Patently-O Bits and Bytes

  • PatentLawPic974In March 2010, I reported on the Myriad case where the district court essentially held that all gene patents are invalid.  Since then the popular press has been pushing-hard on gene patenting stories.  My former boss Kevin Noonan (MBHB) has been the go-to-man for reporters looking for a supporter of genetic patents. Noonan is articulate, opinionated, reasonable, and he looks good on camera.  In its article, the Washington Post spends most of its text discussing the fact that Noonan is the former high-school-sweetheart and ex-husband of Supreme Court Justice Sonia Sotomayor.
  • Watch Kevin Noonan on 60–Minutes
  • Watch Kevin Noonan on the Colbert Report

72 thoughts on “Patently-O Bits and Bytes

  1. 72

    Other than the vested inetest of your clients, I am not sure why this is so hard for you to understand Mooney.

  2. 71

    “LOL, Lionel. What if the gene is modified by shortening it?”

    That would obviously fail under both 101 and 102.

  3. 70

    Please enlighten me Malcolm. How are isolated genes essentially different from the ones found in DNA? It should be easy to list the differences for one so knowledgeable. So far I have not seen one substantive difference listed here, but perhaps I missed it.

  4. 69

    But I like how you’re now relying on “magic” to support your position

    that’s pretty funny.

    I am not sure I’m “relying” on any such thing. I’m just too lazy to go into explanations of abstractions. If you would like, let’s call them building blocks of nature. Everything’s made up of them. Man does not change the basic building blocks (yep – the electron, proton and neutron haven’t been added to). Does that mean nothing’s patentable?

  5. 68

    “I believe Element 95 was a man-made element, not found in nature.”

    Yeah, Glenn Seaborg got patents on element 95, as well as elemetn 96. U.S. Patent 3,156,523 covered element 95 (now called americium), while U.S. Patent 3,161,462 covered element 96 (now called curium).

  6. 67

    “But I like how you’re now relying on “magic” to support your position. Really persuasive to a court.”

    Especially since persons skilled in the art of magic don’t like to provide enabling disclosures, ad a general rule.

  7. 65

    “When the magic happens at that abstraction level, the actual molecule configuration just ain’t that important, where as in biologics, it is.”

    The actual “magic” doesn’t happen at an abstraction level different than the actual molecule configuration in biologics? Hmmm, I think it probably does. But I like how you’re now relying on “magic” to support your position. Really persuasive to a court.

  8. 64

    Eventually you’ll figure out that you’re just wanking

    Hey sunshine, I am conscious of when I’m wanking – Not my business, but you seem to have a personal issue there that you should take care of.

    As to the difference in arts (why that is your backyard, isn’t it?) and the different standards applied by the office, your posts sound as bitter and dour as that RWA guy. No doubt that biologics are important, but the computer stuff is simply a different animal with a different abstraction (now you will want to go to the abstraction of electrons-protons-neutrons). When the magic happens at that abstraction level, the actual molecule configuration just ain’t that important, where as in biologics, it is.

    As they say: sucks to be you.

  9. 63

    Third time’s the charm:

    ping The thing about a general purpose computer configured to be a special purpose computer is that the computer is indeed configured differently. At the atomic level, you have a different machine.

    No doubt. The difference is that the USPTO (and WIPO) has created an elaborate, expensive and rigorously enforced system to forces gene patent applicants to describe their inventions at the atomic level. In a crowded field, the claims granted (if any) are typically limited to the precise arrangement of atoms in the molecule.

    Meanwhile, in the “computer-related arts”, applicants are allowed to claim their “modified” computers and “readable media” with words of their own choosing which have nothing to do with the new structures of the compositions being claimed.

    Thanks for trying though, ping. Eventually you’ll figure out that you’re just wanking, but it will most likely be the Federal Circuit explaining it to you.

  10. 61

    repost

    ping The thing about a general purpose computer configured to be a special purpose computer is that the computer is indeed configured differently. At the atomic level, you have a different machine.

