Guest Post by Paul Cole: ASSOCIATION FOR MOLECULAR PATHOLOGY v MYRIAD GENETICS – an isolated decision?

Guest Commentary by Paul Cole,Professor of Intellectual Property Law, Bournemouth University, and European Patent Attorney, Lucas & Co, Warlingham, Surrey, UK.  

ASSOCIATION FOR MOLECULAR PATHOLOGY v MYRIAD GENETICS – an isolated decision?

By Paul Cole[1]

            How does the Supreme Court decision of 13 June 2013 match international opinion on the patentability of biological material? From a European and indeed from an Australian standpoint it can be said with some confidence: not so well.

            In Europe patentability in this genus of fields of endeavour was considered in the 1990’s in a debate that resulted in the passage of the European Biotechnology Directive of  6 July 1998, [1998] OJL 175/1[2]. For the relevant philosophy underlying that Directive it is only necessary to quote the relevant recitals (with emphasis added):

(16) Whereas patent law must be applied so as to respect the fundamental principles safeguarding the dignity and integrity of the person; whereas it is important to assert the principle that the human body, at any stage in its formation or development, including germ cells, and the simple discovery of one of its elements or one of its products, including the sequence or partial sequence of a human gene, cannot be patented; whereas these principles are in line with the criteria of patentability proper to patent law, whereby a mere discovery cannot be patented;

(17) Whereas significant progress in the treatment of diseases has already been made thanks to the existence of medicinal products derived from elements isolated from the human body and/or otherwise produced, such medicinal products resulting from technical processes aimed at obtaining elements similar in structure to those existing naturally in the human body and whereas, consequently, research aimed at obtaining and isolating such elements valuable to medicinal production should be encouraged by means of the patent system;

(20) Whereas, therefore, it should be made clear that an invention based on an element isolated from the human body or otherwise produced by means of a technical process, which is susceptible of industrial application, is not excluded from patentability, even where the structure of that element is identical to that of a natural element, given that the rights conferred by the patent do not extend to the human body and its elements in their natural environment;

(21) Whereas such an element isolated from the human body or otherwise produced is not excluded from patentability since it is, for example, the result of technical processes used to identify, purify and classify it and to reproduce it outside the human body, techniques which human beings alone are capable of putting into practice and which nature is incapable of accomplishing by itself;

(22) Whereas the discussion on the patentability of sequences or partial sequences of genes is controversial; whereas, according to this Directive, the granting of a patent for inventions which concern such sequences or partial sequences should be subject to the same criteria of patentability as in all other areas of technology: novelty, inventive step and industrial application; whereas the industrial application of a sequence or partial sequence must be disclosed in the patent application as filed…

The consequential legislative provision is to be found in Article 3 which was arrived at following a three-year debate involving the EU Commission and the European Parliament:

1. For the purposes of this Directive, inventions which are new, which involve an inventive step and which are susceptible of industrial application shall be patentable even if they concern a product consisting of or containing biological material or a process by means of which biological material is produced, processed or used.

2. Biological material which is isolated from its natural environment or produced by means of a technical process may be the subject of an invention even if it previously occurred in nature.

In Australia the patentability of such materials has recently been confirmed by the Federal Court of Australia in Cancer Voices Australia v Myriad Genetics Inc [2013] FCA 65 (15 February 2013)[3], see Vaughn Barlow, CIPA, March 2013, 122-123. This very well-reasoned and detailed decision considers relevant US and UK opinions including the Kalo v Funk opinion, and explains:

105        In my opinion the patentability of the isolated nucleic acids referred to in the disputed claims does not turn upon what changes have been made to the chemical composition of such substances as a result of them having been isolated. In particular, the question of whether these substances constitute patentable subject matter does not depend upon the type of chemical bond that may have been broken in the process of isolating them. It is inevitable that some bonds will be broken in the course of isolating nucleic acids, but it is not apparent from the evidence that these will necessarily include covalent bonds. As I have already explained, the disputed claims do not require that the isolated nucleic acids they describe differ from those found in the cell in this or any other respect so far as their chemical composition is concerned.

106        Accordingly, the issue in this case turns upon whether an isolated nucleic acid, which may be assumed to have precisely the same chemical composition and structure as that found in the cells of some human beings, constitutes an artificial state of affairs in the sense those words should be understood in the present context. There are three considerations which lead me to think that it does.

107        First, in explaining the concept of manner of manufacture as one involving the creation of an artificial state of affairs, it is apparent that the High Court in NRDC was deliberate in its use of very expansive language. Not only did the High Court emphasise the “broad sweep” of the concept involved, it also made clear that metaphorical analysis may not be helpful in determining whether or not something constitutes patentable subject matter.

108        Secondly, in the absence of human intervention, naturally occurring nucleic acid does not exist outside the cell, and “isolated” nucleic acid does not exist inside the cell. Isolated nucleic acid is the product of human intervention involving the extraction and purification of the nucleic acid found in the cell. Extraction of nucleic acid requires human intervention that necessarily results in the rupture of the cell membrane and the physical destruction of the cell itself. And purification of the extracted nucleic acid requires human intervention that results in the removal of other materials which were also originally present in the cell. It is only after both these steps are performed that the extracted and purified product may be properly described as “isolated” in the sense that word is used in the disputed claims.

109        Thirdly, as Dann’s Patent demonstrates, the isolation of a particular micro-organism may require immense research and intellectual effort. In that case, it was only as a result of an intensive research effort that the isolated micro-organism in question could be made available for use in the manufacture of the new antibiotic. It was fortuitous for the patentee that it was its employees who were first to isolate the new micro-organism and first to deploy it in the manufacture of the new drug. That will not always be so. It would lead to very odd results if a person whose skill and effort culminated in the isolation of a micro-organism (a fortiori, an isolated DNA sequence) could not be independently rewarded by the grant of a patent because the isolated micro-organism, no matter how practically useful or economically significant, was held to be inherently non-patentable. In my view it would be a mistake, and inconsistent with the purposes of the Act, not to give full effect in such situations to the broad language used by the High Court in NRDC.

            The Court went on to explain that its findings were consistent inter alia with a report of the Australian Law Reform Commission of June 2004 entitled Genes and Ingenuity: Gene Patenting and Human Health (ALRC 99, 2004). That report concluded that it would be difficult, on any rational basis, to confine reform to genetic materials and technologies, and that the extension of the reform to other fields – where the patenting of pure and isolated chemicals that occur in nature was uncontroversial – could have unknown consequences.

What a shame that nobody told the Supreme Court of this body of opinion and legislation  in Europe and Australia, which is believed consistent with the opinions and legislation existing in most other countries of the industrialised world, or that if it was aware of this position elsewhere the Court decided to ignore it in favour of a judge-made exception to the express provisions of 35 USC 101!

European equivalents of the patents in issue have been considered by the EPO Appeal Board. For example, T 1213/05 UNIVERSITY OF UTAH/Breast and ovarian cancer[4] concerns the BRCA 1 gene. T 666/05 UNIVERSITY OF UTAH/Mutations[5] relates to the use of the same gene in diagnosis.

In case T 1213/05, opponents argued that the socio-economic consequences of patenting the claimed subject-matter should be considered under a.53(a) EPC because these consequences touched ethical issues. Patenting of the claimed subject-matter would not only result in increased costs for patients, but would also influence the way in which diagnosis and research would be organized in Europe, which would be clearly to the detriment of patients and doctors. The fact that a particular group of patients, i.e. patients suspected to carry a predisposition to breast cancer, would be faced with severe disadvantages and would become dependent on the patent proprietor was contrary to human dignity so that the claimed subject-matter constituted an exception to patentability under a.53(a) EPC. In rejecting this argument the Appeal Board held that the possible consequences of the exploitation of the patent were are the result of the exclusionary nature of the rights granted by a patent, i.e. the right to stop competitors from using the invention. Logically such an objection applied to the exploitation of any patent and was the same for all patents. A resolution of the European Parliament, P6_TA(2005)0407 of 26 October 2005 "Patents on biotechnological inventions" did not vest the EPO with the task of taking into account the socio-economic effects of the grant of patents in specific areas and of restricting the field of patentable subject-matter accordingly. Similar arguments were rejected by the Board, in a different composition, in Case T 666/05.

In the US litigation it was argued that patents for isolated genomic DNA inhibited more innovation than they incentivised. However, even if that proposition is accepted it appears arguable that this is also the result of the exclusionary nature of the rights granted by a patent and is the same for all patents.

It is submitted that the decision is based on a narrow and short-term view of the public interest. The drug amoxicillin was invented in 1959, became available in 1972 and was the subject of much litigation in the 1960’s and 1970’s in which this author personally participated. The relevant patents have now expired and the drug which continues in widespread use is now a generic in a competitive marketplace. In addition to the US and the UK, the drug is now made in, for example, Brazil, Canada, Italy, Mexico, New Zealand Singapore, Spain, Thailand and South Africa. The well-known Indian generic company Ranbaxy was approved a supplier for the US market by the FDA in 2003.  An invention can enrich the inventor or an employer for a limited period provided by the patent system: mankind is enriched forever.

316 thoughts on “Guest Post by Paul Cole: ASSOCIATION FOR MOLECULAR PATHOLOGY v MYRIAD GENETICS – an isolated decision?

  1. @ Anon

    My day job is patent practice. One of my major hobbies is teaching and writing in the field of intellectual property. I have a number of published books on the subject and teach a course at Bournemouth University.

    However, an adverse reaction can be expected from me, and from a very large number of my professional colleagues, when the norms under which we do our daily work are summarily torn up.

    It has been taken for granted for at least many decades that a new chemical entity is patentable subject-matter. As noted in this blog, that used not to be the case in the UK for historical reasons connected with dyestuff and drug patents before the First World War. But since the UK Patents Act, 1949 new chemical entities have been patentable subject-matter, and that is now the norm in all the countries where I file patents. However the issue is fudged, isolated DNA for a single gene is the result of chemical reactions that sever the gene from its surrounding DNA and create a new chemical entity. It is a sequence of different molecular weight from anything that exists in nature, and it has end groups that do not exist in nature. The isolated gene is a molecule that does not exist in nature and has never existed in nature. The dismissive way in which these facts have been treated in the Supreme Court decision is profoundly shocking to many chemical and biotechnological practitioners.

    It has also been taken for granted for many decades that substances isolated from nature are patentable. In the US the chain of authority, as we both know, goes back to to the decision of Judge Learned Hand in the 1900’s and has been affirmed by subsequent decisions although, as we also both know, the position is not wholly free from controversy. As a practical working guide, however, an isolated substance has been presumed patentable. The abandonment of this by now settled and widely accepted principle is profoundly shocking to many practitioners.

    We then have the issue of settled expectations. That subject was considered in an impressive, detailed and scholarly opinion of Judge Moore in the CAFC. Her overall conclusion was for patentability and it is worth quoting her conclusion:

    “The Patent Office has, for more than a decade, affirmatively stated its belief that isolated DNA is patentable for the same reasons as isolated vitamins or hormones. There is no indication from Congress that this view is wrong; to the contrary, it appears Congress also believes DNA is patentable. This long-term policy of protecting isolated DNA molecules has resulted in an explosion of innovation in the biotechnology industry, an industry which, unlike the financial services industry or even the software industry, depends on patents to survive. Holding isolated DNA not patentable would destroy long settled industry expectations for no reason other than a gut feeling that DNA is too close to nature to be patentable, an arbitrary decision based on a judge-made exception. I believe that isolated DNA fragments, which have both chemical changes from the naturally occurring genomic DNA as well as new utility, are “the kind of ‘discoveries’ that the statute was enacted to protect.” I therefore decline to extend the “laws of nature” exception to include isolated DNA sequences.”

    The penultimate sentence deserves attention: in the final analysis Judge Moore AGREES with Judge Lourie. The summary dismissal of this reasoned and detailed opinion and the rejection of settled practice which has existed over many decades is also, to many practitioners, profoundly shocking. It should not be forgotten that the USPTO has trilateral discussions with the EPO and the JPO. In these discussions some 20 years ago the USPTO was putting forward the very position that the Supreme Court now rejects. It is not clear that the Supreme Court had any knowledge of this, or if it did that it felt any embarrassment. The abandonment of a long-settled practice in granting patents to isolated sequences for no very compelling reasons, and in the absence of a substantial body of evidence that there is a public interest in doing so, is to many practitioners profoundly shocking.

    It is not for me as a European practitioner to express a concluded view as to whether Myriad is inconsistent with preexisting law. However, compared to the opinions in the CAFC, I find the present opinion less scholarly, less well-considered and unwise.

  2. did you bother to download and read the Beauchamp article

    Did you?

    It does not support your position, by the way – at least not quite the way you have been writing here. Yes I know you are saying “background,” but the better background would have been paying attention for the last several years.

    The article is seriously flawed as well. Sure it has some decent stuff, but it also has things that are flat out wrong, and some things that are unbelievably pollyanna (even more pollyanna than McCracken).

    As far as “nothing thoughtful or useful to contribute” – again, you would do well to pay attention to what I have to say. There is a reason while I NAILED both the decision and the reason in the Myriad case: I know this stuff. As to a period of silence? Yes, given the position you are advocating here, I can easily see why you would want my silence: your position is quite simply WRONG for US jurisprudence. If you haven’t figured out why yet, perhaps a different day job for you would be in order. One that would allow you to understand the background of what you advocate.

    And you should also YOURSELF have remembered that saying on the drink tray – because the thing that I am NOT being silent about is explicitly YOU failing to engage your brain before operating your ‘mouth.’

    favour me with a listing of each and every important question you have in mind

    Gee – You are SO busy, let’s just start simple – like with the questions that I have already asked you here. Deal? And I will even leave out most of the sarcasm if you can try to do the same, deal?

  3. Paul,

    Shhhhhh.

    As to a link, sorry, but this has been an ongoing discussion with hundreds of posts over dozens of links going back at least to Bilski. Notwithstanding that, one link I was looking at over the weekend that has some good conversation is link to patentlyo.com

    While you consider my posts ‘obscure,’ I consider yours immature. And that’s not good for your ‘day job.’ Isn’t your day job teaching this stuff?

  4. WHERE?????

    IF YOU DID, WHY NOT SUPPLY A LINK???

    THEN YOUR COMMENTS MIGHT BE UNDERSTANDABLE AND HELPFUL. OTHERWISE THEY ARE MERELY OBSCURE.

  5. @Anon

    Before you made your last posting did you bother to download and read the Beauchamp article?

    And as my time is limited by my day job and other responsibilities, could you favour me with a listing of each and every important question you have in mind? It would be helpful if they could be presented as a numbered or bulleted list.

    And what makes you think that I agree with the Beauchamp article or am relying on the Learned Hand decision merely because I happen to cite them as useful background reading? Please do not put words in my mouth or attribute to me opinions that I have not expressed.

    If you have alternative or better references or judicial opinions, please cite them. Otherwise, and if you have nothing thoughtful or useful to contribute, a period of silence from you would be welcome. As was said on a drinks tray in a friend’s house that I used to visit as a child: “Please engage brain before operating mouth”.

  6. Paul,

    I find it curious that you “have time” to reinforce the belief structure you already have and yet don’t want to address the more important questions.

    Learned Hand’s decision was early in his career, and to lean on the ‘history’ of the great judge (who, by the way, missed on the precedent of the Latimer decision) is to simply – and willfully – continue down the wrong path.

