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.

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

  1. 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?

  2. 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.

  3. 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.

  4. 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.

  5. 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.

  6. 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.

  7.  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?

     
     
     

  8. “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!

  9. 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.

  10. 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?

  11. 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.

  12. Are you suggesting that US courts

    I am quite clear as to what I am suggesting. You are doing that feigned and projected ignorance thing again, aren’t you pumpkin?

    Try to read what I wrote, m’
    OK?

  13. 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

  14. 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

  15. 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::

  16. 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::

  17. 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 have to understand, Paul, that Tr0llboy believes that the Myriad decision was mandated by statute, a statute which no reasonable court could possibly construe differently than how it was construed in Myriad.

    That statute says, “Whoever invents or discovers any new and useful … composition of matter, or any new and useful improvement thereof, may obtain a patent.”

    So clearly the Supreme Court’s hands were tied here. They simply had to find those man-made non-natural polynucleotide compositions ineligible. It was only cut two times relative to the natural gene! Likewise, the ACLU was insane to believe that a cDNA that was cut four times relative to a natural gene would be deemed inelgible. It takes 4 cuts to make a cDNA! C’mon, that’s twice as many cuts as in an isolated gene with the intron in it. Clearly eligible.

    Are you starting to understand Tr0llboy a bit better now, Paul? It helps if you understand that, like our Supreme Court, Tr0llboy’s understanding of molecular is that of a typical 8th grader … circa 1970. That also explains the weird Jane Fonda obsession.

  18. your blatant 1ies are tolerated here

    Oh yes, all those “blatant lies” that you detect with the help of the transmitter that your alien masters put into your feelings. It’s the same transmitter that allows you to accuse Dennis of being a leftist anti-patentista because he engages in “conflation by imputation”.

    It’s the same transmitter that your doctor told you doesn’t exist. But then you stopped taking your meds and suddenly your doctor, too, became a “blatant liar.” It’s okay, Tr0llboy. You’re safe here.

  19. 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.

  20. 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?

  21. 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.

    Hmm. That must be the “dust cloud” where I clearly answered Paul’s question in the negative, and explained how I arrived at that answer. My 10:38 comment on June 17.

    Here is how you responded to my answer to Paul:

    QQ QQ – and nothing else. LOL, MxRxN – you want the Court to ‘behave’ to issues not presented to it? D’Oh! (said in the best Homer Simpson tones) You do realize this was a 101 case, right?

    Pretty sure it’s not me that’s “kicking up dust”, Tr0llboy. But no doubt you’ll continue with your soci0path behavior. Your doctor can’t help you so it’s unlikely that anyone here will be able to do anything.

  22. 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)?

  23. 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.

  24. 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.

  25. 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?

  26. 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.

  27. 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?

  28. @ 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.

  29. 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.

  30. 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.

  31. 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.

  32. 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)

  33. 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.

  34. 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.

  35. 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.

  36. 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.

  37. @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.

  38. 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?

  39. 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?

  40. 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

  41. 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?

  42. 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

  43. This was a 101 case.

    Everyone knows that, f–kt-ard. We adults are permitted to discuss other aspects of the facts of this case, in addition to the failures of the decision.

    So go f— yourself, Tr0llboy.

  44. 112, 102, LOL – guess what? This was a 101 case.

    Can you actually address that?

    Thousands upon thousands of words, and still saying nothing.

  45. 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?

  46. 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.

  47. 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

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

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

  49. 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.

  50. 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?

    No, not at all. Are you r-tarded, Tr0llboy, or do you just play a r-tarded a–h0le on blogs that you don’t like? That’s a rhetorical question, too.

  51. 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.

  52. 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.

  53. 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.

  54. 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.

  55. Seriously can you move the goalposts back

    Seriously, Tr0llboy, you’re the incomprehensible gibbersish-spewing a–h0le who brought up the Prometheus case as if it was somehow relevant.

    You’ll have to forgive me for trying to understand your non-native English. Maybe it’s slither back to Liarland where you were bred and re-enroll in that cheap night school that previously kicked you out for being a giant douche.

  56. 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.

  57. 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!

  58. 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.

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

    Did you find the nuts yet?

  60. 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.

  61. 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.

  62. 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.

  63. 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“?

  64. “lies in selecting a biological system to explore for useful molecules”

    How did that work in Prometheus?

    The claims in Prometheus were method claims reciting an old conventional step and a step of thinking about the result. Prometheus was about a claim that literally turned people practicing the prior art into infringers if they thought about a new fact.

    Nothing remotely like that occurs when someone claims “A chemical consisting of 194 nucleotides in the [insert sequence here]“, even if the identical string of nucleotides is found in a bacteria in the stomach of an extinct warthog, like your mommy.

    Seriosly, Tr0llboy, time to see a doctor. Get your prescription checked.

  65. 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.

  66. 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.

  67. tryign to detract the decision

    LOL! You funny, Tr0llboy. The Myriad decision is pretty much “self-detracting” if you know anything about molecular biology. I’m just trying to educate those willing to understand. Of course that doesn’t include you, Tr0llboy. Never has. Never will.

  68. 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).

  69. 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?

  70. 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?

  71. 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?

  72. 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.

  73. 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.

  74. 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.

  75. “bio funding” the anti software/hardware is something that I have heard first hand from attorneys that represent the lobbying groups

    Fascinating. So who is “bio” and who are the “anti-software/hardware” folks who are being “funded” by this “bio”? Can we see your evidence? Anything we can verify or are we just supposed to trust super lowkey and always-reliable NWPA who is never ever prone to fantastical hyperbole?

