characterizing the facts as "determinations" in the context of old data-gathering methods, basic logic dictates that such claims are de facto claims to the facts themselves, at least with respect to practitioners of the prior art. That's pretty easy logic to follow. Even high school educated non-attorneys can follow that logic, which I suppose on of the reasons that certain entitled and self-absorbed patent attorneys get a little nutty when you put it under their entitled noses).

Given that history, EG, can you everyone why on earth we should pay any attention to your detail-less rant about the "illogic" of any decision? That's a serious question. Maybe you're a really rich drug maker whose profits may be threatened a tiny, tiny bit by these decisions and that's why we should pay attention. That's what Novartis seems to think, after all.

"PCR could not be considered inventive per se in 1997, but performing PCR on cffDNA from material blood "surely was," according to the brief."

Last time I checked, PCR doesn't really care what you call the DNA that is being amplified. Moreover, given that (1) it was known that there were fetal cells in maternal serum; (2) it was known that you could PCR DNA from maternal serum; and (3) it was known that cells break and it was known that you could discriminate between fetal DNA and maternal DNA through choice of primers, the argument that the ability to detect cffDNA in maternal serum was some awesomely beyond-any-doubt "inventive" and patent-worthy discovery is highly dubious.

But I suppose if you have nothing else, why not? We had to listen to the same endless lofty pronouncements about Prometheus' incredible "invention" and Myriad's incredible "invention" too even though those "inventions" (as claimed) were of dubious patentability even if you set aside the eligibility considerations (a fact that the oh-so-concerned "experts" here always failed to discuss).

If I discover a new species of bacteria using PCR, can I patent "a method of detecting" that "new" bacteria simply because the bacteria was not previously known to exist?

What about an asteriod? If I discover a new asteroid with a telescope, can I patent a method of using a telescope to detect that asteroid?

These are important questions. Presumably the lovers of Sequenom's claim have thought about these issues and have some helpful insights to share. Maybe they'll even get around to sharing those insights. LOL. Who am I kidding?

I notice how much of these arguments would make so much more sense if assessed under Sections 102 and 103.

Kevin, the problem is that except for Step 1, the rest of the Alice-Mayo "analysis" is almost entirely based on concepts from Sections 102, 103 and 112.

Concepts such as "markedly different", "significantly more", etc. sound like Section 103 concepts.

The concept of "preemption" sounds like a 112 enablement concept.

One of the many problems of what the Supreme Court did in Alice-Mayo is that it totally ignored the other sections of Title 35, such as 35 USC 102, 35 USC 103 and 35 USC 112 that address many of the exact issues that the Supreme Court used to justify its decision to rewrite 35 USC 101.

Nowhere in Alice, Mayo or Myriad is there any serious discussion by the Court explaining why 35 USC 102, 35 USC 103 and 35 USC 112 were not adequate, i.e., that Congress had somehow failed, to address the issues of "significantly more" or "preemption".

I think that the inconsistency of the Supreme Court's own "scrivining" must be brought front and center.

All of this "but this sounds in 102/103/112" may be all fine and good, but the Court itself dismissed this directly in its own (incongruent) writings.

There is an elephant in the room here. It's called legislating from the bench. Furthermore, that is a problem with only one real solution: jurisdiction stripping. That solution has a solid basis in the U.S. Constitution, as patent appeals are not a matter of original jurisdiction for the Supreme Court.

Congress more than 60 years ago rebuffed a Court and its anti-patent mindset.

This time around, that rebuff needs to be stronger.

A lot stronger.

Anything short of that will just afford the Court yet another opportunity to make nonsense and to twist the nose of wax to whatever the Court wants that nose to be.

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