    I would dare say that what you are doing is ‘thoroughly lousy.’

  7. That, I fear, is a major point.

    And in the US the basis for such compound claims is more open to question than might be supposed because authority for them although 100 years old is at the level of the lower courts, not the Supreme Court. Revival of the decision in Kalo v Funk which was really an obviousness case and was intended to have been over-ruled by the 1952 legislation does not help. That decision is correct in its outcome but in the way in which it was expressed is thoroughly lousy authority for anything.

    An article by Christopher Beauchamp : The pure thoughts of Judge Hand is very helpful and informative. It can be accessed here

    link to law.nyu.edu

  8. Seems like it won’t be long before someone challenges the validity of a patent in which the claims are drawn to naturally-occurring proteins. Given the Myriad/SCOTUS decision, why wouldn’t the CAFC be obligated to invalidate all such patents?

    Ditto for all claims drawn to naturally occurring compounds from plants, fungi or insects.

  9. . I just want the reasoning behind those decisions to be forthright

    LOL – you mean the reasoning that I explained to you and that you wouldn’t listen to? The very same reason that AFTER the oral arguments you in a panic took the very same position I advocated when you were talking with another PhD on these boards? That reasoning?

    LOL – it’s archived you duplicitous pr1ck.

    And yes the bonfire is clearly understood – I pointed out that I was going to use that archive liberally and invited you to use your ‘stellar legal logic’ and your ‘absolute mastery of English as a first language’ to undo your self-immolation when you FINALLY took your first substantive attempt at squaring the Prometheus decision with the precedent case most on point.

    That too is forever archived.

    And you still don’t have the nuts to simply admit that I was right and that you were wrong.

    Nearly 21,000 words of mewling QQ. LOL, what a meltdown, and I have enjoyed every last word of your tortious and futile twisting.

    Best.
    Week.
    Ever.

    And please, add another 21,000 words. Squirm away son. Who knows, you may burn more than your hands if you attempt again to delve into substantive law.

    Hmmm, maybe you want to put some salve on those mits of yours before you venture into the Ultramercial case. I am guessing that 101 Integration Expert will want to hear from you. Maybe you can invite Keeping It Real, Robert, Francis, Shrivan and Vivika M – don’t worry, you won’t need more than two chairs for all of you and 101 Integration Expert.

    LOL.

  10. the Prometheus claim would have been both patent-eligible and inventive.

    Huh. I talked to several partners at some of the best EP patent law firms and they all agreed that the claims would have been found obvious.

    I wonder what facts you are confused about.

  11. Aw shucks – it is easy to fend off the arrows you shoot as they are all around your own feet.

    Now if you actually had a legal point to make…

    Once again, and quite fittingly, “D’Oh!” (said in the best Homer Simpson tones)

  12. If you agree with me (as you say you do), then why shoot arrows at me? … Instead, we are treated to you running around in your cheerleader outfit, eyes full of petroleum, begging for another spear to the shoulder.

    Honest Abe, fending off arrows and spearing blind cheerleaders in the shoulder, all in the defense of our constitutionally derived patent regime. What can’t this man do?

  13. Creating a dust cloud by throwing yourself into the dust seems like a really poor way of trying to make a point.

    The only point being made is that you are obsessed with self-destruction.

    As with Malcolm, I have no problem handing you your head when you ask me to do so.

  14. Open your eyes Leopold.

    If you agree with me (as you say you do), then why shoot arrows at me? If you do not agree with me, then why not express the legal point you disagree with and explain the way the legal point should be understood?

    Instead, we are treated to you running around in your cheerleader outfit, eyes full of petroleum, begging for another spear to the shoulder.

    Why is it that you feel that urgent need to charge at “anon said,” when you have nothing intelligent to say?

  15. link to lcanimal.org

    LOL – like the calls to go easy on Malcolm, (and the crybaby veto when I ‘attack’ those who only want to soapbox), once Leopold steps into the ring with me, his fate is preordained.

    Unlike the bulls, though, he does have the choice of whether to engage me or not.

    As I have oft posted, there is a simple way to avoid the gore: don’t post the CRP in the first place.

  16. LOL – still clenching your eyes tight and proclaiming “I cannot see”…

    Some friendly advice (unless you really like to collecting puyas:

    Put. The. Shovel. Down.

  17. You first could not figure out which case (after I used the name of the case). You then tried to twist it that I wanted to talk about race.

    I think I understand now. First you invoked the three-fifths clause of the Constitution to calculate the number of “robes” on the Court, somehow concluding (apparently without reference to race) that one of those robes should only count as 3/5. Then you tell us that you were actually drawing an analogy between the Dred Scott case and the Supreme Court’s recent jurisprudence. Then you complain to NWPA that some kind of “liberal trap” prevented upstanding people like yourself from even discussing racism, and that refusing to acknowledge race was disrespectful. Then, when I expressly invited a discussion about racism, you tell us that you were not talking about race at all. Now we find out that you were merely parroting Abraham Lincoln when you referred to the Court as having eight-and-three-fifths robes.

    It’s all perfectly clear. I think I’ll call you “Honest Abe” from here on out.

    Cheers, Honest Abe!

  18. Because a Supreme Court writing law beyond their authority has nothing to do with the Supreme Court acting beyond their authority…

    D’oh! (said in the best Homer Simpson tones)

  19. And it’s amazing how hard you try to not understand.

    You first could not figure out which case (after I used the name of the case). You then tried to twist it that I wanted to talk about race.

    Funny that you NEVER shoot your arrows at Malcolm (and believe me, there are oh so many targets provided), and yet, the little red cape of “anon said” send you into a frenzy…

    Perhaps if you actually think – and actually open your eyes, you will see the commonality that this “amazingly flexible ‘point’” has. Maybe you will try to understand, instead of trying so very hard NOT to understand.

    I doubt it, since all you see is the moving red and blindly want to charge.

    Olé!

  20. EXACTLY my point with the 8 and 3/5 robes comment.

    That’s an amazingly flexible “point” you made with that comment, anon. Just yesterday you said that your comment was intended to draw an analogy between the Dred Scott decision and the Supreme Court’s recent decisions in patent law, because of the powerful emotions that they invoke. Now it turns out that you were actually invoking the spirit of Abraham Lincoln! Congratulations – you’ve outdone yourself (again).

  21. and that is what has been done here.

    Most decidedly not Paul. You have backtracked and now attempt to deny the obvious.

    You not only showed a difference, you advocated a position on that difference.

    I merely called you out for this and suggested that if you are going to advocate a position, you would be better off by providing meaningful support for that position. Such support would necessarily involve recognizing the sovereign jurisprudence.

    Had you done that, then you would have quickly realized that your call for our US Court to give comity to other nation’s laws would result in that Court actually WRITING law (and not just interpreting law).

    However, Paul, you do edge closer when you state “But there may be less room for such a task where what is involved is interpretation of a statute” but you need to go that one rather small further step for US jurisprudence and look at explicitly which branch of the US government (and only one such branch has been designated) has been provided that power to write law under our constitution in this EXPLICIT domain of intellectual property. That one branch is not the judiciary. That one branch is not the executive. That one branch is not the federal agency (our ‘fourth branch’ in the modern world).

    Your hesitancy is confusing:

      However, I cannot undertake to do so and publish it because that detailed study could lead to the opposite conclusion.

    LOL,… could? Far greater standard of care? You need a lower standard to blurt out orthodoxy?

    And you better take more care in understanding what happened in 1952. The common law authority that had been given to the judiciary was revoked at that point (your comment about “1836 substantially unchanged” is substantially wrong).

    His warnings about the limitations of the Court are becoming more pertinent.

    EXACTLY my point with the 8 and 3/5 robes comment. And yet, those of the little circle club jump at the chance of closing their eyes and running full speed into the nearest wall.

    I see no meaningful excuse why this topic has not been addressed by academia. Not in your posts here, nor anywhere.

  22. One additional comment may be helpful.

    At first sight both Prometheus and Myriad have the appearance of judicial legislation. The US Supreme Court routinely embarks on that task and many of its decisions are far-reaching and enduring in their consequences. But there may be less room for such a task where what is involved is interpretation of a statute, and that is an aspect which in my opinion needs consideration. In the UK the UK Supreme Court (formerly the House of Lords) considered its role more limited than its US counterpart.

  23. @ Anon

    It is straightforward to say that the Myriad decision puts US law out of line with the rest of the world. On the whole when you write a posting, you should confine yourself to a single topic, and that is what has been done here.

    It is far less straightforward to say whether or not the decision is objectively wrong having regard to the evidence and previous case law (including Supreme Court case law). I plan to study that issue and write a piece. However, I cannot undertake to do so and publish it because that detailed study could lead to the opposite conclusion. And in view of the importance of the case, it is unlikely that I will be the only person embarking on that task, so that other papers and postings may appear which make anything from me unnecessary and inappropriate. It is one thing to say that a decision is unwise; it is quite another to say that the decision is wrong, and a far greater standard of care and thought is needed for the latter.

    Whether or not the Supreme Court is acting ultra vires is not a question I have the knowledge to consider. The correct interpretation of the claims objected to, the plain literal meaning of the statute and the impact of the Court’s judicially created exceptions are matters that are more straightforward. The question that I will be looking at is whether the decision was reached per incuriam, e.g. creating a conflict with older established case law or with the plain meaning of the statute (the wording goes back to 1836 substantially unchanged). In that regard, attention needs to be paid both to the questions actually addressed in the opinion, and also to other questions that ought to have been addressed and in fact were overlooked.

    So far as the last question is concerned, lawyers in the UK have ways of dealing with situations where a decision was handed down per incuriam. They usually say that even though the decision may have been correct as between the parties there is no binding rule or principle that should survive to other cases. What US lawyers may wish to do given the extreme respect for the Supreme Court within the US is difficult for a non-US person to judge. But if you look at Lincoln’s first inaugural address you will find an alternative view of the Supreme Court that came from a distinguished lawyer who had only just given up his legal practice to embark on the Presidency. His warnings about the limitations of the Court are becoming more pertinent.

  24. Yes Paul – even though you said your purpose was something else, it was clear that your view was that the decision was objectively wrong. I hope you picked up that not-so-subtle hint.

    But you kind of left out any type of support for that position.

    And that is no doubt far more important than the simple notice that this decision is different than ROW (don’t get me wrong – I do appreciate your fine work in showing how ROW went about this – thank you!)

    However, for you to simply state “unsupportable under US domestic law” and not address this – nor any of the points I made showing why the reverese is true, well, that is a glaring lapse.

    I do enjoy your last question. That is the major gist of my long running commentary on the Supreme Court itself acting ultra vires. Would love to see some academics try to answer that.

  25. Let the record show that Malcolm has failed.

    Failed to find the nuts to admit he was wrong and I was right.
    Failed to defend his pet theory that he tossed on a bonfire of his own making in his first substantive attempt to square Prometheus with the precedent case most on point.
    Failed to deny his own 1ying svckpuppetry (that he had previously sworn he did not do when he was QQng up a storm).

    And my intern just came in with this: Malcolm has posted nearly 21,000 words in one week on something ‘that he doesn’t care about.’

    LOL – nearly 21,000 words of mewling QQ and not word to show he has the nuts to admit the plain FACT that I got the decision and reasoning right and that he was wrong.

    So ends this chapter on Myriad, with a wonderful bookmark to the torching admission by Malcolm and a whole lot said that amounts to nothing.

    Life is good.

  26. @Anon

    Since I have a day job I cannot answer everything. Besides the point of this posting was simply to point out how far the US has deviated from the law of other countries.

    It may be no great secret, but my preliminary view is that the decision is objectively wrong and unsupportable under US domestic law. The errors, I suspect, are at the undergraduate level. That, however, will have to be the subject of considerable further investigation and if supported with be the subject of another posting.

    And what should be done with a decision of a high authority such as the Supreme Court which is simply and plainly wrong?

  27. Ned, your stonewalling and refusal to cooperate in discussions is legendary. This simply is one more example.

  28. Ned, your stonewalling and refusal to cooperate in discussions is legendary. This simply is one more example.

  29. Ned, your stonewalling and refusal to cooperate in discussions is legendary. This simply is one more example.

  30. Ned, your stonewalling and refusal to cooperate in discussions is legendary. This simply is one more example.

  31. Ned, your stonewalling and refusal to cooperate in discussions is legendary. This simply is one more example.

  32. The process patent is fine.

    There does appear to be an IMPLICIT problem with 271. You might want to check with the Black Robes.

  33. on the contrary, congress can and has authorized patents on processes that product products regardless that those products are in nature or even old

    Nice strawman. No one is arguing about the patent for the process.

    The products produced by the process are covered by statute.

    There you go again, assuming the conclusion of the matter, and ignoring all the points I have raised that say you simply cannot make such a presumptuous statement.

    not a product of man

    There you go again, repeating a blatant error that I have corrected you on man times now. PAY ATTENTION NED.

    271? Ned, you cannot do an end around against 101.

    No matter how many times you repeat your errors, you are still wrong.

    And you haven’t even bothered to try to address my points. Who is the one not being cooperative Ned?

    That would be you.

    Dialogue takes two. Won’t you join me?

  34. anon, on the contrary, congress can and has authorized patents on processes that product products regardless that those products are in nature or even old. The Supreme Court agreed, even in Myriad, that such processes are eligible, see the beginning of Section II. The products produced by the process are covered by statute.

    The first isolation of DNA was done in 1869 by Friedrich Miescher. link to en.wikipedia.org The fact that the isolation process is now more than a century old does not make isolated DNA not a product of man. It remains a product of man because isolation is a man made process invented by man.

    I think they really need to reconsider this case in view of 271(g). It cannot be that when a patentable process produces a product that is chemically identical to an old product or a product found in nature that that process is not eligible for patenting. This would imply that Rader's decision in the en banc case concerning products by process claims is flat out wrong.

    Rader is never wrong.

    Right?

  35. You are not listening Ned.

    271 – your tie-in cannot trump 101, just as 102 or 103 cannot trump 101.

    This is at least the third time I have explained this to you.

    L I S T E N

  36. Anon, but this is nonsense.

    You agree that one can patent a process. By statute that process covers the product it produces. Then you say that one cannot patent the product of the process because it is a product of nature even though it is a product of a patented process and not a product of nature.

    Let's stop using the ultimate legal conclusion in our statements for a moment. The patented process produces chemical X, call it processed X. The claim covers, under 271(g), the products produced by the process, processed X.

    Now, a I read Myriad, the process claim cannot cover processed X because it has the same chemical structure as chemical X in nature. But that implies that 271(g) is unconstitutional.

    What the Supreme Court needs to do is reconsider its holding in light of 271(g).

  37. Now, remove the stipulation that the product is NOT a product of nature.

    As it turns out, examplelitus grows like a berry on shrubery in Boxtawani, and is merely plucked like a life from the shrubery for export.

    Clearly, this then is product of nature and should be free to all men, and unencombered by patent law.

    Dicusss.

  38. No Ned, you miss the point – and the law – and that is exactly why I was right in Myriad and you were wrong.

    One simply cannot do as you indicate the attempt to do to get around the 101 issue.

    The 101 issue (product of nature) simply trumps (102/103/112/271).

    Exactly as I have explained to you. Continue in your ignorance at your own peril .

