Twenty Thoughts on the Importance of Myriad

By Dennis Crouch

I asked a number of colleagues for their thoughts on the Supreme Court’s recent Myriad Decision. However, I only allowed a 40 word statement from each.

Most patent law specialists look at Supreme Court review with some trepidation. For many, the split decision comes with a sigh of relief. Gregory Dolin (U Baltimore) writes that “the decision could have been much worse. The decision could have been much worse. After all, the petitioners argued that neither isolated DNA nor cDNA should be patent eligible. So the fact that the Supreme Court concluded that cDNA is patent eligible is a victory for Myriad.” Jorge Contreras (American) calls the decision a “common sense” application focused on “the fundamental purposes of the patent system.” Professor John Duffy (UVA) sees the decisions as “a half-loss to inventors, a half-loss to advocates for a broader public domain but, unfortunately, a full victory for patent lawyers, who will have lots of business opining on, and litigating, the complexities of this decision.” Barbara Rudolph (Finnegan) notes that the decision “could have an immediate [negative] effect on existing patent portfolios of some biotech companies, particularly those in the fields of diagnostics and personalized medicine. . . . It is, however, a positive development for companies that rely on [non-patented] cDNA for the development and manufacture of novel therapeutic proteins.”

The decision is in some tension with the Court’s most recent prior section 101 case of Mayo. Jeffrey Lefstin (UC Hastings) queries “is Mayo‘s ‘inventive concept’ still required for patent-eligibility? The Court’s endorsement of cDNA relies on cDNA being ‘new’ within the meaning of § 101, not whether creation of cDNA involved anything beyond the ‘routine and conventional’ activity disparaged in Mayo.” David Berry (Cooley Law) praised this aspect of the decision because the Court “didn’t concoct a new, off-the-cuff standard; punt on fashioning a useful test, confuse ‘eligibility’ with ‘patentability;’ use the word ‘obvious’ to mean something else again; disparage the art of claim drafting; or leave a whole industry up in the air about the limits of patent protection.” Along these lines but in a lamenting tone, Timothy Holbrook (Emory) that “sadly the Court provided very little guidance as to future issues relevant to biotech, such as isolated/purified proteins or other organic chemicals. The Court took pains to make the decision narrow, but for the first time since JEM, it did find something to be patent eligible.” Mark Lemley (Stanford) argues that Mayo still holds weight: “if I were a biotech patent owner I wouldn’t be celebrating just yet. cDNA patents are easier to design around, and under Prometheus v. Mayo they are probably obvious once we assume knowledge of the naturally-occurring gene sequence.”

Moving forward, we have a question of whether the reduced coverage of patent law will still provide sufficient incentive to invest in biotech focused research. Jonathan Masur, professor at The University of Chicago School of Law says yes: “This is the rare case in which the Court’s reflexive tendency to split the baby worked well. Biotech companies should have sufficient research incentives going forward, without firms like Myriad exerting too much control over consumers and future R&D.”

One problem with Supreme Court review of Section 101 cases is the risk of alienating entire market areas from patent protection. That is why many of us support a broader fair-use regime that could be used as a lever for protecting public interest uses of inventions without eliminating the market value of innovation. Along this line Thomas Cotter (Minnesota) writes: “Ultimately the merits depend on whether the benefits of access outweigh the costs to incentives. The ideal policy solution would be for DNA to be patent-eligible, coupled with an experimental use defense and a guarantee of universal health care.” Andrew Chin (UNC) agrees here that the scientific and medical progress are not served by this decision. Chin writes: “Patents on DNA probes are problematic for § 101 doctrine and for DNA research regardless of whether the probes are produced by isolation or synthesis. The distinction will distort scientific and medical progress and ultimately prove to be doctrinally unstable.” Former Lead House Staffer in the IP area, Christal Sheppard (U Nebraska) agrees that “Naturally occurring versus synthetic is a ridiculous outdated distinction.” Her approach, however, would not be to create a fair-use but instead to fall back on the old rules of novelty. Sheppard writes “The proper distinction should be new-ness (novelty) irrespective of origin.”

For innovative companies the first question is how they can take advantage of the Opinion. Eileen Kane (Penn State) offers a clue in the distinction as between genetics and chemistry. Kane writes that “the decision recognizes the complexity of DNA for a patent eligibility analysis and finds that genetics trumps chemistry in establishing the isolated gene as an unpatentable natural product.” Dan Burk (UC Irvine) nails this further by noting that the “opinion seems to say that had the gDNA claims been drafted in terms of the chemical structure rather than genetic information, Judge Lourie’s view from the opinion below might prevail. Perhaps future claim drafters should think like biochemists and not like geneticists.” Professor Kane also notes that the decision reaffirms the non-statutory principle that “discovery does not equal invention.”

For the past several years, Myriad (and many others) have been relying on trade secrets as part of their intellectual property scheme. Thus, although Myriad disclosed the BRCA1/BRCA2 gene sequences in their patent applications, the company holds a vast amount of information (such as the genetic code of all of its customers) as trade secrets. Brenda Simon (Thomas Jefferson School of Law) notes that Myriad “does not impact one of the most valuable aspects made possible through Myriad’s patent protection: a private biobank of patient data containing information about additional mutations that Myriad can maintain as a trade secret.” Barbara Rudolph (Finnegan) agrees that the decision “may presage a shift towards more reliance on trade secret protection for DNA-based inventions.”

Looking at the trend over the past decade, Andrew Torrance (Kansas) writes: “For better or worse, the Supreme Court’s AMP v. Myriad decision caps a decade-long trend away from the patentability of the human body, human embryonic stem cells, human physiology, diagnosis of human disease, human thoughts, and, now, human genes.”

Coming Soon: What does Myriad Say about Software Patents? And, in the words of Professor Holbrook “Will they take CLS?” Professor Srividhya Ragavan (Oklahoma) writes that “Too much of anything – even patents – is good for nothing. Charkabarty exemplified patent law’s ability to spur invention while Myriad represents the end of an out-of-control patenting phenomenon which became increasingly disconnected with the system’s objectives. Time for software patent-holders to take notice.”

Finally, Megan Labelle (Catholic University) highlights the value that Dan Ravicher and PubPat have brought to the table. Professor Labelle writes: “The patent community will rightfully spend much time debating the merits of Myriad. While that debate is important, let’s remember that there would be nothing to debate if the ACLU and PubPat hadn’t filed this suit in the first place. Myriad has, and should continue to, inform the discussion about the role public interest organizations ought to play in our patent system.”

126 thoughts on “Twenty Thoughts on the Importance of Myriad

  1. On the other hand if someone will find DNA that corespond to that cDNA and will find its coding such specific compound. And than will show that you can get that cDNA by doing routin wiedly know actions… What will happen?

    Is such patent based on that cDNA still valid?

    So cDNA cooked up enterly by humans (like by mixing to different species that could not mix DNA in nature), will be treated differently than cDNA “just extracted” from one specie (on presumption that evolution could do the same synthesing as human researchers?)

    Contr for your argument. If that company used wildly known tehnique, and there is some DNA with similar effects, and that skilled person can use that DNA and that tehnique, and get given cDNA, than it would be invalid.

    So what will matter will be just simple question, does such cDNA exist in nature?

    Ofc. nobody can answer such question, as nobody can know each and every mutation of given DNA that is present in nature.

    So my pick is that “but evolution could come up with it” will be fundamental here.

  2. “Right, because I didn’t want to write out a sequence consisting of 500+ nucleotides.”

    That is the problem. You picked analogy that is not good enough for the analysis you did on it. (To show ridicule of court decision by swapping 2 letter… Come one….)

    And function of nucleotides do not corespond to it so easily. That is my point. Add functionality of each nucleotide, and then make big statements.

  3. But hey, why not start discussing the tax code? That makes about as much sense as the other shovelling that you are trying to do.

    Or do you forget already the hypocritical smarminess that you had with the utility argument?

    LOL

    bow

  4. Did you find the nuts to simply admmit that you were wrong yet?

    LOL – what a hypocrite.

    Thanks for the popcorn Malcolm. This has been an awesome gloatfest precisely because you cannot find the nuts to be the least bit honest.

  5. Malcolm, you do realize this was decided under 101, right?

    Right. And I understand why. I also realize it wasn’t decided under the tax code. I also realize that you are a s0ci0path and a f–ktard.

  6. It is probably not the case that a 102 rejection could have been imposed on the basis of an inherency rejection. Given the file dates of the patents, it is most likely the case that the specific sequences (recited in the claims) were not yet known.

    Do you know what inherent anticipation is? It’s where a composition in the prior art inherently anticipates a claimed composition becuase it’s literally covered by the claim, even where it was impossible for those in the prior art to have known the details of the composition recited in the claim.

    Myriad’s composition claims (the ones at issue in this case) literally cover an “isolated” human chromosome or a large fragment thereof, where that chromosome or fragment comprises their recited gene. Such molecules were in fact isolated long before Myriad filed its patent application.

    As far as all of the 15-mers are concerned, you might be right; it could be that a few of them were known, and the examiner didn’t bother to look.

    This is not really a disputed fact at this late date. The Examiner didn’t bother to look. Those claims would be invalid as anticipated but that issue was never addressed because the ACLU wasn’t interested in invalidating just Myriad’s claims.

