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April 03, 2016


Amicus brief then??? The more voices the better.

There has been an unfortunate tendency to take dicta from Mayo, Myriad and Alice without properly "parsing" these cases to ascertain the critical factual matrix and the underlying rule of law that underlies these decisions. In the case of Myriad, this is doubly puzzling because Justice Thomas set out his ruling no less than twice: at the beginning of his opinion and at the end. In the outcome, careful and considered opinions from the Supreme Court have been over-extended by ill-considered reaction from our profession, the lower courts and the USPTO.

This is a further comment on the need to parse Supreme Court opinions and avoid taking words or passages out of their overall context.

In footnote 2 to a generally well-argued amicus brief, Eli Lilly et al quote Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107, 2111 (2013) (“[W]e hold that a naturally occurring DNA segment is a product of nature and not patent eligible.”).

The full sentence is as follows: "For the reasons that follow, we hold that a naturally occurring DNA segment is a product of nature and not patent eligible MERELY BECAUSE IT HAS BEEN ISOLATED, but that cDNA is patent eligible because it is not naturally occurring."

Partial quotation, removing words from their overall context, wrongly converts a nuanced and qualified prohibition into an absolute prohibition plainly unintended by Justice Thomas. Unfortunately others make the same mistake, which is the source of many of our current problems.

I appreciate the concern, but there are already arguments against the above assertion that "First, Ariosa is cleaner and more sympathetic than past cases and other current cases." It is argued that this is not true of the broadest claims of Ariosa. Those claims are accused of preempting every possible use or application of the valuable Ariosa "discovery," and discoveries have long been part of the Sup. Ct. list of exceptions to patentable subject matter.


Will you change your mind if cert is not granted in Ariosa or if the Supreme Court holds that the claims in Ariosa are patent ineligible under 35 USC 101 based on the reasoning of Mayo?

My question was for Paul Cole. Paul Morgan's post was not visible when I wrote my post.

@ A Rational Person

(a) Cert not granted: No

(b) Decision affirmed: I will brief the resulting decision with care and having identified the relevant rule of law will have no alternative but to apply it in my daily work.

Mr. Morgan,

You r blanket statement of "discoveries have long been part of the Sup. Ct. list of exceptions to patentable subject matter." claims TOO much.

It depends on what you discover, and if you apply that discovery "enough" to have a difference of kind rather than degree.

As Paul Cole aptly (but futility) points out - the parsing has highly deleterious effects. Will calling out this type of behavior stop those pushing certain agendas?

Well to that, I remain....

@ Skeptical

It is not parsing that is the problem, but failure to parse.

It has been said that one of the biggest challenges when briefing a case is parsing an overabundance of information for the most important details. That involves ascertaining the material facts and the holding.

For example, in Myriad the question was whether a naturally occurring segment of deoxyribonucleic acid (DNA) is patent eligible under 35 U. S. C. §101 by virtue of its isolation from the rest of the human genome. In more specific terms the question was whether a claim covering gBRCA1 was “not to a hitherto unknown natural phenomenon, but to a nonnaturally occurring manufacture or composition of matter—a product of human ingenuity ‘having a distinctive name, character [and] use.’”(quoting Hartranft v. Wiegmann, 121 U. S. 609, 615 (1887). Justice Thomas went on to hold that "In this case, by contrast, Myriad did not create anything. To be sure, it found an important and useful gene, but separating that gene from its surrounding genetic material is not an act of invention." Although he refers to the "law of nature exception" the important point is that the discovery of the location of gBRCA1 "by itself, does not render the BRCA genes “new . . . composition[s] of matter,” §101, that are patent eligible."

If you look properly at the material facts in Myriad, and the opinion of Justice Thomas, the material facts are firstly that gBRCA1 does not qualify as a composition of matter because it is neither a mixture of substances nor a composition of matter produced by the hand of man, and does not qualify as a manufacture because it has insufficient new utility, following Hartranft. When you reach cDNA for BRCA1 you have a new composite molecule clearly qualifying as a composition of matter.

If you think about it, there is no need to invoke a law of nature exception and the associated rhetoric to explain the holding. gBRCA1 without more (e.g. concentration or incorporation into a composition of matter) simply does not fall within the relevant statutory categories of section 101. Other natural products are similar, as is made clear in Hartranft, the threshold test being new utility.

Mr. Cole,

My use of parsing is different than yours - I am talking about parsing the full (and proper) language of a decision and ONLY using those parts that allow one to arrive at a desired ends.

This is quite different than your use of removing EXTRANEOUS items and arriving at a place where in the law (as it is to be understood) is APPLIED to the facts of the matter at hand.

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