  39. No, anon, you miss the point.  If one limits the claim to the product of the process, it is not a product of nature.   It is a product of the process.
     
    That is what Myriad claims do.

     
     

  40. Anon, you seem to miss the point.  If “isolation” is a process, and I think it is, then Myriad claimed the product of a process, that is clearly not a product of nature.

     
    Sent from Windows Mail
     

  41. Another (non-101) wrinkle to throw at the 271(g) problem – and another reason 271(g) won’t save you.

    Take a product that is admitted to NOT be a product of nature. Let’s call it ‘examplelitus.’

    Examplelitus is invented in 1971, and has passed into the public domain.

    There happens to be 10,000 known ways of making examplelitus (hey, it was a great material and lot’s of people wanted to make it – the patent system worked and progress was really really promoted).

    Inventor Moe invents a new method of making examplelitus, Process Whoopdi. A proper and valid patent (over and above the 10,000 known ways) is obtained for Process Whoopdi in 2010.

    Inventor Larry invents a new method of making examplelitus, Process Doo. A proper and valid patent (over and above the 10,001 known ways) is obtained for Process Doo in 2012.

    Importer Curly has been importing examplelitus from country Boxtawani since 1995.

    Both Larry and Moe file suit against Curly in 2013 under 271(g).

    Discuss.

  42. correction: the new way of processing (a method) is perfectly eligible – now, and just like before Myriad.

    It is the coverage of the product (of nature) that Ned goes off the deep end and gets all wet.

  43. into water. This claim is 101 eligible in my view.

    Your view is wrong.

    As wrong as song.

    To Patent Law, it just does not belong.

    Ned – WRONG WRONG WRONG.

    Process elligible – yes (rather mundane) the product? no: sing the song, sing the just plain wrong song.

    You reach too far with 271 to try to take something from the warehouse. It is as bad (and as wrong) as you attempting to patent music. The method is not the item.

    Nothing is wrong with Myriad. It is AS logical AND consistent with the statutes AS – EXACTLY AS – any other case that deals with the judicial exceptions. As I pointed out to Paul: those judicial exceptions rise and fall together.

    And just as I pointed out to you: (and yet another point you have not addressed: hanging your hat on the ‘rendered useful’ hook would mean that Benson, Flook and even Prometheus would need to be – MUST BE – overturned.

    And by the way, Paul does indicate that this might be so with his comment regarding Prometheus.

  44. means that the product is made by man

    Ned – you are being pedantic again.

    It is a term of art: product of nature. I have told you before it does NOT mean the literal ‘item producED by nature.’ You are seemingly purposefully trying to play word games (reminiscent of your obfuscation of ‘as a category’ versus ‘categorically.’)

    Likewise, just because man can make something, does NOT mean that the item is not ALSO something that can be ‘producED by nature’ (to use your backlsiding.

    The term of art simply means that that item cannot be patented, even if ‘made by man’ IF it is a product of nature – as the legal term of art stands.

    Again, a point I raised and one you have chosen to ignore (or simply get wrong) is H20. Did you look at the patents I provided? Did your review the patent landscape report? All of these concern patents for making water. Yet NEVER did anyone even think of patenting that water, or trying to enforce 271(g) over the water made by those patented processes.

    Quite simply, THAT particular product H2O falls outside of the bounds of patent law (and that includes 102/103/271) EXACTLY like the result of music falling outside the bounds of patent law. It is barred at the gate. Period. Again – this is why I “attack” you when you attempt fallacious arguments ignoring the bounds of law and the useful arts. And AGAIN, this is a point I have raised which you have chosen to ignore.

    You are trying very very very hard to stay very confused.

    Stop backsliding.

    The “idea why anyone would say otherwise” is found in the Supreme Court case law I have long asked you to consider: Chakrabarty. There is a reason why I asked you to support your counter-position with a legal authority, and there is a reason why YOU NEVER DID SO. You continue to ignore the explanation that such items are not meant to be included in patent law as the warehouse of nature belongs to all men.

    It’s like the Calvinball face sp1ke lover jumps right past the gate and wants to be mired in doctrines that need not be applied.

    You are engaging in the very same type of self-deception (giving you the benefit of the doubt – others like Malcolm are engaged in the deception of others)

  45. means that the product is made by man

    Ned – you are being pedantic again.

    It is a term of art: product of nature. I have told you before it does NOT mean the literal ‘item producED by nature.’ You are seemingly purposefully trying to play word games (reminiscent of your obfuscation of ‘as a category’ versus ‘categorically.’)

    Likewise, just because man can make something, does NOT mean that the item is not ALSO something that can be ‘producED by nature’ (to use your backlsiding.

    The term of art simply means that that item cannot be patented, even if ‘made by man’ IF it is a product of nature – as the legal term of art stands.

    Again, a point I raised and one you have chosen to ignore (or simply get wrong) is H20. Did you look at the patents I provided? Did your review the patent landscape report? All of these concern patents for making water. Yet NEVER did anyone even think of patenting that water, or trying to enforce 271(g) over the water made by those patented processes.

    Quite simply, THAT particular product H2O falls outside of the bounds of patent law (and that includes 102/103/271) EXACTLY like the result of music falling outside the bounds of patent law. It is barred at the gate. Period. Again – this is why I “attack” you when you attempt fallacious arguments ignoring the bounds of law and the useful arts. And AGAIN, this is a point I have raised which you have chosen to ignore.

    You are trying very very very hard to stay very confused.

    Stop backsliding.

    The “idea why anyone would say otherwise” is found in the Supreme Court case law I have long asked you to consider: Chakrabarty. There is a reason why I asked you to support your counter-position with a legal authority, and there is a reason why YOU NEVER DID SO. You continue to ignore the explanation that such items are not meant to be included in patent law as the warehouse of nature belongs to all men.

    It’s like the Calvinball face sp1ke lover jumps right past the gate and wants to be mired in doctrines that need not be applied.

    You are engaging in the very same type of self-deception (giving you the benefit of the doubt – others like Malcolm are engaged in the deception of others)

  46. I meant 271(g).

    A man invents a new way of processing car exhaust into water. This claim is 101 eligible in my view. But under 271(g), the water produced is covered by the patent so that anyone using or selling that water in the US is now an infringer.

    A man invents a new way of refining gasoline from crude. That process should be 101 eligible. Under the law, the gasoline produced by that process is covered by 271(g). But under Myriad, the claim covers a product of nature, gasoline, and therefor must be ineligible.

    Something is wrong with Myriad. It is not logical or consistent with the statutes.

    Someone needs to file a motion for reconsideration.

  47. anon, I read the case. It appeared that it was hard to prove some claim elements. Did you have anything specific in mind?

    Btw, the case is Dynacore, not Dynacare. I couldn’t find it for awhile.

    More on o4:21. There are cases, IIRC, on the “substantially changed” issue. But I do not recall any cases where liability or potential liability was found based on 271(g) other than Zoltek.

    Regarding policy: a claim to the product of a process necessary means that the product is made by man. I have no idea why anyone would say otherwise.

  48. That claim covers isolated DNA per 102(g).

    I will assume that you mean 271(g).

    Have you read the case I provided before you responded with a question that case may have already answered?

    Have you find a case (any case) that may have actually addressed the question you are seeking an answer to? (and No, Zollteck does not count, as Rantanen has suggested).

    Have you even contemplated ANY of my questions at 4:21 before you typed your questions at 4:57 ?

    You are thinking (and placing your desired end result) before you have informed yourself (again). Such thoughts (not to be mean), have very little value.

  49. That claim covers isolated DNA per 102(g).

    I will assume that you mean 271(g).

    Have you read the case I provided before you responded with a question that case may have already answered?

    Have you find a case (any case) that may have actually addressed the question you are seeking an answer to? (and No, Zollteck does not count, as Rantanen has suggested).

    Have you even contemplated ANY of my questions at 4:21 before you typed your questions at 4:57 ?

    You are thinking (and placing your desired end result) before you have informed yourself (again). Such thoughts (not to be mean), have very little value.

  50. On the whole, the Biotech industry will, I hope, take a longer and more pragmatic view of where to locate its research.

    Pragmatic is not the right word for you Paul.

    Pragmatic is the word that fits how I have described the reality that Big Corp has NO allegience or sense of corporate citizenship to any one sovereign.

    Pragmatic is mercenary in the ultimate sense of the word.

    And here, I thought your purpose had a bit more than merely point out the difference. Funny how “quite a shame” is not indicative of an objective “point out the difference” and the tone of isolation – while perhaps true, carried with it more than just a casual observation of how things are.

    Let’s be honest, Paul: you were advocating for a certain desired result. Yes, you were ‘pointing out the difference,’ but please, don’t be offensive in pretending that was your overall purpose. There is too much other stuff and not enough objective baseline for that to be your overall purpose.

    You write better than that. At least I hope so.

  51. Ned – more moving of goalposts from you (with questions and not answers).

    We have also been on this merry-go-round before.

    Or don’t you remember the rejoinder that I have provided (many, many, many times): encryption.

    Stop the stalling and goalpost moving.

  52. a stream of American political thought

    That’s one stream that seems to have that global-big firm ‘taint.’

    And pardon me for being ‘an ugly american,’ but I don’t take kindly to the ignoring of sovereignty when the desired end result happens to coincide with ROW – especially when the path there is decidedly against the way US law is designed to work.

    I get (and respect) that ROW has decided differently. In that sense, I am showing more respect for law than what I am seeing ‘in the stream.’

    I get the international comparision on the result – but your piece is more than just a little one sided and missing those elements of US jurisprudence that actually dictated the result here. It surely does not help matters that there are those perfectly willing to kick up dust and TRY not to understand what has happened. There is no shortage (of words) from those who would rather QQ, or have this be some sort of Apocalypse.

    That is not to say that it is impossible to explore some intersting wrinkles. We KNOW the consitutional authority for writing patent law in the US lies with Congress (and only Congress). We KNOW the Court has been ultra-careful in its wording and deliberate tracing to that authority. But how many things lurk implicitly? And (as I asked above), if you single out this one judicial exception, what of the others? Do they rise and fall together? Why or why not? If the Court is WRITING based on policy and ‘implicit’ is not good enough, then all the judicial exceptions rise and fall together. What differentiation is there in the implicit words? Is that differentiation a sub-level down, implicitly found within the implicit words? As the Court itself would have it, they are NOT free to rewrite, and quite frankly, ANY foreign view – no matter how much comity one would like to have, would be a clear indication that the Court was in fact writing law – and thus the Court itself would be violating the Constitution.

    That’s a rather important legal thing here, no matter which political stream you want to swim in. And certainly, one which I would not be willing to sacrifice just to fit in with ROW.

  53. Ned,

    Your mind may have more ‘influence’ if you did not fall behind in the conversation and you addressed my replies rather than your desired end result.

    You seem to have a hydra of questions, but you don’t seem to be able to come back to mine or address the points I raise (except with questions).

    ‘Unprecedented’ would be seeing you answer questions, acknowledge points, provide cases (on point) as requested and generally refrain from jumping to your conclusion in midstream.

  54. anon, assume I first invented the method of isolating specific DNA sequences from cells.

    I claim the method.

    That claim covers isolated DNA per 102(g).

    Is the method claim barred by 101?

    I hardly think not.

    Yet, that seems the result of Myriad.

  55. But Night, we agree that useful applications are eligible. Where we do not seem to agree is on your notion that we can patent information processing per se, not applied o anything.

  56. As to the title, see mu post below.

    On the whole, the Biotech industry will, I hope, take a longer and more pragmatic view of where to locate its research.

    And overall, my purpose is to point out the difference between US law as it now stands and that of other countries.

  57. In reply to Anon’s question, “isolated” in the title encapsulates three things. Firstly the subject matter in dispute. Secondly the effect of the Myriad decision on the relationship between US law and that of other countries. Thirdly a stream of American political thought. In a single word it encapsulates the subject matter in dispute and what is wrong with the outcome, at least as viewed from outside the US.

  58. Ned – there is not on eword because the case was not about that.

    There was not one word about divided infringement. Does that mean jurisprudence on divided infringement has been all thrown out?

    Another few steps behind, you have fallen.

  59. I am not following you on this jump Ned.

    Your comments on ‘use’ and my replies to your comments have nothing to do with any NEW ‘real question’ you are moving the goalposts to in your 3:33 comment.

  60. Ned,

    As I mentioned, I had not thought of the 271(g) statute in relation to this case.

    But as I also mention, that statute does not directly touch on the 101 question at all, does it?

    That is why I stressed Rantanen’s comment. Rather than having been decided (in whatever way), the 271(g) portion appears to still be ‘virgin’ territory.

    But if I think about it for a moment, as to any actual product of nature and product made by a process under patent, don’t you think that Dynacre Holding Corp v. U.S.Philips Corp (363 F.3d 1263) might have something to say about the product? Don’t you think that the policy driver of 101’s product of nature has a lot to say? How much more substantial can you get than free to all men? How much more noninfringing can you get if there is no infringement possible by law (by policy winkwink)?

  61. How can an idea drive a car or detect J. Lourie’s wife breast cancer?

    How can an idea be a machine? How can you say that a machine that is driving a car is an idea?

    Functional claims in information processing are a recitation of structure.

    It really is funny Ned that you don’t get the relationship between your statements and you being confounded on this recent decision.

    Frankly, it is hilarious. Your employer must update their talking points.

  62. The statute, 271(g) reads in material part:

    Whoever … sells, or uses within the United States a product which is made by a process patented in the US shall be liable as an infringer.

  63. Ned,

    Just because the argument was not used in Myriad does not mean that the argument cannot be used in a case where that fact pattern presents itself.

    You are starting to do that thing again – mis-citing cases by over and under reading them.

  64. And I asked you for a case.

    And I pointed out that the statute does not help your 101 argument because it applies to non-101 items with equal force.

    C’mon Ned – you are falling way behind again.

  65. applied to some use

    Ned, you have not answered me regarding your very dependence related to ‘use.’

    Why is that?

  66. Benson used a judicial exception that is supposed to applied as narrowly as possible to swallow all information processing methods. That was the attempt that partially succeeded. Benson is based on saying that anything that computes a number (a mathematical algorithm) is a natural law, which is not true.

    Benson also tried to hold that anything that takes all possible uses on a computer is abstract. This is also outrageous in being against both patent law and common sense and in expanding a judicial exception as if it was passing a law.

    And, you still just can’t get your head around how Benson relates to this case can you?

  67. This is a pretty typical post of string of yours MM

    It’s like you know the workings of his inner mind…!

    Well, that and he has played out his stale bag of tricks ad nauseum ad infinitum

    Always great for quality blogging.

    /eyeroll

    C’est La Vie

  68. This is a pretty typical post of string of yours MM

    It’s like you know the workings of his inner mind…!

    Well, that and he has played out his stale bag of tricks ad nauseum ad infinitum

    Always great for quality blogging.

    /eyeroll

    C’est La Vie

  69. Invade?

    I think we have treaties and discovery, even when the defendants may not be in the US. They have to respond to interrogatories. They have to respond to subpoenas. They have to respond to every discovery order on penality that sanction may be entered against them, including a finding of infringement.

  70. Are you going to invade another country in order to discover what process is being used?

    That’s one approach, I suppose. You might also consider the Hague Convention on Civil Procedure.

  71. anon, I'm sorry, but there is not one work in the Myriad decision about "differences in kind." They focused instead on whether the chemical compound claimed was in nature or not. Period.