  7. While I don’t agree with SCOTUS that isolated DNA exists in nature based on the premise that the isolated DNA encodes the same information as genomic DNA. However, all is not lost with this ruling if one seeks to claim isolated DNA. One simply needs to claim the isolated DNA as step in a method claim. Although method claims are generally harder to enforce that composition claims, in the case of biotech, this isn’t always the case.

  8. I’m not sure why Lemley contends that cDNA patents will probably be found to be obvious.

    He seems to be confusing issues. Simply because naturally occurring DNA is not eligible subject matter does not mean it would constitute prior art that would motivate someone to create a specific cDNA sequence. Assuming a pharmaceutical company were the first to identify a specific cDNA sequence as coding for a useful compound, outside of this understanding there is no motivation for a person of ordinary skill in the art to create that specific cDNA sequence.

    Maybe he was just shooting from the hip and hadn’t given this much thought, but I don’t think that understanding is correct.

  9. It’s certainly hard for Malcolm to NOT want to put the focus somewhere else, anywhere else, then the massive beatdown I have delivered to him.

    So tell me Malcolm, have you found the nuts yet to admit that you were wrong and I was right?

    Bow

  10. administered the harshest punishment… will have less impact

    LOL – even his posts in a single post are spinning round and round.

    We know already if variant sequences are ineligible as well. DO they effect a change in kind or not? Are they enough to NOT effectively be in the warehouse of nature?

    This really is so simple that no further ‘explanation’ is needed, and your attempts to make this more complicated with all of your dust kicking (and there has been a prodigious amount of dust kicking) are quite meaningless fluff.

  11. That is not what they held.

    Right. They held that Myriad’s claimed compositions were ineligible.

    LOL – twice now I have provided the quote of what they held. Do you need those three words yet again? I think so:

      Product
      of
      Nature

    Try to find the nuts to admit that I was right and that you were wrong this week, OK pumpkin?

  12. The discovery of something which is not clearly one of these, may not be patentable nevertheless

    Or you could be misreading case law yet again Ned.

    Remember the Chakrabarty case? You know, the one I asked you again and again and again to consider and to come up with some countervailing legal position to fight the product of nature doctrine that I saw there (and that you never did)? You do know that in that case, the invention deemed patent eligible was not clearly placed between a manufacture and a composition, right?

    Do you need me to lead you out of the weeds yet again?

    Because you are going there very quickly – here with the choice of words of “identically found.” You labor under the one vote of Scalia, and ignore the fact that ‘identical’ is not controlling, that Myraid’s claims were not identical (the ends of which had broken bonds that gave a different structure, remember?) Your attempted parse here to think that a small difference in structure simply fails – and shows that you fail to grasp 101 case law (yet again).

  13. are anticipated

    LOL – Malcolm, you do realize this was decided under 101, right? That 101 was the issue brought against Myriad, and that Myriad could not have a defense against the 101 charges by saying, “Ha, you don’t have to get to 101, because we svck under 102,” right?

    /double face palm

    (and worth repeating: link to i.stack.imgur.com )

  14. More absolutely nothingness from you.

    You know, when I look back at all of your posts under this moniker, I see that you have actually said, well, absolutely nothing. You are just more concise than Malcolm.

    Attaboy.

  15. Why? What reasoning? All Malcolm has done is QQ and kick up dust.

    Do you think that biology gets a different reason from what the court said long ago in Chakrabarty?

  16. He must have missed your “configured to” is structural language discussion, Malcolm.

    You know, where you admitted that such ‘shortcuts’ are recognized in their respective arts as providing the structural basis in the claim.

  17. Knowingly making a ‘sloppy mistake’ is the same as knowingly misrepresenting.

    You know, like voluntarily admitting that “configured to” is structural language and that you understand the controlling law to the exceptions to the printed matter doctrine and then making a sloppy mistake of presenting your ‘opinion’ or desire to change the law as what the law actual says (when you know it does not).

    And yes, that happens all the time with certain posters bent on pursuing their agendas, certain posters like Malcolm.

  18. They’re a hard limit on sht you can patent set forth by judicial fiat

    LOL – that’s not what the Justices say themselves, 6. Oh, you are not being too original here, as I posted much earlier that the effective workings of the Justices and their refuse-to-let-become-dead-letter exceptions are Judge-made law in violation of the constitution, but the Justices lay claim that the authority they use is not their own, but from Congress.

    You know, laying hidden in the implicit words (winkwink).

  19. I think there’s a simple reason for that a failure

    There is an even simpler reason: it was not a part of the case or controversy in front of the Court.

    Sort of like when I watered down your dust kicking with the utility argument that you went all smarmy on me for (and – of course – went all hypocritical on recently).

    And there is no “takes the rug out from the reasoning.” The reasoning exists exactly the same – and exactly the same as I told you: you cannot have a patent on something that is in Nature’s warehouse. It don’t matter when people actually do find out that it is in Nature’s warehouse, as the words from Chakrabarty indicated.

    Do you need me to shove your nose into those words again?

  20. at the heart of the preemption doctrine is what YOU SUBJECTIVELY INTENDED TO DO WITH THE PATENT

    6′s ever amorphous ‘preemption’ schema now includes subjective intent?

    LOL

    You’ve asked the same question 3 or 4 times now, and I tell you the same thing every time, yet you repeat the question as if somehow my answer or the reasoning will change

    LOL – right – like I told him the exact right answer from the get go, the answer the Supremes actually did use in their explicit holding, the answer that even Malcolm danced too after the oral arguments, and STILL he is kicking up dust and trying to find some spin to hid in.

    He is feigning ignorance and then projecting that feigned ignorance in his spastic rhetoric, and it is clear that no one is buying it. But note that even though I have posted the most times on the Myriad decision (rightfully gloating), Malcolm has more than three times (probably approaching four times now with yesterday’s diarrhea) the words typed than I.

    That’s an awful lot of shovelling for someone who doesn’t care.

  21. Now, six years after

    LOL – Malcolm, You are STILL trying to paint this with a time aspect of 102/103. I have told you that 101 does not operate like that.

    You profess that you know the difference between patentability and patent eligibility, but then you type CRP like this that shows that either you don’t ot that you are trying to be purposefully misleading.

    Either way, it is a FAIL for you.

  22. You. Are. Making. It. Harder. Than. It. Needs. To. Be.

    It’s called kicking up a dust cloud, 6.

    Happens all the time.

  23. MOST VALUABLE OPINION:

    “”" Brenda Simon (Thomas Jefferson School of Law) notes that Myriad “does not impact one of the most valuable aspects made possible through Myriad’s patent protection: a private biobank of patient data containing information about additional mutations that Myriad can maintain as a trade secret.”
    “”"

    And its plain WRONG.
    Such private biobank was created and nobody else had acces to it CAUSE patent exclusivity, what was vielded by Myriad as anticompetetive and anitresearch tool.

    Now that others can test, they will start to gaint their own biobanks.

    But what will be new here is possibility for researchers to gather such data too. And they will share such data, if anybody would.

    That signify uglines of broad gene patents. As they can be used to STOP others from reasearch. And allow to keep subsequent discoveries as trade secret that nobody can reproduce (because research is also use of patented “innvention” and hence can be stoped..)

    So Myriad case DO HAVE profound positive effect in that regard. At worst it will allow for multiple companies to build their own siloses of trade secrets, but given some time it will allow for dissemination of that knowlege via “normal” research from universities.

  24. “What is the natural sequence”

    A good question for human genes as well. I’m guessing that monday will bring the announcement of several new services offering to search for pseudogenes and other naturally occurring cDNAs for clients who wish to invalidate cDNA claims.

  25. Awful for the broadest claims in some diagnostic patents, but quite good for a productive balance between IP providing incentives and IP stifling research.

    I don’t think the decision leaves much ambiguity at all when it comes to subsequences derived from a cDNA: they will have to differ from that of the parent genomic DNA strand. Any subsequence that includes parts of more than one exon should qualify, as an intron has been removed during the splicing process. Subsequences wholly derived from a single exon generally won’t qualify.

  26. “There’s really nothing particularly odd about claims to very specific, very narrow, non-natural, useful nucleic acid compositions whose sequence matches a previously unknown (or previously undisclosed) sequence buried in the massively longer genome of an obscure microbe that you never heard of.”

    Well if it is that common then f man, I guess they’re all out the window. Someone should have brought this to the USSC’s attention.

    However, I think you’re talking out your arse and that it probably isn’t that common, and besides, I doubt that your fact pattern of making the chemical and then 1-20 years later finding out that it was already in existence in some animal is all that common.

    “That’s why I’m harping on it.”

    Oh, well ok. But stop bothering me with it ok? And stop repeating it ad infinitum for go d’s sake ok? My reasoning isn’t going to change so long as your hypo stays the same.

    “Did you notice that the Court doesn’t really bother to discuss this very common and obvious fact pattern and apply it’s reasoning to those claims? ”

    Nobody brought it up, why do you think they should address it sua sponte? Also, it wouldn’t really be relevant, Myriad made their admission and paid for it with their claims. Like I have told you, the rationale behind the existence and application of the judicial exceptions are less about what the subject matter is (though it is about that too), and more about what people are subjectively intending to do with the patent (or have already done with the patent as the case may be). Though generally the two go rather hand in hand because the drafters are pretty competent.

