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« IPLAC Seminar on PCT filings and National & Regional Phase Entries | Main | Amicus Briefs in Support of Sequenom's Petition for Rehearing En Banc: NYIPLA »

September 27, 2015

Comments

Congratulations to Dr Fischer for his helpful analysis.

In particular he is right to draw attention to Justice Thomas' careful and circumspect analysis of wild-type BRCA1 eligibility in Myriad - he rightly treated the claim as to mere information rather than a molecule because the patent did not disclose the wild-type full-length molecule or how to obtain it. The invitation that Dr Fischer refers to is consistent with the Court's expressed concern in oral argument not to inflict unacceptable damage on the Biotech industry.

Much of the problem in Ariosa flows from failure to give due weight to to small but important detail. The starting point for the claimed process is NOT paternal DNA but is maternal serum or plasma. The end point of the claimed process is a short (198 bp in Example 1) nucleotide sequence which has been created by in vitro polymerization from single nucleotide starting materials and is in a concentration between 1000 and 1,000,000 times that of the original sequence. There are therefore two differences: (a) the amplified sequences are tangible molecules which are not natural products, and (b) even if that point is rejected they are in a vastly increased concentration imparting new utility. Those who believe that these amplified sequences are natural products circulating in the maternal blood must be credulous enough to believe in the phlogiston theory of combustion, alchemical transmutation of base metal into gold, the flatness of the Earth, and the circular path in which the Sun revolves around it.

I am sceptical that the panel judges genuinely intended to create a new test. Instead, the more credible explanation is inexpert confounding of existing tests.

From the legal standpoint, there is a major failure across many of the decisions on this point to identify (a) the wording in section 101 under which the claimed invention might fall, and (b) the particular judicial sections that apply.

It is profoundly to be hoped that the Federal Circuit will take the opportunity to reconsider the case en banc.

Mr. Cole,

I think that the gambit (if you want to call it that) of "and (b) the particular judicial sections that apply" was explicitly rejected by the Court.

The US Government asked that the analysis be a mix of 101 with 102/103/112 and even though that is SOMEWHAT what the Court did anyway, at the very same time, the Court explicitly said that they will not do that.

Bottom line here is that the Court has been caught dead to rights scrivining in a manner that cannot be rectified one decision to the next into a coherent and cogent position. They have been NOT only legislating from the bench to reach a desired ends, but they have effectively written themselves into a Gordian knot.

"Members of this scientific association are dedicated to identifying and isolating natural products from various sources, and finding use for these isolated compositions as medicines, cosmetics, food additives, etc."

And immediately after Leslie's wonderful speech there was very informative lecture on how to put together an exciting cable infomercial.

Declaring that "everything is ineligible if I am allowed to make a really silly argument!" is, perhaps, the worst "argument" that can possibly made to support Sequenom's claims (or any other claim with similar eligibility problems).

Of course, when you've got no decent arguments, you might as throw everything you have against the wall. Leslie just did.

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