    No doubt. The difference is that the USPTO (and WIPO) has created an elaborate, expensive and rigorously enforced system to forces gene patent applicants to describe their inventions at the atomic level. In a crowded field, the claims granted (if any) are typically limited to the precise arrangement of atoms in the molecule.

    Meanwhile, in the “computer-related arts”, applicants are allowed to claim their “modified” computers and “readable media” with words of their own choosing which have nothing to do with the new structures of the compositions being claimed.

    Thanks for trying though, ping. Eventually you’ll figure out that you’re just wanking, but it will most likely be the Federal Circuit explaining it to you.

  11. 60

    ping The thing about a general purpose computer configured to be a special purpose computer is that the computer is indeed configured differently. At the atomic level, you have a different machine.

    No doubt. The difference is that the USPTO (and WIPO) has created an elaborate, expensive and rigorously enforced system to forces gene patent applicants to describe their inventions at the atomic level. In a crowded field, the claims granted (if any) are typically limited to the precise arrangement of atoms in the molecule.

    Meanwhile, in the “computer-related arts”, applicants are allowed to claim their “modified” computers and “readable media” with words of their own choosing which have nothing to do with the new structures of the compositions being claimed.

    Thanks for trying though, ping. Eventually you’ll figure out that you’re just wanking, but it will most likely be the Federal Circuit explaining it to you.

  12. 59

    Malcolm’s point is perfect.

    Now take that logic and extend it to the non-biologics (you do not even have to drop down to the next abstraction level of electrons, protons and neutrons).

    The thing about a general purpose computer configured to be a special purpose computer is that the computer is indeed configured differently. At the atomic level, you have a different machine.

    Now before we get all googly eyed about this being analagous to such differences existing for computers displaying different images on the screen, (or printing press type sets with different configuration of letters), that ‘ol Frankenstein Doctrine re-appears and distinguishes these differences. That monster being the Printed Matter Doctrine. This man-made life creation does scare a lot of people, but I happen to be comfortable with it, and that’s what is really most important, isn’t it?

    I was working in the lab late one night
    When my eyes beheld an eerie sight
    For my monster from his slab began to rise
    And suddenly to my surprise…

    (It all happened in a flash…
    …of genius)

  13. 58

    I believe Element 95 was a man-made element, not found in nature.

    It probably exists from time to time in nature, it just can’t be found in nature because it’s so short-lived and the production facility is so far away.

    So, you are saying that any element found in compound form in nature could be patented in its purified form (assuming it didn’t already exist)?

    I don’t see why not. If you were the first person to isolate weapons-grade crystalline silicon, that’d be a pretty cool invention and worthy of a patent IMHO.

    Also, once again, whether something existed in nature before you made it is purely a question of novelty. If element 95 is patentable subject matter, all the elements are. It’s just that there’s ample prior art for so many of them.

  14. 57

    Lionel Malcolm, I find it ironic that you’re argu8ing that something should not be rejected under 101. I say 101 because isolated gene patents are essentially patents on products found in nature.

    There is no irony. Just how little do you know about molecular biology anyway?

    If “isolated gene patents” are “essentially” patents on “products found in nature” then so is virtually every other patent. Atoms are natural. You can take them and move them around and isolate them from the atoms you don’t want, but they are still natural. If that sounds idi0tic to you, then you know how your argument sounds to most biologists (at least those who also understand patent law).

  15. 56

    IANAE,

    I believe Element 95 was a man-made element, not found in nature. Aluminum is found in nature, just not in a pure form.

    So, you are saying that any element found in compound form in nature could be patented in its purified form (assuming it didn’t already exist)?

    If this is true, then I may revise my argument.

  16. 55

    I’m all for modified genes being patentable.

    LOL, Lionel. What if the gene is modified by shortening it?

  17. 53

    In the absence of abolition, maybe we could force companies to license the information at a compulsory rate.

    Yeah, that’s the ticket – if you can’t kill patents outright, kill what they stand for.

    Lionel, “are patents allowed or were patents ever allowed on elements?” – this has already been answered in the affirmative.

    wipe your chin (and don’t mess with IANAE).