    “In spite of the fact that its holding directly affects all those claims?”

    I’m going to be 100% honest with you MM, I’m 100% sure the thought never even crossed their minds. Also, I’m 99.9% sure that this fact pattern will never ever be seen in court in my lifetime. But do point it out to me if it pops up ok? I’m interested to see what happens. I’ll put 100$ on the DC not invalidating the claim. Specifically for the reasons I enunciated above, another 50$, so long as the patent holder isn’t harrassing people taking sht out of the chicken. If they are, well then, yeah that sht will probably go down.

    “I think there’s a simple reason for that a failure: it takes the rug out from the “reasoning” they used when addressing Myriad’s awful, anticipated g-r-bage claims.”

    You really don’t get it do you? The exceptions are not “reasoning”. They’re a hard limit on sht you can patent set forth by judicial fiat. And the only “reasoning” they employed was to note that Myriad made an admission that they were all up ins claiming on some judicially excepted subject matter, specifically their discovery. It is pretty hard to “pull the rug out from under” that. It’s like saying that you can pull the rug out from underneath a killer admitting to a murder. Pretty da m hard to do. He either admitted it or he didn’t.

  27. “Pretty sure that Myriad did the same thing.”

    I have little doubt that they did at the office, and it sailed on through. Then they got to the USSC and gave up the goods and lost their case. This ginormous fact seems to be going over your blissfully unaware head. It is literally the only material fact to the case in Myraid with respect to the invalidated claims. They made an admission. They lost because of it. Although the court would have dug it out anyway. The opinion just would have been a little longer.

    You will also like to notice though that Myriad also put a little gem in their spec about what they really felt the invention was, though at time of filing they chose to mask it a bit. The USSC even noted that little section.

    “Either will your silly 112/6 argument because of my addendum to the summary (thanks, man! [eye roll]).”

    Your later added addendum doesn’t change what the originally filed application states. At this point we have evidence on the record of what you truly believe your invention to be. That creek, yo up it bro. And to be clear, I don’t make “arguments”, I issue rejections.

    “This is your “simple” theory for determining whether something is “effectively pre-emptive”?”

    That’s not a theory, that’s the information you’ll need to determine whether your sht is about to get 101ed. Note that its the exact same thing as was announed in Alice the other day and the same thing I’ve been saying for years.

    “I’m claiming a new chemical composition that never existed before I made it (refer to my earlier comment for a more specific description). It’s a polynucleotide.”

    I’m aware of what you’re claming, remind me though, what was your invention? Because if it is the earth, the discovery of the loci and genetic sequence of some genes etc then your sht is sunk.

    “Later comes those facts about the genome of the yeast in the cloaca of the Bulgarian chicken. ”

    As before, I decline to comment on this particular scenario because the courts have given no opinion on the matter. And I’ve answered it as far as I responsibly can.

    “So go ahead. Tell me how your “simple analysis” works with these facts.”

    I already told you just up ahead. You get your patent, and then some sht goes down in court, and a judge makes a decision. Why you insist on repeating it like an ar se is beyond me.

    Just because the lawl creates some connundrums or paradoxes doesn’t mean it isn’t the lawl MM. Indeed, that is precisely why it is called the lawl.

    “That’s what Myriad tells us is the “correct” result.”

    I more or less agree that would be the “correct” result, but I would bet dollars to donuts that if that pattern arose that the court would let it slide IF it was not the intention of the applicant from the outset to claim that naturally occuring x from a chicken. And that is because, and you have to understand this, at the heart of the preemption doctrine is what YOU SUBJECTIVELY INTENDED TO DO WITH THE PATENT. All underlined because it is important. Myriad wanted to protect their discovery. Benson wanted to protect his algorithm (as did Flook). Morse wanted to protect his discovery. Bilski wanted to protect his abstract idea of a specific kind of hedging. Diehr just wanted to protect the opening of a door automatically when some sht was done curing. Do you see a pattern emerging here at all? People at the office mask these types of things and hope examiners won’t find out. But when they get to the USSC they spill the beans. Every. Single. Time.

    Therefore, if you really just went into the lab and made this chemical hey presto out of thin air so to speak, then we’ll issue the patent. And if it is only later discovered in a chicken, then I doubt seriously anyone would contend that what you really wanted to do was protect a discovery of something in a chicken that you in fact didn’t even make before you patented the chemical. And I doubt even more that a court would invalidate your patent because of that.

    That’s the last time I’m going to repeat this for you. You’ve asked the same question 3 or 4 times now, and I tell you the same thing every time, yet you repeat the question as if somehow my answer or the reasoning will change. It will not, just the same as the lawl in this area will not.

  28. “… [in] all of Myriad’s composition claims …[there is] no upper bound on the length of the sequence… This means that the claims literally cover chromosome length sequences…in which case the claims are anticipated, expressly and inherently, by the reams of prior art”

    ^^^^^^^^^^^^^^^^

    It is probably not the case that a 102 rejection could have been imposed on the basis of an inherency rejection. Given the file dates of the patents, it is most likely the case that the specific sequences (recited in the claims) were not yet known. I don’t think that the Board would have affirmed an inherency rejection, but if they did, the CAFC would have shot it down.

    As far as all of the 15-mers are concerned, you might be right; it could be that a few of them were known, and the examiner didn’t bother to look.

    But the remedy for that is for someone to find a published reference, and request a re-examination

  29. “Now they’ll have to disclaim the natural sequence…”

    Easier said than done; what is the “natural sequence” when one takes into account all known bacteria, and all that will be discovered during the life of the patent?

    ^^^^^^^^^^^^

    Another question: what about viruses? They’ve got “genes”

  30. there are times where sht could get hairy, and you insist on harping on one such situation.

    There’s really nothing particularly odd about claims to very specific, very narrow, non-natural, useful nucleic acid compositions whose sequence matches a previously unknown (or previously undisclosed) sequence buried in the massively longer genome of an obscure microbe that you never heard of.

    That’s why I’m harping on it. Did you notice that the Court doesn’t really bother to discuss this very common and obvious fact pattern and apply it’s reasoning to those claims? In spite of the fact that its holding directly affects all those claims? I think there’s a simple reason for that a failure: it takes the rug out from the “reasoning” they used when addressing Myriad’s awful, anticipated g-r-bage claims.

  31. 112 2nd, failure to claim that which you subjectively regard to be your invention.

    Okay, Herr Examiner, I put in the summary that I invented the earth and everything in it and also that I invented the subject matter that I recited in my claim. Pretty sure that Myriad did the same thing. I had no idea that this a 112,2nd case and I’m pretty sure that Clarence was equally clueless about that.

    I need a list of things which are judicially excepted and which MAY be relevant to this claim, and a list of things you can do with each of the judicially excepted subject matter on the first list which are not covered by the claim.

    This is your “simple” theory for determining whether something is “effectively pre-emptive”? LOL. Well, let’s just assume for the sake of argument that claims are ineligible if they read on a “natural product” (and we’ll leave it undefined). So a claim to “a newly discovered bacteria” is ineligible, for example.

    I’m claiming a new chemical composition that never existed before I made it (refer to my earlier comment for a more specific description). It’s a polynucleotide. I’ll get my patent immediately, of course and eligibility won’t be an issue. Either will your silly 112/6 argument because of my addendum to the summary (thanks, man! [eye roll]).

    Later comes those facts about the genome of the yeast in the cloaca of the Bulgarian chicken. Now, even though for some reason you’re very comfortable with the Myriad reasoning (sort of like Justice Scalia), you are apparently unable to figure out what one can and cannot do with the “product of nature”, i.e., the yeast that was discovered in the cloaca of the Bulgarian chicken. You want me to tell you “all the things you can do” with that yeast. Well, my friend, you can do anything you want with that yeast. Let your imagination be your guide. Be mindful of local health ordinances. The ONLY thing you can’t do with that yeast is use your man hands to cut or PCR the specifically claimed polynucleotide out of the yeast — you know, the really useful chemical I synthesized years earlier — and purify it from all other cellular components and all other DNA molecules in the yeast. That’s something that would only happen if you did it deliberately. In other words, your prohibited from taking one composition (a yeast cell in the cloaca of a chicken) and radically modifying that composition in the process of making another composition (a specifically claimed isolated polynucleotide), just as any other composition claim prohibits people from taking “natural” resources and using them to make the claimed composition.

    So go ahead. Tell me how your “simple analysis” works with these facts. And then explain using the same “logic” why the teeny tiniest modification of that same yeast molecule, making one single conservative mutation in that yeast’s genome, creates an eligible composition (i.e., a recombinant yeast). That’s what Myriad tells us is the “correct” result. And you seem to understand why. So let’s hear the reasoning.

  32. the SCOTUS decision means that no one can patent a gene in a plant or bacteria. As a result of the decision, less capital will flow into R&D on plant genetics and bacterial genetics.