    This means that every patent that relied on some process to refine it, to purify it, to extract or isolate it into a useful form are now suspect. They have adopted Federico's mistaken view whole cloth.

  72. They have something against information. Poor Ned just doesn’t get it. Benson which you so highly tout has come to roost with your interests.

  73. No Ned – you prove it – and remember, a non-patented method is in the public domain.

    Are you going to invade another country in order to discover what process is being used? What basis do you have for even supposing that the other process is NOT being used? Remember – in my hypo, you cannot tell the difference in the product.

    The task is yours. How do you do it?

  74. What are you talking about?

    I am talking about the case you cited as support, that does not support.

    I am talking about the comment made by Rantanen on the link to the Zolltek case.

    And finally, I am talking about you trying to raise an issue, claim that that raised issue is a 101 issue, and I provide an example that shows that the issue is there regardless of 101.

    Do you understand how that robs you of the force of your argument?

  75. Paul, as I read the SC decision, I thought the determining factor was that the chemical sequence claimed existed in nature. The fact of its isolation to render it useful was ignored. Indeed, the Supreme Court never cited Parke-Davis, nor the Aspirin case, nor the B12 case that all decided that purifying or isolating a compound from nature to render it useful was sufficient. Why that was not the case here was not discussed. So if there is a distinction to be made between DNA and every other naturally occurring compound, we have no basis for making such a determination.

    Those who make the assumption that purified compounds remain patentable should not be so sanguine. The Supreme Court has just knocked US patent law on the head, big time, and has taken it in a new direction that portends great mischief.

  76. What are you talking about? Simply read the fricken statute.

    The product of a patented process is protected against importation, and sale and use in the US. By statute.

    There is no exception that the product itself might be the same as other products produced by other processes or whether the product is found in nature.

  77. You did not read Rantanen’s quote all the way through:

    “I haven’t found any cases dealing with this scenario in the regular 271(g) context, so it may be a novel issue”

    So basically, you are mis-citing case law again, right?

  78. I already provied an answer to this Ned: these purifications were deemed to have made a difference in kind.

  79. Ned,

    you are not thinking of Zoltek are you? That would be inconclusive:

      Here, Lockheed was not importing “a product which is made by a process patented in the United States”; instead, it was importing a nearly-finished component of that process. I haven’t found any cases dealing with this scenario in the regular 271(g) context, so it may be a novel issue.

    Rantanen, link to patentlyo.com

  80. But I guess you knew that.

    Actually Ned, that section did not enter my mind.

    You don’t even have to go to a 101 excluded product to have troubles with that section.

    You can have a fully legitimate product of man item, which itself is capable of being made by more than one process.

    Hypo: Product of Man is Man-ics.

    Process Old-Way of making Man-ics, originally patented 1961, now in the public domain.

    Process Wow-Newway of making Man-ics, patented 2011.

    Impossible to tell Man-ics made by Old-Way from Man-ics made by Wow-Newway.

    I import 2 tons of Man-ics. You claim infringement.

    But I have been importing since 1995.

    Go ahead and prove I infringe your Wow-Newway patent.

    Don’t forget, Man-ics is not a product of nature, and Wow-Newway is a valid and legitimate process patent.

    Your troubles simply are not constrained to the 101 issue, are they?

  81. But I guess you knew that.

    Actually Ned, that section did not enter my mind.

    You don’t even have to go to a 101 excluded product to have troubles with that section.

    You can have a fully legitimate product of man item, which itself is capable of being made by more than one process.

    Product Man-ics.

    Process Old-Way of making Man-ics, originally patented 1961, now in the public domain.

    Process Wow-Newway of making Man-ics, patented 2011.

    Impossible to tell Man-ics made by Old-Way from Man-ics made by Wow-Newway.

    I import 2 tons of Man-ics. You claim infringement.

    But I have been importing since 1995.

    Go ahead and prove I infringe your Wow-Newway patent.

    Don’t forget, Man-ics is not a product of nature, and Wow-Newway is a valid and legitimate process patent.

    Your troubles simply are not constrained to the 101 issue, are they?

  82. anon, Hand's Adrenalin opinion, the Asperin opinion, the B12 opinion, all were based on the fact that purification was necessary to render the product useful. Thus they allowed patents not only on the process of purification, but on the purified product regardless of the process of purification.

    The Supreme Court literally ignored these cases. How could they have done that — implicitly overturning their work without so much as even mentioning them?

  83. I’ll concede that Federico got it wrong.

    LOL – how gracious of you.

    Can you now return the favor and provide the case cite for this 102(g) thing you are talking about? Maybe answer a few of my questions and address a few of my points?

    (And perchance Hand got it wrong – remember, that was like what? His first patent case? And he did miss the Latimer prior precedent (pine needle case). Come to think of it, so have you.

  84. anon, imagine the hypo taking place about the time that refining oil was first invented.

    One of the products was gasoline.

    Assume that gasoline existed in crude oil, and the refining process only extracted it without change.

    Can the person who first extracts gasoline in pure form claim it in that pure form?

    Today, 271(g) removes any ambiguity. A claim to the refining process that produces gasoline covers gasoline.

  85. anon, thanks for the link to the Amicus Brief.

    Clearly, Federico was of the view that anything made by man was eligible, but that a naturally occurring product, extracted and purified, and highly useful, could not be patented because it was not really "new."

    I'll concede that Federico got it wrong.

    The brief also discusses patenting things like water once one discovers new process for making it. But the brief ignores that US law already has 102(g) that makes the product of a process an infringement regardless that the product is known.

    Thus we have it. Federico was wrong where Hand was right.

    Now the entire Supreme Court has adopted the Federico view, throwing into danger all patents that depended upon Hand's point of view.

  86. Actually Malcolm, as you will see from other posts of mine, the Prometheus claim would have been both patent-eligible and inventive. Finding the correct interpretation of a test is considered technical in Europe.

  87. And Malcolm continues to CRP all over Dr. Noonan’s blog now.

    He was outed there – and disclaims even knowing who Malcolm Mooney is – at the same time using the very same lame-@$$ stale rhetorical tools and espousing the same lame-@$$ crispy-fried ‘theories’ that no one else has ever ascribed to.

    The beatdown is THAT bad for him.

  88. This is a pretty typical post of string of yours MM. You deny everything and expect others to do all the work. When you are pressed up against a wall you bail out. What about the paid bloggers?

    Read through the string of comments and how you have switched your stance from one of even denying the existence of paid bloggers to then saying there is nothing wrong with them. And, once someone presents an argument of why they are not so good (such as the policy on patently-o or other good reasons) then you will become insulting and bail out.

    With the bio funding the antis: I have no interest in following this path with you. I can spend time and find some evidence besides my first hand knowledge (which is attorney client privilege), and then you will argue that they aren’t really against EE they are only stating fact. Then I can spend time finding clearly false statements and you will argue that it is just a rhetorical argument and there is nothing wrong with that. And, finally, you will bail out and insult me.

    Instead: go do your own leg work. The bio people funding the anti’s for their bifurcation push is common knowledge.

  89. Someone got disparaged? Oh my.

    LOL – from the biggest crybaby on the blog, the only thing larger than Malcolm’s hypocrisy are the flames from his agendas being torched by his own admissions.

  90. Someone got disparaged? Oh my.

    LOL – from the biggest crybaby on the blog, the only thing larger than Malcolm’s hypocrisy are the flames from his agendas being torched by his own admissions.

  91. This popped out at me:” Wow – it took less than a day for Malcolm to find the item I posted at 3:07.

    I’m not sure why

    LOL – translation:

      “My agenda makes me close my eyes as to why, and this results in my own toasting of my agenda, for example, by being the first to link to the Office interpretation of Prometheus which features integration and not my silly pet theory, and for another example, by (after avoiding any attempt at all for ages and ages) on a first substantive attempt to square Prometheus with the precedents most on point, I torch my silly pet theory into a raging bonfire.

      LOL – But because I, Malcolm, have zero intellectual honesty, I will continue to post in direct and clear contradictions and simply accuse anyone who disagrees with me of performing the vacuous rhetorical tricks that I actually perform.”

    LOL. You may ‘bow

  92. Thanks for the quote, Paul. This popped out at me:

    Last year’s shock decision in Mayo v Prometheus rendered some diagnostic tests unpatentable.

    I’m not sure why that decision would be considering shocking from the Guardian’s perspective. Prometheus’ claims would be deemed lacking an inventive step in Europe, as the mental step would be ignored when doing the analysis.

  93. Is that like isolating the opinion from the law of the sovereign and comparing results as if in a vacuum?

    Like that?

    And why, pray tell, do you not agree with the last sentence of “For the global biotech industry as a whole, it may also be time to review where to locate its research and development activity in the future.” ?

    That choice rather ignores the reality that Big Corp often makes decisions based on relative factor costs and rewards, and have no problem whatsoever moving their pieces parts to wherever the maximum profit can be had (and regardless to any sense of ‘corporate citizenship’ to ANY sovereign).

    I find both your general views, and how those views are being expressed in any type of legal analysis, to be a bit perplexing Paul. Your views seem to paint an encouraging picture FOR Global Corps when the complete picture paints an opposite view.

  94. I don’t need to trot out the evidence of the bio’s funding some of the anti’s. That is common knowledge. The bio people pushed hard for bifurcation of the patent system and at the same time disparaged the electrical arts.

    Someone got disparaged? Oh my.

    Still, sounds like your mysterious “bio” is just funding itself here. I don’t see money being transferred from “bio” to a group that is “anti” anything.

    As for your “common knowledge”, I searched the Internets for “bio funding anti patent” and came up with nothing that would support your little conspiracy theory. Maybe you could direct me to a credible link that supports your belief that your conspiracy theory is “common” knowledge.

  95. Benson is the opinion that has cost the participants in the patent system 10’s and 10’s of billions of dollars. It is against the 1952 patent act. It is based on popcorn science. And, it was done with a bad purpose with an intent to circumvent the 1952 act.

  96. What you are getting here is the same nuclear bomb of 101 that Benson delivered.

    The analysis should be: eligible under 101, parts that different than DNA molecule obvious over previous procedures, and then a determination of whether or not the DNA sequence is obvious over what was known in the art. That is the way it should have gone. Instead, like in Prometheus and Benson we get: you have something that you shouldn’t have in that claim. So, we are going to start from there and ask whether there is something else added to bring it into 101. Utter rubbish in respect to the 1952 Patent Act–sheer rubbish. Why the Fed. Cir. doesn’t come after the SCOTUS for not following the patent act I simply do not understand. I can only think that they have so few people on the Fed. Cir. that actually understand science and patent law that we are, in effect, dealing with a group of judges that are not qualified and simply don’t have the background to defend patents from the SCOTUS.

  97. The big picture is Benson. The logic of Benson is being used. That is her answer. SCOTUS ignoring the 1952 Patent Act and instead trying to use their common law rather than the statute. E.g. the way the SCOTUS is attaching their common law onto 101 is really just a circumvention of 102, 103, and 112.

  98. Probably you are a paid blogger. MM, I don’t need to trot out the evidence of the bio’s funding some of the anti’s. That is common knowledge. The bio people pushed hard for bifurcation of the patent system and at the same time disparaged the electrical arts.

    That is common knowledge and I have no interest in doing the leg work for you as you pretend not to know this.

  99. For the avoidance of doubt, the words “out on a limb” in Adrian’s article precisely echo the word “isolated” in the title to this post.

  100. The comment from my colleague Adrian Tombling in the Guardian newspaper is so apt that (with the exception of the last sentence with which I disagree) I should quote it as a whole:

    In a decision that has confused the biotech industry, the US Supreme Court decided last week that naturally occurring human gene sequences are no longer patentable.

    In doing so, the court has put patent law in the US out on a limb – at odds with laws that apply in many other parts of the world. More worrying still, the decision seems to indicate an intrinsic misunderstanding of how patents are used by the biotech industry and the value they bring to society through the creation of potentially life-saving drugs and diagnostic tools.

    In passing down judgement in Association for Molecular Pathology v Myriad Genetics, Justice Clarence Thomas stated that “laws of nature, natural phenomena and abstract ideas” should not be patentable. On this basis, he found that Myriad’s patents for two naturally occurring human gene sequences, which had been isolated for use in diagnostic tests for breast and ovarian cancer – BRCA1 and BRCA2 – were invalid.

    Why has the US Supreme Court singled out human gene sequences in this way when other naturally occurring chemical compounds remain patentable? Other chemical compounds found in nature, for example in plants or fungi, have in the past been isolated and used as drugs and would not appear to fall under this exclusion. Aspirin and penicillin are prime examples. But any biotech company that invests in research activity in order to isolate a human gene sequence and then use this knowledge to develop new products will be unable to claim protection for this vital first step in the innovation process, despite their significant upfront investment.

    This is the second US Supreme Court ruling in as many years to target innovation in the biotech industry. Last year’s shock decision in Mayo v Prometheus rendered some diagnostic tests unpatentable.

    In reality, the disappointment caused by these recent decisions will not stop research work in the sector. Most patent applications for biotech innovations include a variety of different claims and are very unlikely to rely on a claim directed to just the naturally occurring gene sequence. While the isolated human gene sequence would normally be referenced in all patent applications for technologies that subsequently make use of it, a number of other claims are typically included too. These might relate to uses of the gene sequence, the vectors comprising the gene sequence or the derived complementary DNA sequence itself, for example. Crucially, these aspects of the invention are still patentable.

    As the dust settles on this decision, biotech companies will be wondering what to do with the many thousands of patents that have been granted by the USPTO for naturally-occurring human gene sequences since 1982. In the vast majority of cases, little action will be needed, but it would be wise to review existing patents in the light of this decision. For the global biotech industry as a whole, it may also be time to review where to locate its research and development activity in the future.

  101. Ned,

    Are you hanging your hat on this notion of “rendered useful?”

    It seems to be the only aspect left of your argument. Mind you, rendered useful is a part of 101 (albeit that was traditionally meant to be but a very small hurdle).

    If that is indeed so, then you have a real problemm on your hands.

    Your problem is one of consistency.

    And consistency and the law of 101 has been one of your major problems.

    But the immediate point at hand with your strict dependence on “rendered useful” is that this would mean that cases like Benson, Flook and even Bilski would be reversed based on that logic. Each of those cases – it must be admitted – took something and rendered it useful.

    Do you have anything useful to say in reply?

  102. Too bad Ned you haven’t figured out how the “logic” of Benson is like a cancer that has come to roost in the biotech area. Benson is bad law. It is bad science. It is against the statutes.

  103. Paul,

    Venturing outside of this case’s particular example of our Court’s implicit reading of 101, and given your view of

      “What a shame… the Court decided to ignore it in favour of a judge-made exception to the express provisions of 35 USC 101!”

    how do you feel about the other ‘judge-made’ exceptions such as ‘Abstract?’

    And if you feel differently, how then would you justify this distinction – specifically under (and using) US law?

    Is there consistency, or some other (unspoken) rationale that provides for inconsistency?

    Do you think that you can find any support under US law for any of these judicial exceptions? Did the Court really find these ‘implicitly,’ or did the Court simply stamp its imprimatur on the law as it wanted it to be? And if so, under US jurisprudence, and given our constitution, was this act lawful?

    Your opinions…?