  18. 52

    Here’s a question – are patents allowed or were patents ever allowed on elements?

    Yes.

    Also, one generally patents materials and not elements. Metallic aluminum would be a perfectly good invention if it didn’t already exist in nature.

  19. 51

    Let me put my argument another way, there is no difference between gene patents and a patent on aluminum. Aluminum is not found in nature – bauxite is. Here’s a question – are patents allowed or were patents ever allowed on elements? If not, then my argument rules and yours drools.

  20. 50

    Which would be an actual substantive difference.

    Yes, but not one that is relevant to 101. One that is relevant to 102 or 103. A string of nucleotides is either a composition of matter or not. It can’t be a composition of matter subject to a determination of novelty.

  21. 49

    “The only legal difference between an isolated gene from nature and an isolated modified gene whose sequence was created in a lab is the novelty of the nucleotide sequence.”

    Which would be an actual substantive difference.

  22. 48

    I’m all for modified genes being patentable.

    If you’re all for modified genes being patentable, you can’t logically argue that genes isolated from nature violate 101. The only legal difference between an isolated gene from nature and an isolated modified gene whose sequence was created in a lab is the novelty of the nucleotide sequence.

    Without patents for isolated genes, why would anyone discover them? – Scientific curiosity? A desire to find a cure for a particular disease? All the reasons science is and has been done historically.

    It happens a lot faster when big companies throw billions of dollars at the problem. Patents don’t stop idle curiosity (they even have an exemption for it), but you don’t see too many people curing cancer (or more importantly, apparently, male enhancement issues) out of idle curiosity.

  23. 47

    Malcolm, I find it ironic that you’re argu8ing that something should not be rejected under 101. I say 101 because isolated gene patents are essentially patents on products found in nature.

    I’m all for modified genes being patentable. I doubt a natural version of a man-made gene would ultimately be discovered after-the-fact, but I suppose it is possible. In that case,l I am not sure what the correct course of action should be.

    I’m also for tests and medical processes being patented (as long as they meet the requisite 102/103/112 requirements). In the case of actual medical tests, I would probably support some level of compulsory licensing.

    Without patents for isolated genes, why would anyone discover them? – Scientific curiosity? A desire to find a cure for a particular disease? All the reasons science is and has been done historically. Why did people do black-body experiments, or care about brownian motion back in the day?

    In the absence of abolition, maybe we could force companies to license the information at a compulsory rate.

  24. 46

    Yes Dumblo, I did not properly edit my post. I changed “reasoning” to “rationale” and did not delete “reasoning”

  25. 45

    Gene patents insofar as they preclude a persone from acquiring and using information concerning that persons gene code a invalid pursuant to the Thirteenth Amendment.

    Precluding coverage due to a prexisting genetic or congenital condition violates the Thirteenth Amendment.

    This has now replaced “trademarks are a constitutional right under Section 8” as the wacky constitutional argument I am most curious to hear.

  26. 44

    will be greeted with the same knee-jerking and spittle-frothing display

    as opposed to the Mooney knee-jerking and spittle-frothing seen in this backyard.

  27. 43

    Gene patents insofar as they preclude a persone from acquiring and using information concerning that persons gene code a invalid pursuant to the Thirteenth Amendment. This is the same reason why healthcare providers desperately want the healthcare bill to pass. Precluding coverage due to a prexisting genetic or congenital condition violates the Thirteenth Amendment.

  28. 42

    @Lionel Hutz: district’s court reasoning rationale was faulty

    Are you aware of other rationales than reasoning ones?

  29. 41

    Stand by Mooney, word has it that the teabaggers are starting to arm themselves.

    Oooh, that is so impressive! Timmy McVeigh’s corpse must be so proud.

  30. 40

    word has it that the teabaggers are starting to arm themselves.

    “Starting” to arm themselves? Did this “word” arrive on horseback and sealed with wax, perchance?