    The Court administered the harshest punishment, in fact, not to those interested in discovering human genes but to applied microbiologists. That’s because bacteria, the most diverse, abundant and least understood form of life on the face of the earth, do not have introns. Certainly many who have chosen to devote their lives to identifying new and useful bacterial genes will continue to find it worthwhile to do so … but they won’t be able to patent the “natural sequences” of those genes as they might have been able to before. Now they’ll have to disclaim the natural sequence and claim all the coding variants themselves. Given the fact that ideal protein expression is achieved only after the codons are optimized for the organism in which the recombinant expression is to occur, perhaps the Myriad decision will have less impact on applied microbiology patents than it would seem to at first glance … Time will tell. Either that or a subsequent court case will let us know that the variant sequences are ineligible as well.

  33. “Okay, I invented the earth and everything in it. But I’m not claiming taht”

    K, your sht gets a 101 right out of the gates. pretty sure “the earth” is a natural phenom.

    “But I’m not claiming taht.”

    112 2nd, failure to claim that which you subjectively regard to be your invention. You will abide by proper claim drafting if you want me to really consider this hypo.

    “What “product of nature” is “effectively” pre-empted by that claim?”

    It doesn’t really matter, because you failed to claim that which you regard as your invention, and your invention is judicially excepted (the earth is judicially excepted subject matter my bro). But your claim may yet effectively preempt yet more judicially excepted subject matter, but I don’t have enough information about it, and I doubt you’re going to be willing to give me the info I need so I’m unable to deliver you the answer you desire.

    “Let’s see your analysis. If you need to know a particular fact, let me know what the fact is.”

    I’ll be happy to help you through the analysis if you will provide me with a handy dandy list along the lines I told you about in the post way above. I need a list of things which are judicially excepted and which MAY be relevant to this claim, and a list of things you can do with each of the judicially excepted subject matter on the first list which are not covered by the claim. Please limit your later list to substantial uses so I don’t have to lol@u.

    “the reasoning with respect to “effective pre-emption” or whatever the heck you are calling it.”

    Be very clear MM, this case is so simple you don’t even really have to get to the “effectively” language. They literally came right out and admitted that their invention was in the discovery. Please. Read this many times.

    They literally came right out and admitted that their invention was in the discovery.

    They literally came right out and admitted that their invention was in the discovery.

    They literally came right out and admitted that their invention was in the discovery.

    They literally came right out and admitted that their invention was in the discovery.

    They literally came right out and admitted that their invention was in the discovery.

    The supremes decided the case on those grounds. Period. Just like they would decide your case involving your invention of “the earth” in just the same way.

    And, if you’ll recall, I even noted in the thread about the oral args that if they were going to admit the above then the case was closed, the end, they lose. And then comes the decision where they note the admission, and decide the case. The end. They lost. It really was that simple. Just like it would be that simple in your “the earth” example.

    “But you understand this stuff so well, 6. ”

    I do, but I’ve also noted, with my higher understanding, that the preemption doctrine is not perfect and there are times where sht could get hairy, and you insist on harping on one such situation. It will require a judge, and I am not a judge, and judges don’t generally issue advisory opinions anyway. If you want to know what would happen at the office, then your claim would be issued, np. 6 years later, then some sht could go down if you’re in court.

    And to be clear, I’m not shouting, I just don’t have an underline ability on here.

  34. I think this might be the most insightful comment of the lot, Dennis

    It’s certainly hard to argue with that one.

  35. But the question is, what is the commercial value of such claims when anyone can use use the naturally occurring sequence?

    It seems to me, not much.

    Agreed. It will be difficult to “dominate” an entire biotech subfield by isolating, say, a “key” bacterial gene. Claiming all the coding variants except for the natural sequence will certainly remain valuable (most companies do this already). That assumes a narrow interpretation of the decision’s holding, along the lines of how the PTO has interpreted it.

    The “additional nucleotide” business is just sweeping up as much of the available crumbs as possible around the natural coding sequence. Who knows? It might create a problem for some competitor trying to recombinantly express the natural gene. Biology is complicated.

  36. if what you claim occurs in nature, 101 bars the claim. I don’t think it makes any difference how short the sequence is.

    I never said that “short sequences” were eligible. I’m saying that the Court’s decision strongly suggests that adding merely one nucleotide to either end of an isolated “naturally occuring” gene sequence will transform the sequence from an ineligible sequence into an eligible sequence. The only exception, of course, is where the additional nucleotide happens to be same nucleotide found abutting the natural gene sequence in its natural state. That’s why you don’t claim those.

    If you have a specific objection to anything I wrote in my 1:51 comment or find an error, let me know what that objection is.

  37. That is not what they held.

    Right. They held that Myriad’s claimed compositions were ineligible. But they stated that Myriad’s claimed compositions were non-natural: “isolating DNA from the human genome severs chemical bonds and thereby creates a nonnaturally occurring molecule”.

    Are there statements in the opinion that arguably contradict this straightforward proposition? Yes. That’s why the opinion is g-rb-ge from the viewpoint of a patent attorney who happens to be skilled in the art of molecular biology.

    if one claimed the chemical structure of isolated DNA, it should be patentable.

    Again, regardless of the Supreme Court’s nonsensical assertions to the contrary, the claims are directed to chemical structures. One skilled in the art need only know the structure of a composition to determine whether that composition is anticipated or whether it is infringing Myriad’s claims. How would that be possible if the claims are not directed to a chemical structure?

    The Court certainly takes issue with Myriad’s claims and they should take issue with them because they are incredible broad. That wouldn’t change if every one of the ten gadzillion sequences covered by the claims was written out. The claims definitely “pre-empt” certain research not because a sequence identical to a “natural sequence” is recited, but because the claims read on the prior art. A novel, non-obvious, enabled claim drawn to a reasonably narrow polynucleotide sequence doesn’t “pre-empt” any “natural product” anymore than any other composition claim to a structurally defined man-modified “product of nature.”

  38. Perhaps you could elaborate. Which claims in particular?

    Well, as far as I can tell all of Myriad’s composition claims that were at issue in this case suffer from a fatal flaw in that there is no upper bound on the length of the sequence and no clear definition of the term “isolated”. This means that the claims literally cover chromosome length sequences comprising the claimed genes, in which case the claims are anticipated, expressly and inherently, by the reams of prior art wherein the human chromosome (and fragments thereof) which comprised the claimed sequences were “isolated”.

    The other claims are even broader as they are infringed by polynucleotides of any length greater than 15 nucleotides, as long as some 15 nucleotide stretch within that polynucleotide either (1) exists in the natural gene or (2) could code for a 5 amino acid stretch (!) in the natural protein product. These claims are anticipated by reams of prior art as well.

    None of this is “news” to anyone, by the way. The first time most of us saw Myriad’s claims, years ago, this fact jumped out at us. They are ridiculously broad and should never have been granted by the USPTO. Why Myriad chose to fight these 101 issues with those claims is completely baffling. Also baffling is the failure of certain intelligent and outspoken people to highlight these important facts when defending Myriad’s claims.

  39. You have used letters…

    Right, because I didn’t want to write out a sequence consisting of 500+ nucleotides. How do people communicate with each other about polynucleotide sequences in your country? Sign language?

  40. Which is the pattern for Lemley. Knowingly misrepresent.

    We’ll know if Lemley is “knowingly misrepresenting” the Myriad case if he continues to make that assertion without addressing the quote I provided.

    Until then, he might just have made a sloppy mistake. Happens all the time.

  41. 6: You start off your analysis wrong MM. Start the analysis off with “I invented x”.

    Okay, I invented the earth and everything in it. But I’m not claiming taht. I’m claiming a specific isolated DNA molecule, 200 nucleotides long, 100% pure. The sequence has never before been disclosed. I show that the sequence encodes a protein that, when recombinantly expressed, produces a useful therapeutic for treating glaucoma.

    What “product of nature” is “effectively” pre-empted by that claim? Who is prevented from doing anything with any of product of nature?

    Let’s see your analysis. If you need to know a particular fact, let me know what the fact is. I would have guessed that you knew all about molecular biology and how it works, given that you are so comfortable with the result in this case and, more importantly, the reasoning with respect to “effective pre-emption” or whatever the heck you are calling it.

    the situation you’re wanting to discuss, the one where something happens in the future that calls the eligibility of the previously filed claim into question is something for a future case to delve into.

    But you understand this stuff so well, 6. You mean to say that don’t have any opinion on this very obvious and mundane fact pattern that you are willing or able to explain and defend? That’s odd.

    And please stop shouting. That’s not a very, um, “effective” way to convince people that you know what you’re talking about.

  42. you CAN NOT have no sympathy to Myriad, and claim that law work ok.

    If law work ok, then Myriad never get claim in first place and me have no reason to be sympathy for them.

    Meanwhile, back on planet Earth …

  43. Professor Srividhya Ragavan (Oklahoma) writes that “Too much of anything – even patents – is good for nothing. Charkabarty exemplified patent law’s ability to spur invention while Myriad represents the end of an out-of-control patenting phenomenon which became increasingly disconnected with the system’s objectives. Time for software patent-holders to take notice.”

    I think this might be the most insightful comment of the lot, Dennis. There has been an awful lot of over-reaching -we shouldn’t be too surprised when there’s an over-correction.

  44. “…we should thank Myriad for its incredible greed in pursuing and asserting some truly awful claims”

    Perhaps you could elaborate. Which claims in particular?

