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June 26, 2017


"For those with a physics background one can recall... that a small displacement at a first position can result in a large displacement at a later position further along the vector's path... [This] thought[] come[s] unbidden when reading the Federal Circuit's decision on June 16th in Cleveland Clinic Foundation..."

Extremely well said, and an apt analogy. I dare say that Justice Breyer scarcely noticed the deviation of his opinion from the previous path of the law, but as the vector extends toward eternity, the effect of the deviation becomes progressively more pronounced (and absurd).

To my mind, perhaps the most noteworthy thing about this opinion comes in a footnote, where the court observes that the challenger did not bother to raise the §101 defense against the claims that recite a treatment step. Perhaps there is a way forward in that distinction.

Hey Kevin,

This Cleveland Clinic decision is just one more hideous example of why the Mayo/Alice framework is nonsensical, broken, and a legal travesty by SCOTUS that has now infected the Federal Circuit. Sadly, we must rely upon Congress to avoid having medical diagnostic methods potentially become the new Dark Ages because Our Judicial Mount Olympus can't think beyond the 19th Century.

And unsurprisingly here we are. I can't wait for the combined false logic of both Ariosa (if it begins and ends with a JE) and Merial (if it is founded upon a JE). Many thought that maybe the Federal Circuit was trying to punt the Ariosa ball to SCOTUS. Perhaps, the Federal Circuit would do better by issuing a completely nonsensical or unfounded opinion that flat out holds that ALL inventions relating to the life sciences are per se ineligible subject matter. It seems SCOTUS would have to grant cert then. After all, that's where the case law is heading for the life sciences... and the problem is that the series of wrong turns over a plurality of cases over years can be pointed to as stare decisis for the end result, whereas if a court simply goes straight to the absurd end result without all the stupid cases with the little wrong turns, there is a lack of case law to support the absurd end result.

The moment an invention can be described as a "correlation," it is dead in the water.

The Supreme Court has never overturned Diamond v. Diehr, has not found Section 101 to be unconstitutional in light of the Constitution Article I Section 8 Clause 8, which includes "discoveries." In 1789, the word "discovery" meant, and still means: "to uncover," or "to reveal."

Ben's comments above are so true. And yet, there is no way Diamond v. Diehr would pass muster under the current 101 test. It is clear the courts do not want to see patent eligibility in anything diagnostic, yet they refuse to be honest about the clash with Diamond v. Diehr. This makes me think we need the completely nonsensical decision Suzannah calls for to force them to state a clear policy. I would also like the Supreme Court to be honest about how this whole area of law is entirely outside the statutory language.

SRG: agreed

You know, EG, I think the fault lies not in SCOTUS so much as in the seemingly spineless CAFC and the PTO (although the Office is trying to find ways to grant claims).

@ Kevin E Noonan

I entirely agree with your last comment. If you read the CIPA and EPI briefs in Sequenom, you will see that they were written with precisely that point in mind.

I think the 101 mess is mainly the fault of the CAFC. The CAFC could have distinguished and narrowly applied Mayo by explaining that the well-understood, routine, and conventional steps of the claims at issue in Mayo were actually already being performed in the art, i.e., 6-thioguanine was being administered to subjects and its levels were being determined. The CAFC could have distinguished and narrowly applied Myriad by explaining that nucleic acid molecules are unique and unlike any other molecule in this world because of their *informational content*--which SCOTUS emphasized throughout its decision, i.e., the claims were primarily concerned with the information contained in the sequence and isolating a nucleic acid molecule does not change its informational content. The CAFC could have explained that other purified natural products that because of their purity (which are changes in both chemical and physical characteristics) have a therapeutic utility that they do not have as found in nature and thereby distinguish such other purified therapeutic products from both Myriad and Funk Brothers. Instead, it seems that some CAFC judges acted out like petulant children, some CAFC judges have no spine or don't care to take the time to carefully craft their opinions, and some CAFC judges have an agenda and are using judicial activism to find inventions related to the life sciences ineligible. So I say "Shame on you CAFC. Shame."

And, to the patent bar as a whole, shame on us. Shame on us because when the decisions of Mayo and Myriad came out we ran around like our heads were cut off squawking about how many other methods and compositions in the life sciences could be found ineligible based on Mayo and Myriad, which squawkings were likely used by the courts and anti-patent peeps, rather than providing detailed reasoning as to how Mayo and Myriad could be distinguished, which courts could then use as a roadmap and patentees facing 101 challenges could use as citable fodder in support of finding eligibility.

Sorry Dr. Noonan, but not blaming the Supreme Court is purely nonsensical.

Hey Skeptical,

I concur in your judgment that SCOTUS is the primary culprit for the utter mess that patent-eligibility determinations have now. But I also agree with Kevin that the Federal Circuit could have "pushed back" (they did so when Rader was the Chief Judge), yet have failed to do so now (I'm thoroughly unimpressed by Prost as the current Chief Judge). That leaves only Congress to truly fix this utter mess, and they are, unfortunately, consumed by other matters, including the false narrative on the so-called "patent troll" problem.

Hey Skeptical,

Oops, should hit the preview button first. After "have now" in the first sentence of my comment, add "become."


I concur that there is blame that can - and should - go around.

My post though is to the singular notion that SCOTUS is not to blame.

The CAFC has become spineless BECAUSE OF the Supreme Court.

Even when Rader was there, he was of extremely limited ability to "push back." Read again his "push back" in the en banc Alice decision (additional reflections).


"Although Diehr and Diamond v. Chakrabarty, 447 U.S. 303 (1980), betokened decades of enforcing the patent law as written, these giants too have bowed to new judicial influences. Twenty years ago, Judges Newman, Lourie, and I still unanimously agreed on the outcome of Arrythmia. The intervening commotion leaves us with little, if any, agreement amongst us even though the statute has not changed a syllable."

The right decision, for the right reasons.

This junk (i.e., determine and infer garbage) doesn't belong in the system, and it never did. And it's not coming back so please quit the silly whining already.

" Shame on us because when the decisions of Mayo and Myriad came out we ran around like our heads were cut off squawking about how many other methods and compositions in the life sciences could be found ineligible based on Mayo and Myriad, which squawkings were likely used by the courts and anti-patent peeps"
Actually the "squawkings" were mostly laughed at by the grown ups in the room. And we were right: there's tons of eligible subject matter being filed all the time. I've got work coming out of my ears.

Correlation patents are a blight on the system. They always were. It takes about two seconds of educated sober thinking to understand why that's the case. But we're talking about the patent bar where clueless drunks and greedy bottom feeders abound.

Grow up people.


Your "dignified" prose "exemplifies" the grown up model....

Get well soon PatentDocs from yet another sockpuppet of Malcolm Mooney's.

@ Susannah Sundby

I completely agree with your comments - see my comment today in relation to Prism Technologies.

There are diseases for which diagnostics won't be commercially available because the judiciary has said that diagnostic method patents are ineligible under 101. Which means that some people will continue to suffer from such diseases, and some will die sooner than they needed to, because of the lack of diagnostics. [Redacted]

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