  31. 38

    Ed Colbert (coal-bert) is a copyright attorney at Kenyon. I find more substance with the Daily Show and Colbert (Co-bear) than with network news.

  32. 37

    ping Sorta like certain posters want to deny “software” patents altogether without thinking these things through a little bit.

    Actually I’ve thought about it a lot and the issues are quite distinct. Moreover, given that the software patent applicants and the patent teabagger crowd overlap to a great extent (gosh, I wonder why), you can bet your sweet patooty that any proposed limitations on their patent rights will be greeted with the same knee-jerking and spittle-frothing display which greets proposals to band software patents altogether.

  33. 36

    Ping,

    Nor am I “channeling Boundy” (who I respect greatly and who also got his facts very straight as to the prior “shenanigans” during the Dudas regime). Again, what I say about the reasons for the PTO’s response to the patenting of life forms prior to Chakrabarty is factual, not opinion (or fiction).

  34. 35

    Sorry, my mistake EG.

    as a smokescreen for an administrative problem

    EG, channeling Boundy.

  35. 34

    Ping,

    If you’re suggesting that what I said is simply my “opinion,” guess again. That the PTO viewed this as an “administrative problem” came out glaringly during the briefs submitted to SCOTUS and during oral argument in the Chakrabarty case. Why do I say that? Because I read those briefs and saw what was reported to have happened at the oral argument at the very time Chakrabarty was decided by SCOTUS. I’m sorry if you find that “boring” (the correct facts can sometimes be that way) or consider me to be “channeling NAL” (which I’m not), but the facts are the facts.

  36. 32

    Lionel,

    A well-reasoned response to my question. I just don’t agree that “isolated” gene sequences should be rejected under 35 USC 101. Patent-eligibility under 35 USC 101 shouldn’t be the primary screen, or you’re going to run the risk that 21st Century technology that doesn’t fit easily into the 19th Century categories will be screened out, even if it meets the requirements of 35 USC 102/103. Witness what almost happened in Chakrabarty v. Diamond for reasons having nothing to do with whether life forms are patent-eligible: the PTO was fearful of the potential flood of biotech applications it was about to get which it knew it couldn’t handle, and used the “life forms aren’t patentable” position (even though they had issued such patents for years) as a smokescreen for an administrative problem. To tell how silly the PTO’s position was in Chakrabarty, the PTO was willing to let through claims to the bioengineered organism in combination with a carrier (e.g., sawdust), but not to the bioengineered organism itself.

    In fact, it would be far better to start with 35 USC 112, paragraphs 1 and 2, as the initial screen to make sure the full claim scope is enabled by the patent spec and the claim language sufficiently definite and clear as to what it means. You would at least have an objective way to keep the claim scope within appropriate limits. Other than “abstract ideas,” “law natures,” and “discoveries,” all efforts to make screening for patent-eligibility under 35 USC 101 objective (rather than subjective) have generally failed. Witness the oxymoronic “machine or transformation” test in Bilski that the Federal Circuit in Prometheus “strained” to apply to a drug dosage calibration method claim. I completely agree with Michael Risch’s (law professor West Virginia, soon to move to Villnova) view that the bar for patent-eligibility under 35 USC 101 should be fairly low.

    And thanks for the reasoned debate

  37. 30

    than to deny them altogether.

    Sorta like certain posters want to deny “software” patents altogether without thinking these things through a little bit.

    N’cest pa?

  38. 29

    Lionel: However, an isolated gene is not sufficiently different from it’s original to be considered an invention.

    Sounds like obviousness, not 101.

    Of course, it’s already been explained ad nauseum that the differences between an isolated gene and one in nature are substantial and, quite often, profound.

    Take for example a gene expressed by some desert insect larvae only once every 20 years or so, when the rainfall reaches a certain level. Somebody isolates the gene, puts the isolated gene into a plasmid for expressing the gene in a bacterium (something that can’t be done unless it’s siolated), over-expresses its protein product in a bacterium (something that can’t be done unless it’s isolated), and discovers that the protein product can catalyze an enzymatic reaction that was previously unknown by highly desirable because it reverses an aberrant reaction that takes place in Parkinson’s patients.