  45. “Which is the 100 year old Supreme Court case”

    I’m pretty sure it started at the USSC around Morse. 1854. But there may be even older ones.

  46. “That’s not the conclusion I come to.”

    Well then you need to learn the law. That’s really all there is to say. I’m not really sure if there’s anything anyone can do to help you out more than to say that.

    “That’s the conclusion you come to because you are not thinking very hard.”

    That’s the fin conclusion the highest court in the land came to because they were not thinking very hard either. Jesu s chris t on sale MM. They, for all intents and purposes, made this particular part of the lawl, I think we can trust them about it.

    Again. You. Are. Making. This. Wayyyyyyyy. Harder. Than. It. Is.

    “I claim a specific isolated DNA molecule, 200 nucleotides long, 100% pure.”

    You start off your analysis wrong MM. Start the analysis off with “I invented x”. Here, Myriad straight up tells us that their invention lay in the discovery. The claim, oft confuzzled with the invention, simply is not the invention mah brosef. I know this is super hard to grasp. And this case bears that out better than most I’ve ever seen. There was an article about this the other day, they should cite directly to this case.

    “What “product of nature” is “effectively” pre-empted by that claim?”

    I don’t know, you’ll have to fill me in on what the claimed item specifically is and any particularly relevant judicial exceptions for me to be able to make the determination for you.

    “Now, six years after my patent grants, someone discovers a yeast that lives in the cloaca of a Bulgarian chicken. It turns out the yeast chromosome includes a gene that is much longer (500 bases) than my claimed sequence (and therefore not covered by my claim). In addition, the protein encoded by the gene has no catalytic activity, unlike the protein encoded by my claim. But the gene does include the polynucleotide sequence I discovered first.”

    I’ve already told you MM, that the situation you’re wanting to discuss, the one where something happens in the future that calls the eligibility of the previously filed claim into question is something for a future case to delve into. I simply do not know the answer to your question about this because the issue is undecided by the courts. If I had to guess, they’ll probably let the claim slide.

    “With these additional facts, please explain how my claim “effectively” covers any “product of nature”?”

    Again, you can safely put the “product of nature” nonsense terminology down brosef.

    “This is a joke, right?”

    No, it is not a joke. This decision is hilariously short for a decision about a case like this. But it should and could have been even shorter without prattling. And that is because there was no need for them to hold people’s hand through the full analysis because MYRIAD DIDN’T EVEN BOTHER TO DENY THAT THEIR INVENTION LAY IN THE DISCOVERY. AND THE DISCOVERY IS JUDICIALLY EXCEPTED. And they didn’t see any need to hold people’s hands either.

    Be clear, if you come right out in the open and admit that your invention is some judicially excepted subject matter, the analysis ends there and your sh t gets canned.

  47. This, and other strategies should be effective in getting claims allowed. But the question is, what is the commercial value of such claims when anyone can use use the naturally occurring sequence?

    It seems to me, not much.

    Biotech companies will have to rely far more on method claims than they did in the past. (A fact which may scare away some investors).

  48. John, I think the problem, in part, is the specific classes enumerated: machines, processes, manufacturers and compositions.

    The discovery of something which is not clearly one of these, may not be patentable nevertheless. Thus if one finds a new world while on board an American jurisdiction spacecraft, one cannot patent that new world because worlds are not eligible subject matter. One might argue that they are compositions of matter but that would be an extreme version.

    The problem with things like plants and things like animals is that they are not really compositions, but they are higher order forms that use compositions. Neither are they manufacturers if they are simply found in nature.

    But DNA itself seems to be a composition. I think that if one claimed the composition itself, and if that composition was not identically found in nature, the should be no problem with section 101.

    Lourie held that isolated DNA was structurally different from DNA in the wild. The Supreme Court neatly avoided that holding by saying that that was not what was claimed. What was claimed they held, was a sequence, and the sequence was in nature.

    Thus if claimed a composition that had a structure that was not found in nature in even a small portion, I think the claim would be eligible for patenting.

  49. “is the decision good news for health care, because it may make diagnostic methods and treatments cheaper?”

    ^^^^^^^^^^^

    No. That is absolutely the wrong question. You’re looking at this from the perspective of where we are right at the moment, rather than from the perspective of where we will be in, say, 10 years under each of two different sets of IP laws.

    If, for example, the government were to simply seize all assets of the wealthy, and redistribute them to the middle class, the middle class would actually be better off (if only for a few months). Would you like to see that?

  50. The other issue that has received very little commentary concerns genes in plants and bacteria. From an emotional perspective, there is a VAST difference between genes in plants/bacteria, and genes in humans. But the SCOTUS decision means that no one can patent a gene in a plant or bacteria. As a result of the decision, less capital will flow into R&D on plant genetics and bacterial genetics. Even those who were in favor of prohibiting patenting of HUMAN genes ought to be concerned about the fact that many useful products (pertaining to plants and bacteria) that will take much longer to come to market as a result of the reduction in R&D funding.

  51. MM,

    ?

    That is not what they held. They held that the sequence was claimed and that sequence was found in nature.

    This is why I asked you before if rather than claiming the sequence the way they did, but rather had they claimed a composition of matter by its chemical structure, would they have had a problem with 101. I think they would have if they chemical structure was found identically in nature. But according to Lourie, the chemical structure of isolated DNA is different. Thus if one claimed the chemical structure of isolated DNA, it should be patentable.

  52. Gregory Dolin (U Baltimore) writes: “The decision could have been much worse….the fact that the Supreme Court concluded that cDNA is patent eligible is a victory for Myriad.”

    ^^^^^^^^^^^^^^^^

    Yes and no. But mostly no. There is still ambiguity regarding the situation where the cDNA is identical to a subsequence within naturally occurring DNA. The decision seems to argue that cDNA is ineligible when it is identical to a subsequence within naturally occurring DNA. That part of the decision is really quite awful.

  53. I agree with your analysis and sentiment.

    It seems to me that the justices rushed into their ruling, which was probably preordained months before.

    If they had made an effort to consult with molecular biologists (or had their law clerks do it), the outcome probably would have been different.

  54. “Yes, I understand that. I’ve stated over and over and again that I have no sympathy for Myriad.”

    Myriad executed their lawfull rights. (Patent is exclusivity after all…)

    So you CAN NOT have no sympathy to Myriad, and claim that law work ok. Because Myriad did executed law. Nothing else.

    In other worlds. Its lawfull in US to stop life saving research for 20y.

    Relaying on companies to “behave” is … I can find too pejorative word here.

    But that is most probably argument for something like orange box (process?) from Germany to be introduced in US (so that party that infrige can seek court decision to force inventor to license patent). And not change to how patents are granted.

  55. You have used letters…

    And wanted to point out riduculousness based on “small vs big” difference.

    I pointed out that such analysis is more suitable for copyrgith law…

    In genes, and patents on them there would be NO correlation between samll/big difference between structures, and between small/big difference in RESULTS of that gene programming.

  56. Product of Nature not patentable is already the law in US…

    And if Myriad patent was about man-mande derivate of DNA, it would be USELESS in diagnosing NATURE MADE gene, that signal increased cancer chance.

    So Myriad could use man-made DNA to extract needed genes, but patent in itself was about nature-made. Or man-made identica to nature-made.

  57. I had another thought about the practical implications of the decision.

    If you do want to cover as many uses for a novel, non-obvious “naturally-occuring” sequence (be it a sequence encoding a gene or any other sequence), the simplest way to do it would be to claim 6 sequences, separately, where each sequence comprises the “natural sequence” PLUS one additional specifically recited nucleotide at either the 5′ or 3′ end. The key is to leave out the two sequences with the additional nucleotide at the 5′ or 3′ end that are identical to the natural sequence.

    If you’re not skilled in the art, this may be difficult to follow but I think it’s otherwise clear. This set of claims could still be designed around (just like any claim reciting a natural sequence) but it would provide clean structural claim coverage for most longer sequences comprising the “natural sequence”. The strategy could be extended, if one wished, by expanding the description of the additional base pairs on either end (i.e., “wherein said sequence further comprises AT, AG, AC, AA, etc at the 5′ end”, again omitting the “natural sequence”).

    The other way to skin the cat for maximum coverage of longer sequences comprising your “natural sequence” would be to recite the sequence of the “natural” upstream and downstream sequences and then disclaim any and all longer sequences with those particular adjoining sequences.

    Does anyone see any 101 problem with this approach of obtaining composition claims that cover as many uses of the
    “natural” gene sequence as possible?

  58. Scalia’s concurrence tells us that isolated DNA was found ineligible because it was identically in nature.

    That can’t be the case because Scalia joined the majority opinion which very clearly states that Myriad’s claimed compositions are non-natural.

  59. Think to yourself, hmmmm, if I draft them up a claim to cover all, or pretty much all, uses of these discoveries would it be patent eligible? Then, after 30 seconds of hard thought you will come to the conclusion “NOPERS!”.

    That’s not the conclusion I come to. That’s the conclusion you come to because you are not thinking very hard. The holding in this case applies very directly to all polynucleotides (at least, to all DNA polynucleotides).

    I claim a specific isolated DNA molecule, 200 nucleotides long, 100% pure. The sequence has never before been disclosed. I show that the sequence encodes a protein that, when recombinantly expressed, produces a useful therapeutic for treating glaucoma.