  104. I thought it might be easier to simply re-research and I found a quote in ‘Out of Nature: Why Drugs from Plants Matter to the Future of Humanity‘ By Kara Rogers on page 144 saying that Pastuer would not have received his patent if Federico had his way.

    Not sure if this is an additional source or not.

    But more likely, the amicus brief: link to aclu.org on page 20, as well as in a footnote on page 21 (referencing the same view as the Kara Rogers item).

    That’s all the time I have for now, but two different sources indicating the veracity of my 6:27 post should be enough.

  105. Shockingly (major eyeroll) Malcolm has refused to clarify his attempt at a substantive post squaring Prometheus and the most on point cases (cases that were explicitly not being changed).

    Let the record show that this archived page is evidence (statement against interest) that even Malcolm does not believe his pet theory of [oldstep]+[newthought] can square with the case law.

    Thank you Malcolm for the

      MASSIVE SELF DEFEAT

    mmmm, toasty

    You may ‘bow

  106. Bonus for you Ned since Malcolm’s self-defeating ways and his inability to find the nuts to admit that he was wrong had put me in such a good mood.

      anon, I invent a process for refining oil into is component parts. One is gasoline.

      1) Can I claim gasoline?

    It depends. Is this hypothetical in accord with this universe, in which gasoline is not simply isolated from oil, but includes processing (steaming, distilling, refinement, cracking, polymerizing, blending, sweetening, etc) that changes the item in kind rather than in degree?

      2) Can I claim the method of refining oil to produce gasoline?

    Nothing wrong with claiming a method – you still have to pass all the laws (note: this is not really a new question, is it?) I have already answered a question like this.

      Comment: The claim to the method protects gasoline under 102(g).

    Not anymore – unless you can get into a time machine and file this more than two months ago – and that’s only if your product is protectable in the first place. If your product is not protectable in the first place, how in tarnation do you expect to be all-of-a-sudden protectable now? Further, do you think any case law (and I am assuming that you have case law tied to 102(g) to support your extension of coverage) survives the eradication of this section under AIA?

      I then define that method in the specification, call it “isolation.”

      3) Can I claim isolated oil (which is gasoline)?

    It depends. You can be your own lexicographer, and it appears here that you have defined ‘isolation’ to be more, or at least different than the normal meaning of that term (else, why put this in your hypothetical?). Otherwise, same ‘it depends’ factors that apply to answer 1) and the comment above come into play.

      Comment: This theory of yours, now adopted by the Supreme Court, is astoundingly wrong

    It’s not a theory. It’s the law. And it is exceedingly unclear what it is exactly that you find astounding about it.

  107. I’ll see if I can find it – it was in some of the research I collected for the Myriad case awhile back.

    I’m pretty sure I have made a comment on this previously on this blog as well.

  108. As far as the rest if the world Ned, you really cannot ignore the fact that the rest of the world does not have our law.

    You portray a real amateurness by ignoring the sovereignty factor. You should visit the thread online and read my comments to Paul (and ignore the tr011 side effects of Malcolm, who not only does not have the nuts to admit that I was IN FACT correct as regards the case, but has gone eplectic with his thousands upon thousands of empty prattling since then).

  109. Ned,

    You are aware of course that Frederico himself would have reversed some of those earlier decisions, right?

  110. Fish, the case takes US patent law on a new and potentially disastrous spin, ignoring the wealth of prior US cases, from Hand’s Adrenalin case, the Aspirin Case and the B12 case, all of which involved chemicals that were structurally identical with their counterparts in nature, but which had been rendered useful by a process of purification or extraction: isolation. The weight, if not the whole of prior case law did not consider decisive whether the claimed composition was structural identical. That was almost irrelevant, because until extracted and isolated, or purified, the composition simply had no utility.

    The whole world, but not the US Supreme Court, agrees that when one processes a naturally occurring compound to make it useful, it is patentable when claimed in that isolated or purified form.

    The holding in this case may throw into question long establish case law and precedent, and further bring into question patents on any chemical composition that relies on a naturally occurring chemicals that must be refined or processed to be useful.

  111. Actually, anon, you should actually read the cases. I suggest starting with Hand and Adrenalin, the 7th Cir. and Aspirin, the B12 case.

    They all have one thing in common.

    The compound was identical with that in nature, but had undergone an extraction or purification process that made it useful.

    Where in Myriad are these cases discussed? Nowhere.

    Egad!

  112. Anon, don't be so sanguine. There is nothing in the Myriad opinion that give certain hope that purified, extracted, processed anything that is rendered useful by the process remains eligible if its chemical structure is identical to that found in nature.

  113. Change in kind versus change in degree (that’s the answer to all of your questions here).

    Your hyperbole notwithstanding, this decision does not throw away any case law and vindicates my view of that case law.

    Now, will you finally answer my questions and address my points (including your anti-Chakrabarty stance).

    Dialogue takes two Ned – wont you join me?

  114. 6, thanks. I haven't received such a rejection in a long time, but I do not practice in the chemical area where such claims might be important. It is a wonder though that no one fixed on the "isolated" limitation in the Myriad claims to argue that that that claim limitation meant the compound claimed was the result of a man made process. It hit me will full realization when I read Paul Cole's post here that that limitation is what the ROW focuses on to tie the claim to the work of man.

    Ned

  115. Anon, I invent a process to isolate gasoline from crude. Does a claim to isolated gasoline pass 101?

    I invent a process to purify aspirin. Can I claim purified aspirin?

    I invent a process to purify adrenalin. Can I claim purified adrenalin?

    I invent a process to purify B12. Can I claim purified B12.

    The Supreme Court opinion here is remarkable in many respects, the most important of which is that it has thrown a century of law into a trashcan.

  116. you were talking about two things paid bloggers and bio industry funding the anti’s.

    Uh … you brought up the b.s. about “bio” funding the “antis”. I thought that was funny and I said so. I still think it’s funny. And I’m still waiting for you to show me an example of “bio” funding “the antis”. You brought it up. I didn’t.

    paid bloggers are poison to an environment like this.

    Again, are you suggesting that someone is being to paid to post comments here in this blog? If so, who? And what is your evidence for that?

    If you mean something else when you say “an environment like this”, then tell us what you mean. As I said, paid bloggers is nothing new or controversial. Paid bloggers are as old as blogs themselves. Before blogs, we used call those people “paid writers” or, if they were very very focused on trying to sell you something, “paid advertisers”. So what?

  117. “But the Federal Circuit has changed all that with a case, and en banc case,”

    Btw, the PTO still officially ignores process limitations of this sort, except in so far as they dictate a change in the product. Same as for the last 70 or so years. I’ve informed the upper people of the en banc decision, which many of them were wholly unaware of, but they still say we’re doing it the old way. And until the office of the solicitor or whatever his name is decides otherwise we’ll still be doing this. I think this is because the PTO would like to challenge that aspect of that holding but was not a party in that case and did not intervene so we have to send a case ourselves. Although I doubt if that will happen anytime soon, people tend to roll over in the face of the PTO applying old time lawl in the face of some about turn by the CAFC where most everyone that knows patent lawl is of the opposite opinion because that is how the grew up.

  118. LOL – Malcolm is so drubbed here that he is sprouting all over the place at PatentDocs.

    Vivika? That’s the best one so far.

    Still having trouble to find the nuts to admit that you were wrong, Malcolm?

    LOL – your scurrying around is like the best week evah.

  119. From the same article:

    This is the second US Supreme Court ruling in as many years to target innovation in the biotech industry. Last year’s shock decision in Mayo v Prometheus rendered some diagnostic tests unpatentable.

  120. “In a decision that has confused the biotech industry, the US Supreme Court decided last week that naturally occurring human gene sequences are no longer patentable.

    In doing so, the court has put patent law in the US out on a limb – at odds with laws that apply in many other parts of the world. More worrying still, the decision seems to indicate an intrinsic misunderstanding of how patents are used by the biotech industry and the value they bring to society through the creation of potentially life-saving drugs and diagnostic tools.”

    link to guardian.co.uk

  121. Ned – how is my giving you answers and law backing up those answers while waiting FOR YOU to do the same an example of me stonewalling? Realize too that the conversation is fractured on the website.

    The ball is there, sitting in your court. Turn around, pick it up and do something with it.

    Preferably something that will involve more than you simply declaring something is ‘wrong’ without a legal backing of that position.

    And lose the “I am outraged” gambit – that rhetorical tool never worked before, and won’t work now.

  122. Ned, your ignorance of the product of nature exclusion is glaring:

    You could not be more wrong with

      If I claim a product of nature qualified by a man made process that renders it in useful form, that product is now man made even if it is identical to the product in nature.

    there is a simple reason that the phrase is not “produced by nature.”

    On the up side, it appears that you are operating under colossal ignorance, and that is more easily fixed.

  123. and this is regardless that the product itself is old.

    Face palm.

    Ned – but not if the product is ruled out by a 101 exception. I anticipated your thought on this and that is why I already commented on music. You need to read my posts already on the board before posting a response that I have already defeated.

    You are steps behind and only falling further behind.

  124. Congress made the decision in the late ’80s to make the product of a patented process an infringement under 102(g), and this is regardless that the product itself is old.

    If I claim a product of nature qualified by a man made process that renders it in useful form, that product is now man made even if it is identical to the product in nature.

    Isolated DNA is not product of nature DNA. It is DNA that has undergone a man made process. It is a product of man.

  125. Ned,

    You are falling to the Malcolm tactic of NOT answering questions and addressing points, but only instead asking questions and making judgements without any backing in law.

    Why don’t you instead actually answer the questions and address the points I raise?

    I think we both know – exactly like your legal reasoning in my PRE-case discussion (Chakrabarty), that you provide NO legal backing because you have NO legal backing.

  126. anon, I invent a process for refining oil into is component parts. One is gasoline. Can I claim gasoline?

    Can I claim the method of refining oil to produce gasoline?

    The claim to the method protects gasoline under 102(g).

    I then define that method in the specification, call it “isolation.” Can I claim isolated oil (which is gasoline)?

    This theory of yours, now adopted by the Supreme Court, is astoundingly wrong.

  127. certainly, isolated H2O is not a product of nature

    Are you telling me that each of these patentees should have claimed water?

    US1931347
    US2409624
    US3675442

    Seriously Ned?

    This odd desire of yours to help Malcolm find some shelter from the Myriad storm is wreaking havoc with your credibility. You are approaching a point of colossal ineptitude or colossal collusion.

  128. C’mon Malcolm, let’s hear that clear explanation from you, the master of English as a first language. This should not be difficult for you.

    You know that I will be referencing back to this exchange as an archive item whenever you try to peddle your B$ theory or how ‘clearly’ the Prometheus decision was ‘reasoned.’

    LOL. You finally attempt a substantive answer to a Simple Question that was put to you at the very onset of the Prometheus decision, and you toast your fingers (and your little pet theory) yet again.

    Up in flames, see how high they rise.

    Here’s your chance – right now – to set the record straight in your impeccable command of Elngish as a first language.

    Well?

  129. Ned,

    Seriously? You say I don’t answer you? Not only did I answer you, so did the U.S. Supreme Court.

    And both of our answers are the same.

    Sorry – but your attempts at doing an end around with the product by process are trumped with the judicial exception. Perverse1y, you would still pick and choose which Supreme Court case law you wish to follow and which you wish to ignore and that you do not wish to follow.

    Just as in our other discussions on 101, your inability to understand law (and case law) shows in how you want to place 102 above 101 in this discussion.

    Try to think of it this way: 101 bars you at the gate. Even if you pass everything else (102, 103, 112), but do not pass 101, then no patent for you. This is why I ‘insult’ you when you post hypotheticals with music – such inclusion of non-useful arts stops you immediately. This is also why I repeatedly emphasize that ‘timing’ and the aspect of prior art is not a factor in the product of nature exclusion. I demonstrated this to you with the words of Chakrabarty, and repeatedly asked you for some (for ANY) source of legal authority for your counter position (it is no small coincidence that you NEVER did so). In the immediate case, we both see who’s view has been vindicated.

    And yet, you continue to attempt to kick up dust with elements of law that do not and cannot apply. Think man – you do not pass go, you do not collect $200. You confuse not receiving an answer with not receiving the answer you want. I have answered you, and so has the Supreme Court – and it is an answer based on US law, not foreign law.

  130. 1ies, deception, and then turns around and accuses others of what he does.

    It’s one great big spin factory for him, and he cares not at all about any sense of intellectual honesty. Such to him is a shiny whistle that needs to be buried under a mountain of CRP.

  131. Of course the great irony is that this case was decided in a similar fashion as Benson and Flook. That information of the DNA leaks over to any claim now and you cannot use it. The SCOTUS just does’t want to use 102, 103, 112. They just refuse to accept the 1952 patent act.

  132. Uh…in fact read the thread–you were talking about two things paid bloggers and bio industry funding the anti’s.

    Of course paid bloggers are poison to an environment like this. There is no interchange of ideas with a paid blogger. They speak from policy points that are controlled by another person.

    Face it MM, you write little one off posts and 1ie about what you wrote before. Not sure why you spend your time doing that, but even if you are being paid what a waste of a life.

  133. Paul, historically, the US patent office ignored process limitations in a product-by-process claim. One of the reasons for this was because the claim was considered to cover the product regardless of whether the product was produced by the process. But the Federal Circuit has changed all that with a case, and en banc case, the name of which I do not recall at the moment, such that the product-by-process claims only covered products produced by the process.

    Also historically, the products produced by methods were not covered by the method patent. But that all changed in the late 80s when we amended the infringement statutes to declare the products produced by patented processes to be infringements under §102(g). Thus when one practices a method that produces a product, the product is covered as an infringement.

    Taken together, an old product produced by novel process should be patentable. I don’t know of any cases that actually hold this, but it it should be true because in order to infringe one has to perform all the process limitations.

    Thus when I claim a process for producing H2O, there should be no objection that the process is not patentable because H2O is known. So if I name the process: call it “isolated,” I should be able to claim isolated H2O because in substance the claim is the same as a method claim, provided the method is defined in the specification or in the claim itself.

    But certainly, isolated H2O is not a product of nature, it is a product of man because it is produced by the man-made process known as isolation. It seems to me this is the way the rest of the world considers the matter in the case of isolated DNA. It is DNA produced by a man-made process, and is patentable regardless that the structure of the DNA is the same as the structure of DNA in nature.

  134.  no anon, you are often the weeds because you refuse to answer a question, a simple question.
     
    A process results in water.  Water produced by the process is covered under 102 (g).  
     
    Tell me whether this claim is, or is not, a violation of section 101 because water is a product of nature?

     
     
     

  135. “Don’t you just love Malcolm’s latest self-immolation? Check out his post at 10:55 as he sticks his foot in his mouth trying to square his Prometheus case with Diehr.”

    Oh yes total self defeat! First posting the link to the Official Guidance on Integration, while proclaiming victory in Prometheus. Now this. He just can’t help himself!

  136. 101 IE,

    Don’t you just love Malcolm’s latest self-immolation?

    Check out his post at 10:55 as he sticks his foot in his mouth trying to square his Prometheus case with Diehr.

    I spell it out at 1:18, showing that he just destroyed his own pet theory when he tried to square Prometheus.

    You gotta love a man who torches his own agenda and brings the marshmallows to boot.

  137. You were kicking up dust and doing your usual mewling QQ.

    My post was a perfectly apt description.