    What is the rationale for denying the patent on the isolated gene?

    And let’s assume you have your way and isolated genes are verboten. Let’s say the researcher makes a few modifications to the isolated gene so that the encoded enzyme is now improved relative to the sequence in the original insect. Now the researcher is suddenly entitled to a patent, right? So … what if a homologous gene from a related species of insect is subsequently isolated and it turns out to have the same sequence as the researcher’s modified gene? Does the researcher lose his patent on the modified gene because now it’s unpatentable subject matter?

    It helps to think these things through a little bit. I think to the extent people think that a monopoly on an isolated gene sequence is “too much” then a better solution would be to limit the rights (e.g., shorter term, mandatory licensing) than to deny them altogether.

  39. 27

    Lionel,

    Would you rather companies opt for trade secret protection on the genes they discover? Not me. And I think this is an area where they really could do that. They could require that the blood sample be sent to them for them to evaluate it in a secret lab and then spit out a positive or negative result.

    Or maybe FDA regs would force them to disclose the gene as part of the approval process. In that case, why would companies bother going to the trouble and expense of getting the test aproved, if others can just do it too? Why would they bother performing or funding fundamental gene research at all if they can’t get a patent?

    Maybe there should be an expansion on the rersearch exception, but making isolated genes unpatentable would have dire negative consequences.

  40. 26

    EG,

    Given the CAFC’s history, I think it is more likely than not that they will overturn the decision, especially if this is the case I think it is. I believe some of the district’s court reasoning rationale was faulty.

    However, an isolated gene is not sufficiently different from it’s original to be considered an invention. It is one of the few subjects considered patentable today that I believe should be rejected under 101. I believe business methods are much more deserving of patents than isolated genes. At least there was some act of creation involved (assuming 102/103 bars are passed)

    Testing methods, methods of isolation, etc. all should be patentable. Not the isolated gene’s themselves.

  41. 25

    Suppose Myriad didn’t appeal, as has been suggested on other blogs. Would getting rid of the “bad facts” avoid creating the “bad law?”

  42. 24

    Stephen’s brother, Ed, is a partner at Kenyon & Kenyon.

    Ed made an appearance on the Report when Stephen was trying to find a non-infringing logo for his Olympics coverage. It was a great illustration of the design-around process, albeit not for patents.

    Tellingly, the best Stephen could to do mitigate his litigation risk was a statement from Ed that “I’d sue you … but you’d win”.

  43. 23

    Stephen Colbert discusses patent topics somewhat frequently. Stephen’s brother, Ed, is a partner at Kenyon & Kenyon.

  44. 22

    “I like Mr. Ravicher’s analogy to refined metal ores.”

    Lionel,

    Interesting. BTW, what do you think the odds are that the following statement by Ravicher regarding the appeal of the AMP v. USPTO will come true?: “We fully expect the decision [by Judge Sweet] will be upheld on appeal [by the Federal Circuit].”

  45. 21

    “Or to make another comment, the “two sides” in every issue are not always equal.”

    Lionel,

    The example you give is “definitely trivial” and one I would definitely find the “pro-segrationist” side extremely offensive (it might surprise you that I’m one the rare poltical “conservatives” who doesn’t find “affirmative action” to be a “dirty word.”)

    But why do you treat the debate on gene patenting as if one side is entitled to more weight than the other? Are you implying that this debate is on the same order as segregation v. desegregation/integration?

  46. 20

    How can a Christian support effective corporate control of human genes?

    Give to Caesar what is Caesar’s,…

  47. 19

    Malcolm,

    Thanks for the clarification. That’s pretty funny suggesting Kevin should get a “spicy” moniker! Peace.

  48. 18

    Lionel,

    You apparently feel I’m being inconsistent here (I’m not because your characterization of what Myriad has done is inaccurate). Why do you feel that way?