    What “product of nature” is “effectively” pre-empted by that claim? Who is prevented from doing anything with any of product of nature?

    Now, six years after my patent grants, someone discovers a yeast that lives in the cloaca of a Bulgarian chicken. It turns out the yeast chromosome includes a gene that is much longer (500 bases) than my claimed sequence (and therefore not covered by my claim). In addition, the protein encoded by the gene has no catalytic activity, unlike the protein encoded by my claim. But the gene does include the polynucleotide sequence I discovered first.

    With these additional facts, please explain how my claim “effectively” covers any “product of nature”? How is anyone prevented from using a “product of nature” by my claim?

    the extraneous “reasoning” or supporting dicta or blah blah blah telling Myriad why its b s didn’t convince them is of trifling little import in this particular instance because the law itself is so clear

    This is a joke, right?

  60. “Curiously, the grant of power to Congress in the Constitution uses “discovery” rather than “invention.”"

    How did congress choose to utilize this authority to secure for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries in the patent arena?

    By granting them patents on inventions. Oh, lol!

  61. “What does “effectively” mean in this context, 6?”

    The exact same thing that it means in any other context.

    Thanks for the non-answer, which also happens to be false. Do you need to me to provide an example?

    It really isn’t rocket science.

    Then why are you having such a hard time explaining to everyone how one knows whether a composition that is non-identical to any “natural product” is nevertheless “effectively” a claim to that “natural product”? Just tell everybody the “simple” test.

    you can hire me on as an independent consultant

    I tell you what. Go ahead and explain to me, in your own words, why a claim to a new, useful, non-natural recombinant bacteria with one conservative nucleic acid change relative to a natural bacteria is patent eligible while a claim to new, non-natural, useful 100% pure 200 base long polynucleotide becomes ineligible merely because the sequence (not the molecule) is later found buried in the 2 billion base chromosome of a mammoth.

    I’m not saying it’s impossible to make the distinction. I’d just like to hear your views on it, since you seem very confident of their sensibility.

  62. And just fyi re “where’s the preemption”:

    (b)
    Myriad’s DNA claim falls within the law of nature exception. Myriad’s principal contribution was uncovering the precise location and genetic sequence of the BRCA1 and BRCA2 genes.

    ^Thare’s your preemption. You must remember it from the last dozen times I told you about it surely. Remember me droning on and on about the loci? And surely you must remember the whole part about the genetic sequence? We did spend the better part of a year prattling on about it.

    “(c)
    cDNA is not a “product of nature,” so it is patent eligible under§101. cDNA does not present the same obstacles to patentability asnaturally occurring, isolated DNA segments. Its creation results in an exons-only molecule, which is not naturally occurring.”

    ^No preemption. Simple.

    The whole thing takes like 1 minute to make the determination after you know the facts. The case isn’t even a close one.

    “There is no pre-emption in fact, according to the Court.”

    Look again bro.

    “So how does one determine whether there is “effective” pre-emption of a “natural product” with a composition claim?”

    The same way you do for any other claim. And also, I don’t think they really got into the whole “natural product” nonsense, so you can just set that aside mah brosef.

    “List them all. Then we can decide whether your theory is “simple” or not.”

    All judicially exceptions that might be relevant to your claim. And then, when you have determined all that MIGHT be relevant, you’ll turn to finding out which are relevant.

    And you’ll also want to make a list of things you can use the judicially excepted subject matter for that would not be covered by the claim.

    Should take about 2 minutes in a case like this for someone of your background. Ask Myriad, so what did you invent today? They say “WELL GUESS WUT, WE DISCOVERED WHERE GENE X IS LOCATED AND ITS GENETIC SEQUENCE! WE CAN HAS PATENT FOR IT NOW?” You say hmmmm, I’m not 100% sure about this, let me think about it for like 2 minutes. Think to yourself, hmmmm, if I draft them up a claim to cover all, or pretty much all, uses of these discoveries would it be patent eligible? Then, after 30 seconds of hard thought you will come to the conclusion “NOPERS!”.

    “That would work for me. But that’s not what we got from the Supreme Court in Myriad. We got some incomprehensible baloney about Funk Brothers, which is itself a completely c-cked up case.”

    You misread the case MM, the holding was stated right up front, the extraneous “reasoning” or supporting dicta or blah blah blah telling Myriad why its b s didn’t convince them is of trifling little import in this particular instance because the law itself is so clear that they didn’t waste dozens of pages after dozens of pages after dozens of pages going on about it as they do in some decisions. The paper is barely 18 pages and it didn’t really need to be more than 2, but they took pity on Myriad and laid it all out for them why their b sing wasn’t helping. And they blabbered about what the CAFC did a bit too, just for giggles and poking fun at the CAFC. Oh and they tossed in some science talk for people that didn’t spend the last year talking about it.

    I know this is super hard for you, but it really doesn’t need to be. You. Are. Making. It. Harder. Than. It. Needs. To. Be.

  63. I agree with MM

    LOL – no SHT Sherlock – that ‘s why I continue to school you. Haven’t you learned yet that I know the law on this?

    But do you really want to stand next to Malcolm in the weeds in this Myriad storm?

  64. Key figure?

    Nah – but the quote is both priceless and fitting.

    If you actually tried to reply to the substantive nature, you would realize that.

    LOL – oh wait, maybe that was your try.

    Typical Malcolm FAIL.

  65. Same pattern for Malcolm. See his ‘oopsie’ self volunteered admissions as to ‘configured to’ is structural language and the controlling law regarding the exceptions to the printed matter doctrine. And for the same agenda as Lemley has.

    The word for Malcolm: hypocrite.

  66. I agree with MM, but also think Scalia’s concurrence tells us that isolated DNA was found ineligible because it was identically in nature.

    There is no hint that anything that might be obvious over this is ineligible. Nor is there any hint that newly discovered products of nature are prior art.

    There is no 103 basis for denying patentability to creations from isolated DNA as neither isolated DNA, nor is DNA prior art.

  67. Malcolm the hypocrite strikes again:

    It’s how they get to their results from that conclusion that I find weak, riddled with internal contradictions, and therefore rather useless (for reasons I’ve given in the previous several threads).

    LOL – how they got – the same way I told you and the same way you yourself danced to after the oral arguments ?

    I’ve already given the archived link.

    Bow

  68. “What does “effectively” mean in this context, 6?”

    The exact same thing that it means in any other context. Try stepping back for a moment and being fraking objective. It really isn’t rocket science. I could waste all day helping you out on each of your little situations or you can simply throw whatever you’ve got against the PTO wall and see what they’ll let through (my guess is pretty much everything) and then hope you’re never going to have to rely on that specific claim in litigation. Or you can hire me on as an independent consultant since you, and many others in you field plainly have trouble with this.

  69. Professor Kane also notes that the decision reaffirms the non-statutory principle that “discovery does not equal invention.”

    Curiously, the grant of power to Congress in the Constitution uses “discovery” rather than “invention.”

  70. Laugh and laugh. You see the type of arguments you have to deal with? That is what we in information processing have had to deal with since Benson.

    Sheer nonsense.

  71. Dennis, maybe you should ask Jane Fonda what she thinks about the Myriad decision. Apparently she is key figure in all this.

  72. You can not patent text. You can copyright it.

    What in h-ck are you talking about? I’m talking about claiming polynucleotides with defined sequences.

  73. Gee, MM, you have just made the same argument

    No, I just addressed a very specific statement by Lemley, showing that the statement is contradicted by a statement in a very recent Supreme Court case that considered the exact subject Lemley’s talking about.

  74. Independent researchers did independent research on claimed genes. Myriad DID sent cease and disists.

    Yes, I understand that. I’ve stated over and over and again that I have no sympathy for Myriad. Its claims were awful. On the other hand, if they were in fact so broad as to prevent anyone from studying a human chromosome comprising their claimed sequences, then they were surely anticipated by the prior art. That’s also “reality”.

    law of nature fall under 101

    Indeed, and anticipation by the prior art falls under 102. These are composition claims and the Court stated that Myriad’s claimed compositions were man-made and non-natural. It’s how they get to their results from that conclusion that I find weak, riddled with internal contradictions, and therefore rather useless (for reasons I’ve given in the previous several threads). And the fact that the case could easily have been resolved under 102 without creating any new law makes all the backflipping and hand-waving rather pointless.

  75. Computers are patent eligible. (Though nowadays its hard to invent something ground breaking, so most patents are on “small and incremental” improvements)

    You wonder too much into wonderland ;)

    And what you try to misrepresent is idea that to get protection you must have exclusivity on result, and mere method of getting it is not enough.

    That is not gonna happen. Cause that would force insta monopoles. And US law is not equiped to deal with it. (On one hand US have antimonopoly laws, on the other it do not have “forced licensing” laws)

  76. Borring.

    You can not patent text. You can copyright it.

    So neither of your examples are patent eligible.

    Now if you consider THEIR FUNCTIONS, then its different story.

    But if you would do that, you would stumble upon your ignorance to what genes do, and in what way. Since your current assumption is that length or placement have linear meaning. (Which they do not. Using your “descriptions” sometimes adding one letter can produce wholly different result, while other times adding 100x times more letter wont produce big difference. …)

  77. WRONG.

    Independent researchers did independent research on claimed genes. Myriad DID sent cease and disists.

