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March 17, 2020


This must be a bitter pill for Ariosa to swallow, given the earlier Ariosa v. Sequenom decision. In both cases a discovery was used as the basis for a method that was novel and unobvious. In fact it would appear that Ariosa's discovery was far more significant. Other than the discovery itself, the steps of each method are conventional. I do not understand the current Federal Circuit logic that finds one method eligible and the other ineligible.

Hey Kevin,

About time the Federal Circuit reversed course on the patent eligibility of what might arguably be a medical diagnostic method. Also time to tell SCOTUS to either put up or shut up in this area of technology.

"And as an added bonus, Judge Reyna dissented in a manner that illustrates his thinking on patent eligibility of inventions involving natural phenomena (and natural products)."

Charitable of you to call it "thinking", Kevin.

Thanks for the write-up.

James: We have speculated in the past, with regard to the Cellzdirect decision, regarding one possible explanation:

it should be noted that the patent-eligible claims here share another similarity to the claims in Diehr not shared by the claims in Mayo or Sequenom or Genetic Technologies or in Myriad III (at least for some of the claims): these claims are related to methods for producing a tangible thing (hepatocyte cultures), not diagnostic information. This distinction remains the one constant between those claims invalidated under Section 101 under recent Supreme Court precedent. Only cases like Funk Bros. and American Fruit Growers v. Brogdex involve patent ineligible tangible products, and in these cases the products were pre-existing (and as noted by the panel did not include method claims). The question remains unanswered whether the tangible/intangible distinction is at the root of the Supreme Court's disaffection with diagnostic methods claims, and perhaps it will take a case that squarely puts this distinction before the Court before we will ever find out.

Thanks for the comment

Dr. Noonan,

One large elephant as to the ‘tangible’ angle: the Alice decision itself held that claims that BOTH sides of that legal dispute agreed to were to tangible computer systems (for which novelty and non-obviousness were ALSO not at issue).

Additionally, we have since that decision seen numerous other tangible systems, from MRI systems to garage door opener systems go down as “Abstract.”

There is NO ‘constant’ that you allude to.

I think that the hand of man is more positively involved in claim 1 here, which apparently has made all the difference. In any event, a very favourable decision for our profession.

Ah, skeptical, I was referring to life sciences cases. Computer cases are, in my view, a different animal and I can't speak to them.

Thanks for making that point.

Dr. Noonan,

Respectfully, 35 USC 101 is not written separately for life science cases versus computer cases, and the (il)logic infects both areas of innovation.

Be aware of (and beware of) any type of “divide and conquer” in various art types when it comes to the larger principles of the laws for protecting innovation.

Agreed, skeptical, I was just referencing what I have any ability to intelligently discuss.

I hear you, Dr. Noonan, and my post was not intended to cast shade on anyone with greater knowledge in one area of innovation or another.

Rather, it was to draw attention to the fact that the larger patent law (and how much larger can you have than 35 USC 101?) is simply Art-Unit agnostic.

If the Court is diving in with exceptions that divvy up what is supposed to be a ‘wide open front gate,’ then all the more reason to cast suspicion on the legislating from the bench.

One of the problems of course IS that extremely intelligent people in one area of innovation may fall prey to a ‘divide and conquer’ type of assault on innovation protection. I will take the opportunity to remind all that this very thing HAS been seen in the aftermath of the AIA. This is a subtle - but pernicious - problem, and is not to be taken as an indictment against those speaking of innovation protection from art areas they know well.

I have been blessed in my long career to have known several art units well, as well as have studied innovation and the benefits to innovation of cross-fertilization across disparate art fields. My expressions may be taken from my own area that I may be able to intelligently discuss.

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