    Not sure how you think that makes my post ‘kicking up dust.’ Do you need a new dictionary? One for this world? You know, Planet Earth?

  138. lol failed attempt? How then did they fail?

    C’mon man, be quick about it. Most everyone (else) recognizes already that I was right and you were wrong.

    You just don’t have the nuts to admit it.

  139. From the one ever shining his tinfoil hat, more of that lovely vacuous Malcolm posting without a point.

    Hey, IF you don’t understand the words conflation and imputation, I did offer to show you the definition meanings when I used the terms (you know, to show you that your accusations were again, well, completely off – as usual).

    Just like strawman and dissembling, as I recall…

    …words that fit you – well imagine that.

    LOL

  140. All that straw and no place to go.

    Funny – it is that is perpetually confused and don’t know how the court could reach its decision.

    Ah yes, that ever witty feigned and projected ignorance.

    Ohhhhh – what majesty of legal acumen.

    /off sarcasm

  141. MM said: “….it would permit the wholesale protection of information itself, by allowing applicants to append trivial old, conventional steps to new, non-obvious mental steps.”

    A patent applicant can file a claim with mental steps and physical steps irregardless if the mental or physical steps are old or new, or even obvious, and “may” have a patent eligible claim under 101. Yes, there are legal exceptions but as Prometheus told you:

    “In Diehr, the overall process was patent eligible because of the way the additional steps of the process [integrated] the equation into the process as a whole. 450 U. S., at 187. These additional steps transformed the process into an inventive application of the formula.” [MAYO COLLABORATIVE SERVICES v. PROMETHEUS LABORATORIES, INC 566 U. S. (2012) 3 Syllabus] (Emphasis Added)

    You do understand “Integration Analysis”?

    Well, do you Malcolm?

    ::Usual Silence::

  142. MM: “What “contradictions” are you referring to? I’ll address them right now, if you like.”

    The contradiction of the Prometheus Court instructing you that an “integrated” process is statutory subject matter, and your repeated assertions that you can disintegrate/dissect such claims into patent eligible and patent ineligible elements or steps, and ignore the patent eligible elements in the concluding analysis.

    Or in short, how you, MM, theorize taking the claims as a whole and dissecting them at the same time.

    In fact your obvious failure to reconcile any of your evolving dissection theories with the Prometheus Courts use of “integration” is one BIG glaring contradiction!

    Care to explain that now?

    ::Usual Silence::

  143. As for divergence, that too is not up to our courts.

    Are you suggesting that US courts are never allowed to consider how a certain decision in a foreign country affected the citizens of that country, or how US citizens interacting with that foreign country were affected? Or are you suggesting that US courts can do that, but only when you say so?

    I’m pretty sure that there is no over-arching Constitutional prohibition against considering a fact about another country and its legal system. But let us know if you have a different view and where you find support for that.

    Or just continue acting like an a–h0le. Your choice.

  144. I claim a process,

    Off into the weeds, Ned right there.

    A process is not a product of nature. Your example is meaningless. And it is meaningless whether you go slow or if you go fast.

    The 101 exclusion is on the product – that is why the exclusion is called a product of nature exclusion.

    And just as slowly, read my post at 4:56 PM.

    Ned we covered this PRIOR to the decision. Why are you still struggling with this?

  145. I will ask you this once more, but s l o w l y this time, just so that you might understand the issue:

    I claim a process, call it the C*R A*Per process. It produces H20.

    Under 102(g), H2O made by the C*R A*Per process is covered. H2O not made by the process is not covered. The H2O produced is identical to the H2O found in nature.

    Does the claim cover a product of nature?

    Is the claim ineligibe under 101?

    If not, why, not (WRT both questions if the answers are not the same)?

  146. There is a clear difference between ‘treating with great respect’ and re-writing law that our Court just does not have the authority to do, Paul.

    You are gravely mistaken if you think the Court has the authority to re-write law just because of variance with other countries. You ‘demand’ something that is simpy AGAINST the law here.

    It is not a question of ‘binding authority.’ It is a question of who HERE has the authority to write the law in the first instance. And here, specifically, patent law is constitutionally constrained. As I have pointed out previously, there is a very real and substantive reason why since 1952 every single Supreme Court patent eligibility case has referenced the authorityof the words of Congress in 101 (albeit with a winkwink implicit finding).

    There is a reason that ‘judicial activism’ at the Supreme Court level is an insult.

  147. But that is what the Supreme Court did here.

    CRIMINY Ned – read teh case again. What EXACTLY does the Court say is the holding early on?

    They decide this case on 101 based on the produc tof nature judicial exception.

    Why the h311 are you trying to obfuscate with 102?

    Get out of the weeds Ned.

  148. the claim covers only H20 produced with the method.

    LOL – that’s not even how the product by process scheme works Ned.

    You are way deep into the weeds now.

    You don’t evenneed to kick up the dust on 102 – I explained this as well to you PRIOR to the decision.

    Why are you trying to get on the merry-go-round instead of listening to me?

  149. No Ned – the rest of the world does not have our law and our judicial exceptions.

    When the rest of the world wrote their law, they did discuss this and they did decide otherwise. I have no issues with them or their law.

    It just isn’t our patent law. You cannot ignore what our patent law is – or exactly which branch of the government is authorized to write that patent law.

    AGAIN – I have held your hand on this many many many times – why do you think that in EVERY 101 decision since 1952 has the Supreme Court specifically traced their authority not to themselves, but to the words of Congress? In 1952 Congress revoked the common law ability to decide the (pre-1952) version of 101. The Court decided to hand their nose of wax twisting on 101 after that and have stuck themselves there. They cannot write law on their own and they cannot take the Europe law and rewrite the US law in its image. THIS IS EXACTLY WHY Stevens lost the majority position in Bilski – because he would have actually re-written the laws of Congress and written out 273. The rest of the Court knew this and could not let that happen.

    ALL OF THIS HAS BEEN EXPLAINED TO YOU MANY TIMES NOW.

    They did not ignore the ‘process limitation.’ They simply said that it was not enough.

    This is exactly as I explained PRIOR to the decision Ned.

    C’mon man, you can not be this thick.

  150. But your blatant 1ies are tolerated here, and while perhaps a bit ‘rough’ (a little pity party for poor Malcolm and his play for the crybaby veto), I am still exactly right.

    As for any ‘insults’ for you, you have more than deserved them, and they continue as long as you continue to ask for them. I told you that you have power to control this – just stop posting your CRP and I will stop rubbing your puppy dog nose in it.

    Or is this too difficult for you to understand?

  151. @ Anon: The reasoning of other judges in other countries cannot be binding authority in the US. We are not bound by the opinions of US courts, but on occasions we treat those opinions with great respect. If other judges in other countries have considered the same topic and come to conclusions, their arguments and conclusions are worth listening to. Similarly if an outcome in the US puts US law at variance with other countries with which the US has a close relationship as e.g. Europe and Australia, that demands a little more than mere whim if a contrary position is to be adopted.

  152. So you have a different composition that is not a product of nature, right Paul?

    And what theory are you using to say it might not be eligible? That you have something that can produce a desired end product, a desired result?

    Sorry, but that is a horrible misread of the case. Patent law is full of examples of a multitude of patent eligible things that can produce the same end result.

    You got caught up in the dust cloud being kicked up because Malcolm cannot come to admit that I had the case exactly right and he was completely wrong.

  153. anon, I know what they said. They clearly ignored the process limitation that made the claimed subject matter a product of man.

    Why this wasn't emphasized before is a puzzle. According to Paul Cole, the ROW gets it.

  154. Anon, even if the C*R A*Per H20 is identical with the prior art H20, the claim covers only H20 produced with the method.

    The scope of the claim is not different than the H20 covered under 102(g) as the output of the C*R P*er process. I would be frankly surprised to find such a claim to violate 101. Why it would not be patentable under 102 is, to me, also a puzzle. Ignore process limitations?

    But that is what the Supreme Court did here.

  155. The point is clearly not significant at all. Just ask Farmer Bowman.

    (and I was only playing around with the misspelling – not a big deal, this is only a blog)

  156. Paul,

    You do realize that here in the states it is not up to the courts to write patent law as you suggest, right? No matter where those ‘good ideas’ come from.

    It has to do with our constitution.

    As for divergence, that too is not up to our courts.

  157. I am just suggesting that if a claim to an isolated sequence is non patent-eligible a claim to an amplified sequence coding for the same protein might not be. The reason is that the isolated sequence can taken directly from the animal pr plant whereas an amplified sequence by definition is not and is the work of human intervention.

  158. sorry – should have said fructus naturalis. I remember correcting the error but for some reason the earlier version got posted.

    The point is that what grown naturally on land belongs to the land owner. What is artificial and planted by a farmer belongs to that farmer. I think that point would be self-evidently of significance to the present debate.

  159. That depends Ned – is is effectively the same as the product of nature?

    Hint: this is real easy as the Supreme Court just answered this question for the very thing that Myriad made.

    C’mon Ned – THINK man.

  160. @Anon

    We have national or regional sovereignty over here too.

    But our courts look at what happens in other countries and try to ensure than any good ideas in foreign law get picked up and used in ours. Our courts are not too proud to think that other national courts might not have good ideas that they should adopt, and US and German decisions are routinely cited over here, though not necessarily followed.

    And we may suffer from divergence. But our courts try to avoid thoughtlessly creating it.

  161. You invent a new process? Great – you get a patent for the process.

    You cannot patent a product of nature, no matter how that product of nature is made.

    In your example, you are not clear. is C*R A*Per H2O effectively the same as H20?

    If so, do you really need to ask the question?

  162. Anon, take your H20 example. Suppose I invent a process using a recombinant DNA organism that coverts sewage to H20 in the presence of salt. Call the process the C*R A*Per process.

    Now the claim says,

    1. C*R A*Per H20.

    Now, is C*R A*Per H2O a product of nature or not?

  163. Still can’t hear you Malcolm? Who got it right?

    And do you want your own quote, you know the one you dnaced to after the oral arguments, when you were discussing this with another PhD on these boards?

    You do know it is archived that you ended up at my position, right? The very one you now try to obfuscate and denigrate.

    LOL

  164. No Ned,

    Read the holding again – right at the beginning of the case.

    And realize that product of nature is a legal term of art – particular to US jurisprudence.

    Do you understand that?

  165. discuss other aspects…

    You mean like aspects that the case didn’t even bother with, at the same time you cannot find the nuts to say who did get the case right?

    You mean like that?

    LOL

    In other words, you just want to w@nk about what is not in the case.

    LOL

  166. 112, 102, LOL – guess what? This was a 101 case.

    Can you actually address that?

    Thousands upon thousands of words, and still saying nothing.

  167. LOL – speakiing about who gets really quiet about a particular question,

    Who got the Myriad Supreme Court case right? Including the reasoning?

    Who got it wrong?

    WHAT? CAN”T HEAR YOU MALCOLM, SPEAK UP?

  168. as if people being paid to blog is somehow unfair

    Sure it is. It is also against the rules of the blog in that all posts are to be of your own personal nature – you know, the ability to warrant and represent that you either own or otherwise control all of the rights to that content is required of the person posting the content. If you are being paid to blog, you violate this rule.

    What a hypocrite you are Malcolm for coming down hard onthe so-called “Trolls” and yet want to ‘validate’ paid bloggers.

    Things that make you go hmmm.

    C’est La Vie.

  169. You 1ie.

    LOL. Happens a lot.

    Even after Malcolm has been warned that there is to be no 1ying on Patently-O

    C’est La Vie

  170. LOL – looks lack Malcolm has created yet another svckpuppet at PatentDocs.

    Where did the ‘inspiration’ for ‘Shrivan’ come from?

  171. How is my post at 1:18 not what you are saying?

    Or are you having difficulty with English as a first language?

    Speak up. I can’t hear you.

  172. Asked and answeredWe both know this already

    Sure we do, Dumpty! Just like we both know about your habit of hiding behind a bush in your underwear and watching the kindergartners at recess, in spite of your parole officer’s warnings.

    For some reason, you h-te talking about either of these things. You just get really quiet every time your asked to explain why it is that you do and say such strange things.

    Maybe we can set aside your peeping disorder if you just tell us, for the record: is a useful, non-natural bacteria that differs from a natural bacteria by the conservative change in one codon of its genome eligible for patenting? Please explain why or why not, using your “different in kind” theory.

  173. The patentees discovered an association between X and Y, but did not claim that at all. They simply claimed a molecule that was essential in making that determination in practice, but also covered, due to its breadth, other uses as well, as you say. That is a classic 112, p. 2 issue.

    It’s also a classic inherent anticipation issue, where those “other uses” are old and pre-date the filing date, which they certainly do, by many, many, many years depending on the art we are talking about. And note that these “other uses” are not really “uses” of the broadly claimed molecule in the way that we would normally use that term. Rather the claims are so broad that, in some cases, they read on old compositions that were made by researchers in the course of unrelated studies, years ago.

    It’s as if I synthesized a previously unknown, undisclosed chemical, discovered a use for it, then claimed the chemical so broadly that people infringe my claim everytime they culture yeast to produce alcohol. That’s what Myriad did. The USPTO was too inept to deal with the claims, apparently, and the ACLU recognized a perfect (indeed, willing!) target in this relentlessly greedy corporation. It was a perfect storm, although thankfully a relatively tiny one as these things go.

  174. trying to understand your non-native English

    LOL – like others who DO understand? like most everyone? for example, the Supremes (and Courney) – in fact, like most everyone else (except you, Francis, Robert, Keeping It Real, etc).

    And I have told you: pointing out our errors does not make one a douche.

    On the other hand, you not having the nuts to admit that I was right and that you were wrong, and then now typing upwards of 7,000 words on the matter and still not finding the nuts, well, that is a high level of being a douche.

  175. Malcolm, but the issue you identify is a 112, paragraph 2 issue, it seems. The patentees discovered an association between X and Y, but did not claim that at all. They simply claimed a molecule that was essential in making that determination in practice, but also covered, due to its breadth, other uses as well, as you say. That is a classic 112, p. 2 issue.

    From a 101 context, the principle, the correlation cannot be claimed nor wholly preempted. Claims on isolated DNA did not wholly preempt it either, given the cDNA alternative. Allowing patents on both would be a preemption problem.

    So, it looks like the SC cut the baby in half. But, by doing so, they may have gutted an real attempt to use the patenting of the molecule to protect the law of nature.

  176. In fact it is common knowledge and there have been a number of news articles regarding paid bloggers. You know this and are pretending you don’t.

    Uh … I wasn’t talking about the existence of “paid bloggers”. Maybe you were and I misunderstood you. I was talking about the existence of people being paid (by “bio”) to post allegedly “anti-software” comments in the comments section of this blog.

    Cripes, you act as if people being paid to blog is somehow unfair to your pro-software patent “team”, or if your “team” is somehow incapable or unwilling to use blogs yourself. Grow up. Maybe find some better arguments? You’re going to need them, after all.

  177. but in reality no such thicket exists.

    LOL – they were talking about one patent (you know, the thing about a case and controversy) – talk about your strawmen.

    More popcorn!

  178. So, MM, do you deny knowing about the job posting? Do you deny knowing about the numerous discussions on this board regarding paid bloggers?

    I think we can see that anon is justified in his criticism of you. You 1ie.