    So its not court thinking, its not your attempt at ridicule, its reality.

    And law of nature fall under 101 so why bother with deciding if 102/103 have any meanning to them? To get patent you need to satisfy ALL requirements.

  78. Attacks from the Right and from the Left.

    The article you link to is a thinly veiled call for communism, a ‘safety net’ and a ‘middle class’ where all are protected, each providing from what they can and each receiving what they need.

    As Jane said in a 1970 speech at the Michigan State University:

      I would think that if you understood what communism was, you would hope, you would pray on your knees that someday we would someday become communists.

    Problem is that reality intrudes and that system simply does not work. The problem is that that system is antithetical to what this country was founded upon. The problem is that the patent system gets in the way of that system.

    Such is the attack from the Left.

    The attack from the Right is, albeit related, something different.

    The Right is whoring the Left, using it, and the Left either does not care, or does not recognize just whom they are sleeping with. That is one of the great ironies of what is going on.

  79. “Grow up”? What does that mean in today’s world Falstaff?

    Does it mean to learn to have integrity or to do anything to anyone to get what you want? If the former MM needs to grow up, if the ladder than anon does, indeed, need to grow up.

  80. You are speaking to the wrong person (again).

    I sense a Leopoldness about you.

    If you are aiming at me, and missing the duplicity of Malcolm and the emphasis that it is his nose being rubbed in his own CRP, then you need to ‘grow up’ and realize what it is that is going on here.

  81. In a sense, and in direct relation to the Jane Fonda references I have made,

    We have met the enemy and he is us

    (said in the best Pogo tones)

    Patent experts indeed.

  82. For an interesting article (and perspective on the term Luddite):

    link to smithsonianmag.com

    Attacking from a sense of social justice…

      Right from the start, concern that it would displace traditional hand-knitters had led Queen Elizabeth I to deny Lee a patent. Lee’s invention, with gradual improvements, helped the textile industry grow—and created many new jobs.

    and more:

      And their timing was right, coming at the start of what the Scottish essayist Thomas Carlyle later called “a mechanical age.”

      People of the time recognized all the astonishing new benefits the Industrial Revolution conferred, but they also worried…

    A belief system is indeed being challenged.

  83. And, as the amoral Lemleys think about this consider that someone has figured out how to make a machine that has figured out how to use J. Lourie’s calculator to drive J. Lourie’s car, and J. Lourie doesn’t think that should be patent eligible.

    From a broad perspective that is insanity.

  84. I guess. Or willful ignorance. But, I do know that arguments that the computer is doing nothing more than can be done on a piece of paper, and then saying that some computers can do more than that is offensively ignorant. The Church-Turing Thesis says otherwise.

    J. Lourie’s calculator can theoretically do all the computations that J. Lourie can do. I often feel that it is not so much the Luddites, but the medieval Catholic church that we face. The J.Lourie’s seem to be scared and offended. And, I was recently watching a talk show (sorry no good reference) with a bunch of atheists vs. religious people. And, central to the atheists’ arguments was neuroscience. In that, the argument is against the mind/body split. The argument goes that we have dissected the human brain and can see each piece of it go away through various head injuries and we are picking it apart and building it with hardware/software. In effect, you realize that the religious arguments are based on a central spirit mind and the atheists saying there is no such thing that it is a direct and understandable product of the brain and we can pick it apart piecemeal.

    I didn’t realize that this was the core of the argument against religion that is now being used. And, I can see why spiritual people would denigrate computers just as they deny evolution.

    I think that the anti information processing people are just like the creationist. It is at the core coming from the same challenge to their religious beliefs. (Although there are some like Lemley that are just end justify the means amoral actors.)

  85. NWPA,

    If your detractors are picking at nits and ignoring the content, they won’t pay attention even if you have perfect form.

    This forum is not meant for and does not require perfect form. That is not what a blog is for. If your content is clear, the message received, that is enough.

    Let’s see replies to the substantive points first, and then we can dicker about form. Too much laughing and not enough real engagement from folks like anon666.

    This is a blog, anon666.

    Wake up.

  86. And, I would add that the “logic” of Benson (and some arguments like a computer is like a cd player) become absurd when you understand the technology.

    Funny when our entire culture and society are built on information processing and literally 10′s of million of jobs are going to be replaced by hardware/software in the next 20 years.

    And yet, judges feel no responsibility to understand the basics of the technology that is going to replace 10′s of millions of information processing workers and is at the center of a furious and unrelenting attack by groups that shamelessly push arguments that are counter to the technology and the law.

  87. I am struck by how judges don’t seem to care about understanding the new technology, but rather their attitude that the patentee must somehow explain it to them and make it understandable in terms of old inventions.

    I think it is part of the zeitgeist of everyone becoming a slave to the overlords. The judges should take responsibility for understanding the technology.

    Not one of the judges on the Federal Circuit appear to understand the Church-Turing Thesis as evidenced by the oral arguments in Alice. And, yet the Church-Turing thesis is highly relevant to 101 and is –without question–the most important thesis to understand in information processing.

  88. I bet that all “principles” are changed very quickly if and when it becomes clear that Americans have to pay enormous fees to Chinese researchers!

    If you do not believe in the power of the Stick when it comes to the carrot and stick approach to patents, you may be right.

    But you are wrong.

    This country was built on the premise that adversity builds character (in a good way). This country was built on the premise that you rise above the challenge. NOT lie down as you would indicate. The Quid Pro Quo is for a limited time and then the Quo belongs to all.

      Stop the mewling bellyaching about the ‘have to pay enormous fees’ B$.

    If you want to use someone else’s property, you have to pay what they ask. Don’t like it? Invent your way around it. This is what works. This is what promotes. The socialist model you espouse does not work in this world, in this reality. All that model does is breed dependence and sloth. This country was built on independence and a willingness to work. That is reflected in a powerful – not a weak – patent system. The block of the patent ie meant to be formidable. Instead of this CRP ‘fair use’ notion (in other words, Infringer’s Rights), we need to go in the opposite direction. A race is not a race if ‘everyone wins’ or if poor Johny does not want to race so we need to give him a get out of tort card. That is not equity – that is a sappy socialistic ‘but in competition there are losers and it’s not nice to have losers’ mewling attitude. It’s a race to the lowest common denominator attitude.

    It’s also why the runaway notion of ‘abstract’ will decimate the patent system.

    “Chair” is abstract.
    “_____” [fill in the blank with ANY word] is abstract.

    Ignore the fact that scaling levels of abstraction is what engineering is all about and you eviscerate the patent system.

    RB has minced no words on this – he believes the patent system SHOULD BE eviscerated. Anyone who fails to see the commonality between the anti-software patent arguments and the anti-patent arguments are either purposefully blinding themselves, or are not intelligent enough to be speaking in the first place. You do not feed the wolf at the door a little bit because you think he is hungry and will go away once you feed him. You feed him and he will be back for more.

    Let’s not ignore history. Let’s not settle for a little ‘patent peace’ in our time. Let’s not be seduced by the mere prattling of ‘principles’ and the FUD of ‘but we are talking medicine here.’

  89. You sound like one of those people with no first hand experience with the patent system. The intellectual speculators.

    You have to play to understand the game.

  90. Typo: I (obviously) wanted to say that the patent system is not suited to protect the results of basic research.

  91. Perhaps that is an inherent limitation of PATENTLYO.COM, but all the interviewees are part of the “patents industry”, whereas the true importance is in health care. Is health care in dire straits due to the drecreased incentives of patent protection, or is the decision good news for health care, because it may make diagnostic methods and treatments cheaper?

    The fundamental issue is whether pervasive appropriability of any valuable knowledge is really appropriate. My professors taught me that “ideas are free”. But what if it is a valuable idea? And/or a costly idea? Anyway, the freedom of ideas is central to competition. “Protection” should be an exception in a free market economy. Even if it damages dcompetitors!

    Protecting the results of fundamental research has always been a problem, and the patent system is frankly to suited for that purpose. The statute requires that patent applicants describe their inventions in such a way that they can be carried out by a PHOSITA (35 USC §112), and that (indirectly) indicates that basically only acts are patentable, and mere facts are not patentable. Germans refer to a “Lehre zum Handeln”, i.e. a “teaching how to act”.

    The use of patents is limited by the fact that a patent essentially involves a “property rule”, wheras a “liability rule” is more appropriate (Calabresi & Melamed 1972). The typical propblem of property rules is that they give they owners excessive market power. In particular in the medical realm: if it is literally a matter of life and death, the price elasticity is low, allowing excessive prices.

    Scientists now believe that any form of cancer is treatable if the treatment is personalized, because every cancer is found to be different. Cancer still may not be curable, but proper treatment would allow to make it a chronic rather than a deathly disease.

    But what if the medical cancer is replaced by a “legal cancer” of patents, so that only the very rich can afford the required personalised treatment?

    Basically, basic science is a “public good”. This is not a political position, but an economic observation: goods are public if the cost of appropriation exceed the benefit. The corollary is that basic research ought to be financed by other means than patents.

