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« PTAB Update -- PTAB Claim Amendment Practice at the Federal Circuit | Main | Webinar on PTAB Appeals Before the Federal Circuit »

December 09, 2015

Comments

"Oxymorphone (Opana, Numorphan, Numorphone) or 14-Hydroxydihydromorphinone is a powerful semi-synthetic opioid analgesic (painkiller) first developed in Germany in 1914,[2] patented in the USA by Endo Pharmaceuticals in 1955[3] and introduced to the United States market in January 1959 and other countries around the same time."

Don,

From Wikipedia. Another "poster child" case for why the holding in Mayo is utter nonsense and factually dishonest. Like the drug being administered in Mayo, the drug being administered here is SYNTHETIC, and therefore cannot be a "law of nature." When will the judiciary, and especially the Royal Nine, come to their senses, and admit that the holding in Mayo based upon patent-eligibility is wrong? These cases should be judged under 35 USC 102/103/112, not 35 USC 101.

the '737 Patent attempts to cover the natural law that the "bioavailability of oxymorphone is increased in people with impaired kidney function."

Hey EG,

Endo is not trying to get patent protection for synthetic Oxymorphone, instead to monopolize a result of a routine metabolic process of everyone's body.

By just testing your blood and telling you 'hey you need to cut down your sugar intake as you are diagnosed as hyperglycemic' won't qualify for invention.

"Endo is not trying to get patent protection for synthetic Oxymorphone, instead to monopolize a result of a routine metabolic process of everyone's body."

Hey Nandy (aka MM, and assorted other pseudonyms),

You (like Breyer and the rest of the Royal Nine) completely missed the relevant point: because the drug is synthetic, the method involving it cannot be a "law of nature," therefore cannot be patent-ineligible under 35 USC 101. Whether this method is patentable as being unobvious under 35 USC 103 is what is relevant and an entirely different matter.

And whether you (or the Royal Nine) agree with my position matters not one iota to me.

The "logic" of:

"instead to monopolize a result of a routine metabolic process of everyone's body."

if applied on its face RULES OUT every single pharma patent.

Every single one.

Even the non-method composition patents.

Why the composition ones? Well, to see that, one just as to remember that a 101 condition is utility. Without this "natural law," every pharma patent will fail for lacking utility. Even the composition ones become a Breyer-like trap of "just apply it." Remove the utility and you fail 101 every bit as if you fail to place your invention into any one of the (broad) statutory categories.

This is an EASY take-away from ALice, in which case it was stipulated (and unquestioned, thus NOT before the Court) that the invention included that which SATISFIED a statutory category aspect of 101**.

Critical thinking on the Supreme Court power trip reveals that they have NULLIFIED the statutory categories -the exceptions as written (poor scriviners as they are), are left to swallow the actual law written by Congress.

**I would note as well that there were claims that satisfied BOTH the statutory category aspect AND the utility aspect - the only two real aspects in the law of 101 as written by Congress, but that's a different point.

skeptical: "f applied on its face RULES OUT every single pharma patent."

Of course that's false but it's part of your easy-to-remember script so we understand why you can't help yourself.

Nandy has the right analysis. There's no point in addressing Guttag since the guy has been off-the-rails since the Supremes too away his lollipop in Prometheus.

Malcolm, aka host of sockpuppets, I would reply to you if I could find some point to which to reply to.

As it is, all you present is ad hominem.

Please have a little more respect for this forum.

Won't lots of substances have higher concentrations in the bloodstream, and reach the site of action, if the kidneys don't eliminate them? So the man-made nature of oxymorphone really has nothing to do with the bioavailability as measured by absolute AUC. It is a natural property of the failure of the kidneys to properly eliminate substances. This is like arguing that oxymorphone is infiniately patentable because it is man-made and has mass, so the fact that it changes weight in different gravitational environments is a man-made result. (After all, you could put it in a sack and use it as a paperweight).

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