  179. Asked and answered Malcolm. We both know this already, and it is in the archives.

    Did you find the nuts yet?

  180. what if I construct the following sequence: H2O.

    H20 is a naturally occuring composition, as claimed. It’s ineligible. Myriad’s compositions were not naturally-occurring, but still ineligible. At least, that’s what the Supreme Court told us.

    It has to be different in kind

    Oh, is that the test? Really?

    So please tell everyone: is a useful, non-natural bacteria that differs in kind from a natural bacteria by the conservative change in one codon of its genome eligible for patenting? Please explain why or why not.

  181. What the frack does it matter if the same sequence may exist in nature but in a form that is not useful?

    Well, I think it matters in two circumstances. First, it matters if the claim is drafted so broadly that it literally turns anyone who wants to study the organism’s genome into an infringer. Myriad’s claims were about that bad (of course, they could have been easily invalidated for the same reason as inherently anticipated by the prior art where human chromosomes were “isolated” and fragmented). The other patent statutes were perfectly adequate to deal with those claims (remember that the ACLU was looking for a bigger holding here which is why they weren’t concerned with merely invalidating Myriad’s claims).

    Second, it matters in the situation where there are so many patent claims on so many specific “natural sequences” that nobody can study any organism without infringing somebody’s patent. This is more in line with the Supreme Court’s concerns but in reality no such thicket exists. To the extent there could be such a thicket, the Prometheus decision did a great job of eliminating that. You’ll note that the Myriad decision does not really discuss the great difficulty that “gene patents” present for, e.g., scientists trying to identify new and useful genes in deep sea vent bacteria and the like. That’s because no such difficulty exists. But they went ahead with a broad holding regardless.

  182. Clearly if you construct a sequence artificially, it is man made.

    Ned, what if I construct the following sequence: H2O.

    Don’t you yet get the point that merely being man made is not enough? It has to be different in kind – that’s rather the whole point of the product of nature exclusion.

    As for the Euros – they ARE right – but only according to their law, not ours. You do remember that they do not have our constitution and our 101 and all of the (winkwink) authority-from-Congress-implicit-readings therein, right?. I posted on this above.

  183. Seriously can you move the goalposts back to the point of the post, you know, the added part of yours of the “selecting a biological system to explore for useful molecules“?

  184. Read the job posting. There have also been numerous discussions about paid bloggers on this board which have included marketing people explaining the modern process of using bloggers.

    In fact it is common knowledge and there have been a number of news articles regarding paid bloggers. You know this and are pretending you don’t.

  185. MM, ugh, the more you tell me about the science here the more I begin to gag. Clearly if you construct a sequence artificially, it is man made. What the frack does it matter if the same sequence may exist in nature but in a form that is not useful?

    Clearly the Euros are right on this, and the Supreme Court misled.

  186. are the clipped ends bonded to terminal structures not found in the natural sequence?

    When the “natural sequence” is buried in a much longer sequence, the whole point is that the clipped ends are not bonded to “terminal structures”. In that situation (which is the usual situation), it’s the “terminal structures” in the “natural sequence” that render the “natural sequence” in its “natural” state useless to human beings (as research tools, anyway).

    Consider the “natural” chromosome with the structure XYZ. Y is a 142 nucleotide sequence somewhere in the middle with no function whatsover to the organism but which has utility as a drug for treating a form of leukemia in cats. X and Z are each relatively enormous “terminal structures” that must be removed from the “natural” polynucleotide, precisely, to obtain Y (not in practice, but in the abstract when comparing the claimed composition with the “natural composition”; in practice, you can simply synthesize Y de novo with a sequencing machine, just as you synthesize any other chemical from its component parts).

  187. Ned, you keep on reaching and missing the baseline message. You do realize that not all cDNA were authorized, right?

    You don’t know if the structure is different? Malcolm has told you how many times now?

  188. MM, it seems to me that had the court been presented with a simply claim to isolated DNA of a certain structure that was different structurally than that in nature, they would have come to a different result regardless that the active portions of the claimed structure were the same as those in the natural product. Thus they authorized cDNA. If the isolated DNA had been claimed structurally, the result should be the same, that is, unless Lourie was completely wrong in his science.

    I really don’t know the answer here as to whether the structure of isolated DNA is different or not from the structure of the DNA in nature. I know the DNA is clipped, but are the clipped ends bonded to terminal structures not found in the natural sequence?

  189. I don’t think those comparisons were fair Ned.

    Read Rader’s comments on the iron age in the Bilski Fed. Cir. en banc opinion. He lays out the difference between information age and iron age thinking well.

    So, apparently, my reference is not so obscure is it?

  190. Night, I am not exactly certain I know exactly what your mean by this. If you would be so kind as to define "iron age principles," tell us what the current age is, and then define its principles, I would be better situated.

    I used to work for a corporation that published mission statements to its employees using obscure gobbledygook. Ask anyone in the company what was the company's business, its mission or the like, and they would scratch their heads.

    I am also reminded of Vietnam and Johnson's mission statement to the country and to the troops: "We shall not lose!"

    What a leader he was.

  191. MM: about a month ago there was a job posting on this board for paid bloggers for anti-software/hardware patents. You know that and yet pretend you don’t. That is enough to know you are wasting my time.

    If you want “evidence” of the bio anti-software, then go and look yourself. It isn’t exactly a big secret. And you intentionally being obtuse is just wasting my time.

  192. lies in selecting a biological system to explore for useful molecules

    How did that work in Prometheus?

    Do you want the ‘honor’ of supplying the self-defeating quote?

    many of us… were disturbed

    LOL – “us”??? Francis, Robert, Keeping It Real and the other svckpuppets you ‘don’t use’ don’t count Malcolm. And you were so disturbed that you have now passed 7,000 words in tryign to detract the decision and not one word yet having the nuts to simply say I was right and you were wrong.

    Great popcorn.

  193. Like I predicted: the chickens came home to rest for the NIMBYs.

    And you still see the attempts at spin to find some port in the Myriad storm.

  194. Maybe you are just conceptually challenged and not a tr0ll

    Maybe he is conceptually challanged AND a tr011 !

  195. Daniel: A gene even isolated is a natural product and as such shouldn’t be patentable.

    Even the Supreme Court doesn’t agree with you on that point. From the decision: “isolating DNA from the human genome severs chemical bonds and thereby creates a nonnaturally occurring molecule.”

    Beyond that there is no real inventive step

    Proponents of granting patents on novel nucleic acid compositions would argue that the “inventive step” lies in selecting a biological system to explore for useful molecules. From a legal perspective, the same proponents would argue that what matters is what the composition claims protect when they are properly construed, not whether the compositions were synthesized or created by an unpatentable (e.g., obvious) method.

    The anti-patent people are strengthened when we patent things that should not be patented and when we extend it to far.

    Of course that’s correct. Most of Myriad’s composition claims should never have been granted, of course, because they are invalid under well- established 102/103/112 case law. That’s why many of us who value patents and want to improve the patent system were disturbed by Myriad’s assertion of those claims.

  196. All Diehr stood for was the proposition that you couldn’t find a claim ineligible per se simply becuase there was an element in the claim that would, if separately claimed, be ineligible.

    So if one element was, if separately claimed, ineligible (like a new thought) and another element was eligible [note the difference between eligible and patentable] like an old step), then you couldn’t find the claim per se ineligible.

    LOL – Is that what you are saying?

      MASSIVE MALCOLM SELF-DEFEAT

    Dance that jig, baby.

  197. Paranoid about “bio funding”? I don’t think so. In fact I am sure of it. Just as I was sure that some of the people here were being paid to blog. Turns out I was right. Turns out that “bio funding” the anti software/hardware is something that I have heard first hand from attorneys that represent the lobbying groups for bio. In fact, be real MM, you must know that.

  198. I am not sure how you can say this violates the express principles of 35 101. A gene even isolated is a natural product and as such shouldn’t be patentable. Beyond that there is no real inventive step as the methods they used to find the gene are all fairly routine now.

    The anti-patent people are strengthened when we patent things that should not be patented and when we extend it to far. Unless we are careful the system may be removed entirely.

  199. Actually, it is kind of amusing watching the anti’s try to get their head around this decision. It seems that the anti’s are at least partially funded by the bio people. I think all of your anti-software/hardware propaganda has affected the SCOTUS. They are now convinced that they need only apply their iron age thinking to inventions and all will be fine.

    Pretty funny really–unintended consequences.

  200. Nah. They are iron age thinkers. Everything they have decided recently is based on simple iron age principles.

  201. Paul, as I read those cases, I came away with the impression that the decisions were based upon the process limitations contained in the claims i.e. “isolated.” These process limitations serve to make the claimed product “man-made.”

    It would have been interesting what the Supreme Court would have decided had this case been presented to them instead of the case that was presented to them; the case presented to them was that the claimed invention was to a composition of matter, so they began to look to whether the composition was the same or not the same as the natural product and entirely ignored that the claim itself required the action a man to make it.

  202. And, MM, I think you inability to grasp the SCOTUS opinions or to predict their outcome illustrates that you are limited. You seem to understand your scientific area, but you are unable to grasp concepts easily. Maybe we have been too hard on you through the years. Maybe you are just conceptually challenged and not a tr0ll.

  203. MM, you never cease to disappoint me.

    1) You don’t really understand the framework the patent system provides, do you?

    2) 1 patent application makes a rule? And face recognition is an open problem. Again, you want to ignore the art. The art of information processing is that there may almost always be improvements.

    Sheesh, MM, can’t you do better. It is depressing just see “MM” in the by-line knowing the rot that is to follow.

  204. NWPA some of those people exist. But, we also have to remember that they exist within the framework of the patent system. It isn’t clear if they would still exist without patents.

    People who share information wouldn’t exist without patents? You never cease to amaze, NWPA. But go ahead and tell us what you “really meant.” Take your time.

    so much of the open software is just copying.

    Unlike software patenting? LOL. Like the “inventors” at Apple trying to patent a method of “improving” an old method of computer face recognition by “looking at skin tone”? Too funny.

  205. Sure Robert some of those people exist. But, we also have to remember that they exist within the framework of the patent system. It isn’t clear if they would still exist without patents.

    I’d also point out that so much of the open software is just copying.

  206. Paul: But divergence in national or regional law creates chaos. In Europe we have been at the receiving end of US-originating business method patents which have been held non-patentable over here.

    That doesn’t sound “chaotic”. That sounds like “free money.” Take the application fees and reject the claims.

    THe divergence of standards for sequences will result in similar chaos – US applicants being denied claims in Europe and possibly also China to sequences because the right language was not in the specification as filed, and European applicants sending to the US specifications that need revision because they contain sequence claims allowable everywhere else but now not in the US.

    I’m all for reasonable consistency but practitioners with clients seeking international protection aleady deal with inconsistencies that are much more wearying than this sequence issue. In spite of its flaws, the Myriad decision does seem to directly impact only a small fraction of US filings.

  207. Malcolm is “going off the rails” with his usual accuse-others-of-that-which-he-does.

    D@mm, those admissions you made sure do toast your agenda, huh Malcolm?

  208. And neither is your position, attempting to negate the patent system.

    Sorry – but our founding fathers chose otherwise.

    But thanks.

  209. QQ QQ – and nothing else.

    don’t exist in the prior art

    LOL, MxRxN – you want the Court to ‘behave’ to issues not presented to it?

    D’Oh!

    (said in the best Homer Simpson tones)

  210. LOL – try speaking what you mean – at least once in a while. Especially as your post here does not differentiate (and thus lacks sarcasm) from other views that you have steadfastly maintained, even in the face of the Myriad smackdown.

    You might (just might) develop some credibility.

  211. Hence all the open source software, free to the user, and often written for no monetary payment, just the recognition of their peers.

    Similarly, the problem with arguing that without patents there’d be no incentive to sequence the genes in question is that there was another research group chasing the same genes, which had said it would not patent them, but make the sequence publicly available.

    Obviously, we can’t rely on public spirited academics and engineers to produce all discoveries and inventions, but denying the existence of such people is not exactly credible.

  212. Paul Cole Even if you buy the proposition that a sequence isolated from the human body is not patentable because it is a naturally occurring product, a sequence produced by amplification using PCR is plainly not. So would a claim to a version produced by amplification be valid?

    Under the Myriad decision, the answer is certainly “no patent.” But this is due to the Court’s miserable failure to consider how their reasoning applies to the multitudes of DNA polynucleotide (and possibly other biopolymer?) claims that do not suffer from the peculiar problems of Myria’s claims, i.e., no upper bound on the length of the sequence and a term “isolated” that was never properly construed or defined.

    The Court recognizes that intentionally breaking a covalent bond in a longer molecule creates a new molecule (two new molecules, in fact). The Court additionally recognizes that those molecules (and any additional molecules created by breaking additional covalent bonds) are non-natural. Presumably the Court would also acknowledge that purifying a particular DNA fragment from cellular debris as well as from the reagents used to achieve the purification of that fragment would be further movement away from “nature” (indeed, new methods of doing so would be recognized as useful and patents in and of themselves). Nevertheless, the Court simply leaps to a broad, sweeping conclusion: “separating that gene from its surrounding genetic material is not an act of invention”, regardless of how such “separation” occurs and regardless of any additional acts upon the fragment (e.g., chromatographic or high-affinity purification or de novo synthesis to achieve a nearly 100% pure nucleotide — steps that turn a useless fragment floating in a sea of gunk into something useful to humankind).

    This is precisely the point where the vague, absurdly broad awfulness of Myriad’s claims causes problems for everyone else. The Court treats Myriad’s claims as if the issues raised by those particular claims are somehow representative of all DNA polynucleotide claims whose sequences may be found somewhere “in nature” (and presumbably in any longer polynucleotide in the prior art, even if that polynucleotide is completely synthetic — who can tell? The Court behaves as if non-natural polynucleotides don’t exist in the prior art).

  213. Or how about you having the nuts to admit that I was right and that you were wrong in the Myriad case?

    You mean like that?

    Thousands and thousands of mewling words from you – and yet you don’t have the nuts. Even Ned was quick to acknowledge my correctness. But not a word from you (or Francis, or Robert, or Keeping it Real, or…)

  214. What you say is true, anon,

    You should have stopped there.

    “honestly debate” – LOL – is that like honestly inadvertantly making the admission that “configured to” is structural language and that you understand the controlling law to the exceptions to the printed matter doctrine, and then engaging in blatant 1ies in order to advance your anti-software patent agenda?

    Like that?

  215. left that messy business to the Supreme Court

    LOL – translation: anon was right and I was wrong.

    Thanks for the popcorn, Malcolm.

  216. that’s all you really know how to do.

    LOL – the use of the p1sspoor rhetorical accuse-others-of-that-which-you-do tool continues.

    I have leveled ‘insults’ at those who have deserved them. Unlike you, who have insulted first time posters who happen to be cancer survivors, people who don’t even blog here, sons of grieving fathers, and dead presidents.

    Typical Malcolm.

  217. They have been provided to you. Use that great archive tool.

    But for starters: the reliance on Diehr as most on point, and ‘changing no precedent,’ yet ingoring what Diehr actually stated, AND ignoring what the Court itself said in Bilski as to the effect that Diehr had on both Benson and Flook.

    For starters (and let’s not have any of your dissembling ‘you don’t understand Diehr‘ blatant 1ies).