    But don’t ask the patent incrowd: they all follow patent fanatics like Paulien Newman and Randal Raider. Incidentally, they believe that strong patent protection fosters the American economy. Apparently they are unaware that presently over half of US patents is in foreign hands.

    I bet that all “principles” are changed very quickly if and when it becomes clear that Americans have to pay enormous fees to Chinese researchers!

  92. MM: Lemley: under Prometheus v. Mayo they are probably obvious once we assume knowledge of the naturally-occurring gene sequence.”

    Lemley’s wrong about that. The Supreme Court in Prometheus said point blank that “§102 and 103 say nothing about treating laws of nature as if they were part of the prior art when applying those sections.” Does he think they are going to reverse themselves that quickly? I highly doubt it.

    Gee, MM, you have just made the same argument I and others on this board about Lemeley and his unconscionable attacks on the patent system.

  93. I don’t know which 100 yar old case 6 is referring to.

    But I can find in the archives Supreme Court cases they DID cite as precedent – you know, the exact same ones I said they would.

    LOL.

    Bow

  94. While that debate is important, let’s remember that there would be nothing to debate if the ACLU and PubPat hadn’t filed this suit in the first place.

    Not true. We wouldn’t have this particular Supreme Court case to debate but if we’re thanking people for giving us something to talk about, we should thank Myriad for its incredible greed in pursuing and asserting some truly awful claims.

    Likewise with Prometheus. Thank you, Prometheus! And to all those companies filing junk software claims: MWAH! Keep the hits coming!

    Bottom line: there’s no shortage of stuff to debate and, thankfully, no shortage of places to have the debate.

  95. he USSC performed the exact analysis it is required to under its own precedent that has been in place for over a hundred years

    Which is the 100 year old Supreme Court case where the Court admitted that a claimed composition was non-natural and man-made but nevertheless declared it ineligible for patenting because it “effectively pre-empted” the “product of nature” exception to eligible subject matter. It’s odd that the Court in Myriad didn’t cite that “precedent.” But maybe I missed it.

  96. Not just QQ, but banal QQ.

    Now share with us why the Supreme Court decided as they did. C’mon Malcolm, use that ‘great’ legal mind of yours (and that stellar grasp of English as a first language) and tell us (what I have told you for so long now).

    You can even ‘phone-a-friend’ like Francis, Robert, or Keeping It Real.

    LOL.

  97. Will the claim effectively preempt any judicial exceptions? If not then you’re in the clear. It really is that simple

    What does “effectively” mean in this context, 6?

    The Court states (rightly or wrongly) that Myriad’s claims do not read on any “natural” sequence. So where’s the pre-emption? There is no pre-emption in fact, according to the Court. So how does one determine whether there is “effective” pre-emption of a “natural product” with a composition claim? What factors do I take into account? List them all. Then we can decide whether your theory is “simple” or not.

    I can tell you what is simple: if Myriad’s composition claims are as broad as the Supreme Court seemed to believe that they were, then they were clearly anticipated. Even if they were construed as narrowly as reasonably possible, their “probe” claims would still read on the prior art and/or encompass mostly useless sequences. That’s a pretty simple analysis that’s applied every day to nucleic acid claims. You can ask any biotech practitioner about that.

    I can follow the reasoning that says, “You know what? If we let people claim new DNA molecules that have the same sequence as natural molecules, then there’s always the outside chance that someone who is trying to study the organism from which the sequence was derived is going to accidentally infringe the claim when, for instance, they are sequencing the organisms genes or busting the organisms cells open. And, yes, it seems highly unlikely that a claim could be enforced against such infringers without drawing its validity under the other statutes into question. But we’re still going to make this very simple rule about ineligibility of naturally occuring sequences and just take care of that concern once and for all.”

    That would work for me. But that’s not what we got from the Supreme Court in Myriad. We got some incomprehensible baloney about Funk Brothers, which is itself a completely c-cked up case.

  98. Here’s the silly world the Myriad decision put us in. Consider a long polynucleotide “found in nature” with blocks of nucleotide sequences in the following order:

    HIJKLM

    Let’s say that block “L” and block “M” are just one nucleotide long. The other blocks are 300 nucleotides long. Here’s how the Myriad “logic” (to the extent it’s been explained by the Court) plays out:

    HIJKL ineligible
    IJKLM ineligible
    HIJ ineligible
    KLM ineligible
    K ineligible
    H ineligible

    HIJKLMHIJKLM eligible (duplicated natural sequence)
    HH eligible (same as previous)
    HL eligible (one specific nucleotide added relative to the natural sequence)
    HIJKLMM eligible (same as previous)
    HIJKM eligible (one nucleotide deleted from the natural sequence)

    If you don’t see the weirdness, then perhaps you’ve never taken a molecular biology class or understood what was being taught. Consider the Court’s logic this way: synthesizing an incredibly useful and never-before-disclosed, specifically claimed 150 base long polynucleotide that by chance happens to resemble a sequence of polynucleotides found somewhere in the 300,000,000 nucleotide long genome of a Uruguayan sand toad is not an eligible “invention”. But making one conservative nucleotide change in the genome of that same fly is an eligible “invention”.

    That’s where the Supreme Court just took us.

  99. “Are those ineligible, even if the modifications are not “found in nature” and they have new, non-obvious utility (e.g., they are more stable in a cell)? ”

    Will the claim effectively preempt any judicial exceptions? If not then you’re in the clear. It really is that simple MM.

  100. 6: The USSC performed the exact analysis it is required to under its own precedent that has been in place for over a hundred years and out popped the correct result. Big whoop. Why anyone would be surprised at this, or find it notable (it being the decision as opposed to the tangential results of the decision) what so ever is bizarre.

  101. Lemley: under Prometheus v. Mayo they are probably obvious once we assume knowledge of the naturally-occurring gene sequence.”

    Lemley’s wrong about that. The Supreme Court in Prometheus said point blank that “§102 and 103 say nothing about treating laws of nature as if they were part of the prior art when applying those sections.” Does he think they are going to reverse themselves that quickly? I highly doubt it.

    Jeffrey Lefstin (UC Hastings) queries “is Mayo’s ‘inventive concept’ still required for patent-eligibility?

    Not sure what he’s referring to but there’s nothing in this case that contradicts the holding in Prometheus. Prometheus concerned a method claim consisting of a new thought (an abstraction) to which an old, conventional step was appended. Any and every claim with that structure remains ineligible.

    Dan Burk Dan Burk (UC Irvine) nails this further by noting that the “opinion seems to say that had the gDNA claims been drafted in terms of the chemical structure rather than genetic information, Judge Lourie’s view from the opinion below might prevail.

    I don’t think so. Had Myriad asserted different claims, the outcome of the controversy may well have been different. But the holding of the case in this regard seems fairly clear: it doesn’t matter how you describe your polynucleotide. If it’s identical to a polynucleotide that is the same length or if it’s identical to a polynucleotide that is part of a longer molecule found in nature, then your claim is ineligible. Cutting a piece of DNA out of longer “natural” piece is not an “invention”. Thus sayeth the Supreme Court.

    I also disagree with David Berry’s statement to the extent that the Myriad decision does not leave “a whole industry up in the air about the limits of patent protection.” The limits of protection were pretty clear before this decision. Now? I think there’s a lot that isn’t clear about those limits.

    Unmodified polynucleotides with sequences identical to “natural sequences” are ineligible, even if the natural sequences include additional nucleotides at either end of the claimed sequence. That much is clear. But what about claims to polynucleotides which include limitations regarding specific modifications to one or more nucleotides? Are those ineligible, even if the modifications are not “found in nature” and they have new, non-obvious utility (e.g., they are more stable in a cell)? What if the prior art describes a longer sequence that is not a “natural sequence” but a synthetic sequence? Is a short polynucleotide within that longer synthetic sequence ineligible, even if the claimed shorter sequence has new and non-obvious properties completely different from that of the larger sequence?

    I’ve said it before and I’ll say it again: the Prometheus decision made a lot of sense and it still does. It was a necessary, well-reasoned decision that prevents (if applied correctly) the entire system from going down into a cesspool where people and businesses are sued for thinking about new facts. This Myriad opinion, on the other hand, is just chock full of nonsense that seems thrown in for no other reason than to give the appearance of a Court that wanted to seem like it knew what it was talking about but did not (Scalia, at least, was forthright about that much).

  102. These decisions don’t really have anything to do with software/hardware patents other than the SCOTUS generally illustrating that they are generally inclined against patents. And, to some degree there belief that any type of relationship in nature (which there little brains may extend to anything mathematical) is a discovery.

    My prediction of the outcome of this case was spot on. And easy to understand in view of Prometheus. In fact, this was almost exactly the same holding as Prometheus. I was spot on regarding Monsanto too. Discovery accounts for nothing and what else you had to offer was already known. The holding is that simple. If you just realize that all of the arguments used for eligibility hinged on trying insert information age concepts–things like figuring out where the gene was.

    The real question with hardware/software is where is the Diehr line is going to drawn. How far towards the “logic” of Benson are they going to come. My guess is that the SCOTUS will take a pure software case, which will lead to bad law in that they won’t address the industrial applicability as they do in Europe. But, they will take a pure software case and it may be Alice if they file for cert.

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