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« Gensetix, Inc. v. Baylor College of Medicine (S.D. Tex. 2018) | Main | Conference & CLE Calendar »

December 27, 2018


"the Supreme Court and Federal Circuit's recent § 101 jurisprudence has given district court judges the judicial discretion to invalidate patents based on their subjective determination of their eligibility."

Hey Kevin,

How true. For patent-eligibility under Section 101, we no longer have the Rule of Law, but instead the Rule of Judicial Fiat. Frankly, SCOTUS should have taken Sequenom's petition to clean up the mess they created, but chickened out, as usual. With the currently compliant Federal Circuit under Chief Judge Prost's weak leadership, we now have the "perfect storm" that'll drive R&D on medical diagnostics either underground (to be protected as trade secrets) or completely away.

"Unlike CellzDirect the end result is naturally occurring"

Those with any knowledge of chemistry, even that gained at school, would realize that the end result is NOT naturally occurring but a refined product produced by the hand of man under (probably very sophisticated) laboratory conditions. No matter the legal argument, the opinion is essentially based on gross factual error and is therefore fundamentally unsound.

The opinion ranks with Ariosa where Judge Reyna was wrong by a factor of 1,000 to 1,000,000 on the face of his OWN opinion in bringing the international reputation of US patent jurisprudence to a new low. Hopefully when the case reaches the Federal Circuit a judicial panel with some knowledge of patent law and the ability to understand the phrase "greater than approximately 500 base pairs" will deal with the appeal.

The claims are overbroad, and unpatentable for that reason, but as is too often the case, the court is using the 101 sledgehammer where skilled application of the 112 scalpel is called for.

Dear Jim:

I have no issue with invalidity under Section 112, because unlike Section 101 that portion of the statute has a well-developed body of law leading to objective determinations of invalidity. It is the subjectivity, and resulting uncertainty, involved in most Section 101 decisions that troubles me.

Thanks for the comment.

@ Jim

You are totally correct that the claims are very broad, and this is a recurrent issue in most 35 USC 101 cases. However, somebody should visit Judge Illston and teach her the "all elements" rule. And it is in principle impossible to decide whether a claim is qualifying or abstract without first thoroughly understanding the subject matter claimed.

In my view, despite the breadth, the claims have just sufficient structure to fall on the eligible side of the line.

Incidentally according to Google Patents both the patents in issue have granted European equivalents.

Further investigation is impossible at the moment because both the EPO register and esp@cenet are unavailable, probably owing to computer maintenance.

To EG's excellent comment as to: With the currently compliant Federal Circuit under Chief Judge Prost's weak leadership, we now have the "perfect storm" that'll drive R&D on medical diagnostics either underground (to be protected as trade secrets) or completely away.

Yes, and with trade secrets comes power over employees, non-competes. Monopolies will have even greater power over individuals. That's the system that the Fed Cir wants, to shift the burden of tech protection/rights away from courts and to employers to SCREW employees with non-competes, NDAs and threats of suit.

as to comments of BP,

we have the Golden Rule in play (he who has the Gold, makes the rules).

Our Sovereign's long standing (and now eviscerated) system had long promoted innovation by providing for disruptive innovation (which necessarily included the capability of non-practicing entities to dictate terms of use of their innovation).

The capture of Congress (through the likes of such cases as Citizens United) and the animus against Private personal property rights have united two forces against strong patents with two very different philosophical agendas: the Left (ALL property is bad) and the Right** (anything not my property is bad).

**by the Right, I take some liberty and do not mean the traditional Political Right as much as I mean the Right that is made up of established large corporations (typically multinationals with NO allegiance to any one country) and for whom, the mantra of Efficient Infringement has long been the desired end result.

The end result is that innovation itself will suffer. Those that have studied innovation can easily see this as a natural effect of stopping the mechanism of disruptive innovation protection.

As to the quote of:

"Of course, that statement is not entirely apposite to the situation before the Court, and was made before Justice Breyer and a unanimous Court endorsed mixing novelty and obviousness considerations into the subject matter eligibility calculus in Mayo."

Let me also remind all here that THAT case not only choose a specific case as "most on point," but also proclaimed that THAT earlier case was completely UNCHANGED by the Mayo case.

The Court has created a Gordian Knot, and its answer to untying that Knot is to merely proclaim that NO knot exists.

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