  49. 17

    Actually, I do like the PBS show more than 60 minutes piece and the blog Dennis linked to agrees the PBS show is unbiased. I like Mr. Ravicher’s analogy to refined metal ores.

  50. 16

    EG,

    Weren’t you defending the Bible in an earlier thread. How can a Christian support effective corporate control of human genes? And if you disagree with my characterization, please point out where as I am fairly well-informed on thisn issue.

  51. 15

    Or to make another comment, the “two sides” in every issue are not always equal. As an admittedly trivial example, I would say giving equal time to a pro-segregation argument as an anti-segregation argument would be doing a disservice to the public.

    Allowing the patenting of existing genes, simply because they are created in a laboratory independent of the original organism is wrong. I also think bio-prospecting in general is wrong. I have heard the contrary arguments and they are weak.

  52. 14

    quotes were supposed to be around the first paragraph of my last post as they were EG’s words.

  53. 13

    And the 60 Minutes Segment wasn’t a “preposterously one-sided” distortion of the gene patenting controversy, including ACLU’s grossly misrepresented view of what Myriad’s patents cover?”

    No, it wasn’t. Why do you believe it was?

  54. 12

    EG At least Kevin Noonan knows what he’s talking about. Morley Safer showed on that 60 Minutes segment that he’s absolutely clueless as to what he’s talking about.

    No argument here, EG. I was just riffing on the “looking good” comment. Other than complexion issues (which can usually be covered up by make-up), the idea that you have to “look good” on TV is overrated. Look at all those newscasters: giant foreheads, eyes on the side of the side of their heads. It’s obviously just as important, if not more important, to look “odd” on TV than “good” if you want people to pay attention.

    Kevin might want to try a name change, though. Something snappy. “Buck Noonan” maybe. Or “Warren Noonan.”

  55. 11

    I’d really be upset to see my profession reduced to a cheap TV caricature. If the producers of the world want cheap patent attorney caricatures, I hear Mooney is available. And word on the street is that he works cheap (if you can stand that smell and the Birkenstocks).

  56. 10

    There’s a new documentary film about Bilski. It includes a section where you get to see the plaintiffs and their attorney Michael Jakes at the Supreme Court after oral arguments. It’s rather scathing of the CAFC and software patents: link to patentabsurdity.com

  57. 9

    “That, Mr. Noonan is decidedly not. His PatentDocs blog is a preposterously one-sided defense of Big Pharma.”

    Hammit,

    And the 60 Minutes Segment wasn’t a “preposterously one-sided” distortion of the gene patenting controversy, including ACLU’s grossly misrepresented view of what Myriad’s patents cover? You characterization of Kevin Noonan’s pieces on Patent Docs has so completely “jumped the shark” that I wonder whether you understand what “one-sided” means.

  58. 8

    Malcolm,

    At least Kevin Noonan knows what he’s talking about. Morley Safer showed on that 60 Minutes segment that he’s absolutely clueless as to what he’s talking about. Go fish.

  59. 7

    His PatentDocs blog is a preposterously one-sided defense of Big Pharma.

    His blog is a one-sided presentation of his own viewpoint? What a shock. I hope other bloggers don’t start doing this.

    At least we can count on documentary-format news-type shows to be impartial in their presentation of emotionally charged issues.

  60. 6

    I was with you up until the word “reasonable”. That, Mr. Noonan is decidedly not. His PatentDocs blog is a preposterously one-sided defense of Big Pharma.

  61. 5

    Yes, the Office usually doesn’t brook competition on the comedic processing of our (C)onstitutional rights as outlined in Section 8.

  62. 4

    I was a bit surprised when I saw this bit on the Colbert Report. It’s not too often you see a patent law related issue show up on a comedy show!

  63. 2

    Kevin is articulate, opinionated, reasonable, and he looks good on camera.

    Just like Morley Safer.

  64. 1

    “He also looks good on camera. ”

    Idk if I’d go so far as to say that. Me and Kev both know he could use a few hours in the gym. Otherwise he’s in the clear. I invited him to come on down and gym with me, he ain’t been down yet.

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