  218. you still have not squared the contradictions in Prometheues upon which you mouth lavish praise as a ‘well-reasoned’ decision.

    What “contradictions” are you referring to? I’ll address them right now, if you like.

    And then you’ll insult me because you’re an a–h0le blogtroll and that’s all you really know how to do.

  219. and attacking strawmen.

    LOL – what ‘strawman’ of MaxDrei’s am I ‘attacking?’ What do you think he meant by ‘free-thinking’?

    Boohoo – the return of the crybaby’s veto.

    Please someone help me, anon’s being too mean.

    Bow‘ as I return your head to you.

  220. those who cannot see the anti-software patent arguments are effectively the same as the anti-ANYTHING patents (or simply anti-patent), are either simply 1ying or are not intelligent enough to be commenting in the first place.

    What you say is true, anon, only if you believe that functional claims to instructions for computers are the same as structural claims to new machines which transform matter, as opposed to information. That’s a point which intelligent people can honestly debate. The fact that you’re a s0ci0path and a l ying tool, of course, presents a bit of a problem for you.

  221. Contradicted? Not at all. Not even in your nearing 7,000 words typed in response to the decision.

    LOL – but you ‘don’t care.’

    And if you want to talk about contradicting – you still have not squared the contradictions in Prometheues upon which you mouth lavish praise as a ‘well-reasoned’ decision.

    The word for you still: hypocrite.

  222. Wait, what did you say, Malcolm?

    LOL – did you say that anon was correct and I was wrong inthe Myriad case?

    What? Speak up.

  223. that attempts like this to not recognize what the 101 issue is and how the court resolved the 101 issue only muddies the water

    It was the Court that muddied the water with their failed attempt to explain what they were doing without contradicting themselves left and right.

  224. Moving right along …

    (and move along quickly, mind you, before you realize that Malcolm has not yet gotten the nuts to admit that he was wrong and that anon was correct)

  225. Judge Posner says: Yes this is correct anon. The geek boys need no incentives. Sometimes it helps if you make fun of their clothes or hair cuts.

  226. And this will be done without thought of an award of a patent, because, you know, geek boys just love to do this and don’t need any reward.

    /off sarcasm.

  227. J. Stevens wrote: Perhaps honorable J. Lourie you forgot the step where you tell a geek boy to program the calculator. What you do is you hand them the calculator and tell them what you’d like it to do. The boy will return it ready for to perform whatever function you desire.

  228. J. Lourie says: Oh well. The Hearst driver wanted so much money to drive for the funeral procession that I just couldn’t bare to give her all that money. I’ve put my calculator in charge of driving the Hearst. I just can’t understand why it has moved yet. I told it that it should drive to the cemetery, but it hasn’t moved yet. Maybe my calculator is sad.

  229. My apologies for the condescension Daniel – it was not aimed at you personally.

    The point of the matter though is that attempts like this to not recognize what the 101 issue is and how the court resolved the 101 issue only muddies the water – and it is clear that the water is being muddied on purpose. Even your suggestion ignores that fact. You are exploring 102/103 as if those types of changes can get around the law of 101 – clearly, you are not understanding that such cannot be. Note: not even a possibility – so even entertaining a possibility is simply taking a frolic into the weeds.

    It behooves all not to entertain such frolics.

    (and note too, that I asked Paul for clarification – but if history provides any lessons, my pointing out such deficiencies will remain unanswered)

  230. Never said they were the same, and no need for the condescension. I was asking whether or not Paul was suggesting using a product-by-process claim to claim DNA. It’s not clear that that by doing so you would get past the new patent-eligibility hurdle: courts might decide that the case law saying that the process limitations are ignored in assessing patentability means that the limitations are ignored for everything except claim construction, in which case p-b-p claims on DNA would apparently still fail 101; or they might decide that the limitations are ignored in assessing substantive patentability (102 and 103) but included in other assessments, in which case the p-b-p claims on DNA would apparently get past 101. But in the latter case, they claims would still need to get past 102/103 – hard to do without the p-b-p limitations – and the p-b-p limitations would make avoiding infringement easier. So it’s hard to see where, as a general rule, p-b-p claims on DNA would be useful in the US.

  231. J. Lourie says: It was tragic. My wife died of cancer. I can’t understand it. I took her to the hospital for a breast cancer screening. When I saw what they wanted to charge for the geek written software to examiner her x-ray, I told the technician to use my calculator instead. I hold him that he should instruct my calculator to examine the x-ray. Fortunately, I happened to have my calculator (the programmable kind) with me.

    I just don’t understand why my calculator didn’t pick up the cancer.

  232. have more powder and troops than we have.

    They do.

    Remember, the attack on the patent system is coming from both the Right and the Left.

    Look at the sheer number of words being kicked up like dust over a simple concept that you cannot patent something that is effectively found in the warehouse of nature.

    I will grant that the debate went differently in different sovereign nations – and I respect the fact that their law is different. But their law is not our law. They do not have our constitution, nor do they have our 101. They do not have the implicit-authority-from-constitutionally-approved-legislature (winkwink) that we have.

    The same facts applied under different law yields different results.

    Happens all the time.

  233. Judge Posner says: Do not worry Mucpat in my experience engineers and scientist like to diddle with these types of things and will continue to work on them whether or not there are patents. The scientist and engineers work on these type of problems regardless of compensation and regardless of whether or not the scientific lab equipment is available.

    Please don’t concern yourself. In my vast experience with engineers and scientist they will continue to make advances without patents. I am sure of this. I notice in college that this type of behavior in my roommate. He was one of those dweebs that was majoring in physics and he would work all night and never went out to play with the rest. I use to tease him about what a twerp he was. And I am sure he will keep working whether or not we pay him or not. It is just in their nature.

  234. In other words, the arguments made in the EP “only matter” when they are better arguments than those made in the US.

    LOL – In other words, Malcolm is wrong yet again. Arguments simply cannot be taken in the vacuum of ignoring that actual sovereign law.

    It is a pretty soapbox, this other nations’ law, and maybe if you actually posted that the U.S. should be changed to match that law in other sovereign nations I might be less likely to highlight the fact that is not what you are doing here. Rather, what is happening is the attempted denigration of our law by comparison to the reasoning available under foreign law and implying that our court decision messed up and got ‘the law’ wrong.

    This is nothing but a fallacious attack on our actual law.**

    **But I would be willing to listen to arguments that the Supreme Court is making up law even though they say they are not – in fact, I have been saying this for quite some time (and no time machine is needed as neither Rader nor Quinn have taken this position – yet).

  235. I know. Alappat has a long history of being assailed by the anti’s. But, it also is dead on for what we need from the SCOTUS. A physical device. And, then we just need to get them off this everything that has math is a natural law, and functional claiming is abstract.

    The problem is that the anti’s seem to have more powder and troops than we have.

  236. ignored in assessing patentability/validity

    (sigh)

    Yet another reminder is needed to draw attention to the fact that patentability and patent eligibility are separate things.

    I wonder why this distinction needs to be almost perpetually reinforced? Why is there an almost strident desire to obfuscate the difference?

  237. NWPA,

    For a preview of that, look at the discussions I have had with Ned on the holding of Alappat.

    He has constantly attempted to twist that decision to have it not say what it clearly does say. He has constantly ignored the fact that a decision can have more than one holding. He has constantly tried to subvert the law to fit his agenda.

  238. Paul states “and is the same for all patents” and this is true.

    As I have stated, those who cannot see the anti-software patent arguments are effectively the same as the anti-ANYTHING patents (or simply anti-patent), are either simply 1ying or are not intelligent enough to be commenting in the first place.

  239. You know, folks, oddly the SCOTUS current bent might be good for software/hardware. Allapat is the key. It realistically claims the software as nothing more than hardware that has been cleverly re-done. And, the SCOTUS is in the mode that things must be a physical thing to be eligible.

    So———Allapat is the key——————

    I wonder how the Lemless will attack Allapat.

  240. Paul, are you suggesting the use of a product-by-process claim to claim the DNA – e.g. “A DNA molecule having the sequence … whenever prepared by PCR amplification”? As you know, in the USA the process limitations are included when assessing infringement but ignored in assessing patentability/validity. So unless you can recite some structural difference between this DNA the DNA that now can’t be patented, in which case the product-by-process claim structure wouldn’t be necessary, a product-by-process claim for DNA doesn’t appear to be of any help in the US context. If I’ve misunderstood you, my apologies, and please explain.

  241. In defence of free-thinking SCOTUS

    MaxDrie, long quiet on the subject, pipes up only to be absolutely wrong again,

    MaxDrie, you do realize that the Supreme Court is not supposed to be ‘free-thinking,’ right? That they too are not above the law, right? That the same matrix of fact – alone – is quite meaningless and that the matrix of fact MUST be viewed in light of what the individual sovereign law already is, right?

    And of course, you are aware that in the U.S., our constitution constrains which branch of the government has that authority to be ‘free-thinking’ – and it is not the judicial (nor executive) branch, right?

    It would be far more embarrassing that our highest Court themselves decided to chuck the constitution and make law based on foreign law, would you not agree?

  242. Is plainly not what?

    You are not being clear here Paul.

    Are you saying that the one sequence and the other sequence are not the same sequence?

    Or are you saying that the process of making the same sequence is different?

    And what sickly sweet thing exactly are you trying to say about fructose? You appear to be mixing up general notions of ownership and patent law. No one is saying that a specific item that is a product of nature cannot be privately owned. I own all the natural pines on my land, after all. If you were to come on my land and take my pines, I do not think that the product of nature exception to patent eligibility would be germane to my pressing charges against you.

    But you do kick up a pretty dust cloud.

  243. Paul,

    So sorry that you feel that “divergence in national or regional law creates chaos,” but I am pretty sure that that respect for national sovereignty thing is pretty strong.

    And while to you it might be

      What a shame that nobody told the Supreme Court of this body of opinion and legislation in Europe and Australia, which is believed consistent with the opinions and legislation existing in most other countries of the industrialised world, or that if it was aware of this position elsewhere the Court decided to ignore it in favour of a judge-made exception to the express provisions of 35 USC 101!“,

    to those of the rest of us respecting law and respecting national sovereignty, were the Justices to ‘make law’ based on foreign law, well that would be much more upsetting – patent peace in our time from that dreaded chaos notwithstanding.

    And like I mentioned to 6 this morning, I definitely think an argument can be made that this is judge-made law – and thus unconstitutional – the Justices themselves paint a different picture, as they claim that the authority is not from them (this is not judge-made law), but rather, the authority is from Congress, and legislative made law. The Justices are merely making clear what is implicitly already there.

    Further, the chaos of divergence that you becry in computer and business method eligibility is ALSO driven by national sovereignty, and per Bilski, business methods are still an eligible category – as a category under process – just like medical methods. In fact, exactly like medical methods. Or bicycle manufacturing methods, or any other category of methods – your attempted coup of overthrowing national sovereignty must be pushed aside.

  244. Prometheus wiped out diagnosic-based businesses and now Myriad wipes out any drugs based on oligos having an identical sequence to that found in an exon. Plus, it would seem that your protein better be different than that expressed in the cell, otherwise that is also not patentable. Better not use human cells to express it. All in all, a really bad holding unless you are anti-patent.

  245. Good questions raised by Paul Cole. In defence of free-thinking SCOTUS, I would suggest that amongst supreme courts SCOTUS is an exception, not subject to the pressures bearing down on other supreme courts around the world.

    Every other supreme court will be wary of handing down a decision that exposes it as having a weaker grasp of the issues than its brothers in other jurisdictions that happen to be grappling with the same topical legal issues, on virtually the same matrix of fact, and that is because the brothers are operating under much the same substantive law.

    Thus, judges in Europe debate the law with judges in Australia and judges in Asian jurisdictions, feed off each other, and stand on each others’ shoulders whenever that helps them to reach what is key.

    As to the development of domestic US law, however, I can imagine there is debate between judges in the USA and judges in London. But that’s about it, isn’t it? These days, why should SCOTUS and its opinion writers pay any attention to jurists even in England?

    The specific language of the Statute must control. This is why the courts of Europe steadfastly decline to follow the EPO lead on how to decide what is obvious. Why then should SCOTUS care about what any other jurisdiction in the world thinks about eligibility under a different Statute, with different wording?

    I can think of only one reason: to avoid embarrassment. But as far as I know, SCOTUS judges don’t suffer embarrassment.

  246. 1) the analogy with computer hardware/software is not valid in that the hardware/software prohibition originated from the legislation bodies in Europe—not so here in the U.S.

    2) It is striking as I have said below that the U.S. judges feel no obligation to proactively educate themselves on the science. They are acting like overlords whose peons are responsible for educating them. And, now Obama is appointing judges that do not even have experience in patent law or science.

  247. “mankind is enriched forever. ”

    Until the zombie apocalypse made possible by the mad scientists in bio.

  248. Malcolm – You are absolutely right that part of my argument is that the EPO and Australian positions were arrived at after much thoughtful analysis.

    But divergence in national or regional law creates chaos. In Europe we have been at the receiving end of US-originating business method patents which have been held non-patentable over here. THe divergence of standards for sequences will result in similar chaos – US applicants being denied claims in Europe and possibly also China to sequences because the right language was not in the specification as filed, and European applicants sending to the US specifications that need revision because they contain sequence claims allowable everywhere else but now not in the US. The fact that we have a source of chaos in the divergence of computer and business method eligibility is NOT an indication that we should have created another source of divergence in sequence eligibility.

  249. This raises yet another interesting question. Even if you buy the proposition that a sequence isolated from the human body is not patentable because it is a naturally occurring product, a sequence produced by amplification using PCR is plainly not. So would a claim to a version produced by amplification be valid? The difference is the same as between fructose naturales and fructus industriales in land law. The grass in a field is fructus naturales and belongs to the owner of the land. Corn growing in the same field would be fructose industriales and belongs to the farmer who sowed it.

  250. The portion of BRCA1 encoded by exons 5 and 6 is found naturally without the intervening intron.

    Nobody could have predicted such a bizarre fact pattern!

  251. I don’t think Paul is arguing that “Europe did X, so the US should do X.”

    He seems to be arguing that “Europe addressed this issue more thoughtfully and came to a different conclusion. It’s too bad the US didn’t do the same.”

    In other words, the arguments made in the EP “only matter” when they are better arguments than those made in the US.

    Moving right along …

  252. The portion of BRCA1 encoded by exons 5 and 6 is found naturally without the intervening intron. Guess what that means …

    Breast Cancer Res Treat. 2011 Aug;128(3):845-53

    link to ncbi.nlm.nih.gov

    Genomic rearrangements of the BRCA1 gene in Chilean breast cancer families: an MLPA analysis.

    Abstract
    Point mutations and small deletions and insertions in BRCA1 and BRCA2 genes are responsible of about 20% of hereditary breast cancer cases in Chilean population. … The authors identified two different alterations in BRCA1 … The second rearrangement consist of a 4 times amplification of a fragment containing exons 3, 5, and 6 joined together with no introns, suggesting the presence of a processed pseudogene.

    5 minutes on Google and I already have grounds for invalidation of several of Myriad’s claims on subsequences of BRCA1 cDNA.

  253. If the Supreme Court used the European acceptance of patents on isolated products as justification to approve of gene patents, does that mean it should also use Europe’s stricter controls on computer patents to restrict US computer patents? Or does the argument only matter when it increases the scope of patentable material?

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