    I was sure that some of the people here were being paid to blog.

    That’s an interesting assertion. Who is being “paid to blog” here, and who is paying them? Can we see your evidence? Do they get paid on a word basis, by the hour, or do they get paid for “results”? If, for example, Tr0llboy gets paid for rendering the comments here unreadable with his sockpuppet, that would explain a lot.

    Let’s have some answers, NWPA.

  76. 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.

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

    Maybe he is conceptually challanged AND a tr011 !

  78. 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.

  79. 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.

  80. 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.

  81. 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.

  82. NWPA wrote:

    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.

    NWPA was asked to explain what he meant by this strange statement. His response was to fling insults.

    2) 1 patent application makes a rule?

    I wasn’t suggesting a “rule”. I was simply demonstrating the fact that patent applicants copy from the prior art all the time. And they even attempt to claim that prior art as their own. Do you need more examples of patent claims that are rejected or found invalid as anticipated or obvious? How many more do you need?

    you are unable to grasp concepts easily

    LOL. Are you trying to outtroll Tr0llboy, NWPA? You’re going to need to try a lot harder. It might be easier to start breathing through your nose every once in a while and spare us your hilarious paranoid theories about “bio funding the “antis,” whatever that’s supposed to mean.

  83. 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.

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

  85. 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.

  86. 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.

  87. 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.

  88. 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.

  89. you want the Court to ‘behave’ to issues not presented to it?

    No, Tr0llboy. I want the Court to understand basic facts well-known to schoolchildren and acknowledge how their broad sweeping holdings apply to those facts.

    I don’t think it’s asking too much, really. Maybe Justice Thomas should have asked some questions during oral argument if he didn’t understand what he was talking about.

    And of course you’re certainly aware that the Court routinely “addresses issues not presented to it.” As I recall, the issue in this case was “Are human genes patentable.” They seem to have addressed a number of issues distinct from that issue. Or do you believe that their holding is limited to human genes? Rhetorical question, Tr0llboy. Nobody really cares about your a–h0le insults, other than to express shock that your a–h0le inuslts are tolerated here.

  90. 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.

  91. 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.

  92. 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.

    Absolutely correct, Robert. But since when has Tr0llboy ever tried to be “credible”? Tr0llboy is the same blogtroll who told everyone here that you could succesfully (and equitably) avoid learning about relevant prior art sent to you by a third party by instructing your mailroom staff to open registered letters addressed to you, review them for prior art, and then throw them away without informing you of the content if mailroom staffperson decides that there is “prior art” in the letter.

  93. Tr0llboy: 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.

    I’ve addressed that (non) “contradiction” before and after the decision. It was a p-t-ent t–bagger mythoogy that Diehr stood for the proposition that one was not allowed to consider the relationship of separate claim elements to the prior art or the relationship of separate claim elements to the judicial exceptions. That’s simply false. 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.

    How do we know that the patent t–bagger version of Diehr was mere fantasy? Because it it wasn’t pure fantasy then it would permit the wholesale protection of information itself, by allowing applicants to append trivial old, conventional steps to new, non-obvious mental steps. That’s why Prometheus had to come out the way it did or, alternatively, the Supremes would have had to go in the direction of your beloved Europe and ignore ineligible subject matter when considering obviousness (similar to how the CAFC treats limitations comprising, e.g., kit instructions).

    So, there you are. The contradiction is squared. That was easy. It’s also something I’ve done for you before probably forty or fifty times over the years. But you’re a sick s0ci0pathic l-ar, Tr0llboy, so all is forgiven.

  94. 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?

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

    Sorry – but our founding fathers chose otherwise.

    But thanks.

  96. 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)

  97. Tr0llboy: like honestly inadvertantly making the admission that “configured to” is structural language

    Oops, Tr0llboy is going off the rails again. Another Monday on Earth.

  98. 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.

  99. 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.

  100. 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).

  101. 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…)

  102. 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?

  103. left that messy business to the Supreme Court

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

    Thanks for the popcorn, Malcolm.

  104. 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.

  105. 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).

  106. 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.

  107. 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.

  108. 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.

  109. 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.

    Thank goodness Tr0llboy has never, ever kicked up any dust about how one determines if a man-made, non-natural composition, like Myriad’s compositions, are “effectively” natural. Tr0llboy left that messy business to the Supreme Court. And kick up dust they did.

  110. 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.

  111. Wait, what did you say, Malcolm?

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

    What? Speak up.

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

    Tr0llboy is back to his usual games of insulting everyone who disagrees with him and attacking strawmen.

    It would be far more embarrassing that our highest Court themselves decided to chuck the constitution and make law based on foreign law

    Indeed. It would be far more embarrasing for them to chuck the Constitution and make law based on fortune cookies. But nobody is suggesting that they do that either.

  113. 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.

  114. Arguments simply cannot be taken in the vacuum of ignoring that actual sovereign law.

    Uh … I never said that sovereign law could be ignored. But please enjoy that strawman. Beat him well, Tr0llboy, as you only you know how to do.

  115. 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)

  116. 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.

  117. 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.

  118. 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.

  119. 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.

  120. 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)

  121. 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.

  122. 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.

  123. 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.

  124. 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.

  125. 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).

  126. 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.

  127. 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?

  128. 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.

  129. 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.

  130. 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.

  131. 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.

  132. 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?

  133. 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.

  134. 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.

  135. 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.

  136. 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.

  137. 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.

  138. “mankind is enriched forever. ”

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

  139. 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.

  140. 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.

  141. 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!

  142. 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 …

  143. 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.

  144. 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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