Federal Circuit: Next Round of Myriad Patent Claims Are Also Invalid

by Dennis Crouch

In an important decision, the Federal Circuit has affirmed the invalidity of a number of additional genetic testing claims.  Based upon this decision, the USPTO may need to again reevaluate its subject matter eligibility procedures. 

In AMP v. Myriad (2013), the Supreme Court found that some of Myriad’s BRCA gene patent claims were valid – or at least that they did not violate the prohibition against patenting products of nature.  Following the decision, several companies – including Ambry – began marketing BRCA genetic testing, and Myriad sued.

The new lawsuit – captioned In re BRCA1- and BRCA2-Based Heredity Cancer Test Patent Litigation (Fed. Cir. 2014) – was brought by Myriad (the exclusive patent licensee) along with patent owners University of Utah and University of Pennsylvania. The plaintiffs here assert a set of patent claims that were not previously a part of the Supreme Court or lower court analysis.  Now asserted are U.S. Patent Nos. 5,753,441 (claims 7 & 8); 5,747,282 (claims 16 & 17); and 5,837,492 (claims 29 & 30).

The appeal here stems from the Utah District Court’s denial of Myriad’s motion for a preliminary injunction based upon its conclusion that the asserted claims are “likely drawn to ineligible subject matter.”  On appeal the Federal Circuit has now affirmed and taken a step further by holding on de novo review that none of the asserted claims are patent eligible.

DNA Primers: The asserted claims from the ‘282 and ‘492 patents are all directed to DNA primers used to bind the chromosomal section of the BRCA1 gene during PCR (the DNA-amplification process).  In reviewing these claims, the Federal Circuit found that the “primers before us are not distinguishable from the isolated DNA found patent-ineligible in Myriad and are not similar to the cDNA found to be patent-eligible.”

Now, although not particularly claimed, it appears that the primers are synthetically created through a lab process. In the appeal, the Federal Circuit rejected the importance of that distinction – holding that “it makes no difference that the identified gene sequences are synthetically replicated.”  Rather, the rule of law is that:

[N]either naturally occurring compositions of matter, nor synthetically created compositions that are structurally identical to the naturally occurring compositions, are patent eligible. . . .  A DNA structure with a function similar to that found in nature can only be patent eligible as a composition of matter if it has a unique structure, different from anything found in nature. . . . Primers do not have such a different structure and are patent ineligible.

The difference here from the cDNA patents that were allowed in Myriad is that(a) the cDNA is structurally different from naturally occurring DNA because the introns had been removed leaving exons only and (2) the cDNA is structurally different from naturally occurring exon-only mRNA because cDNA is a different substance. “To the extent that the exon-only sequence does not exist in nature, the lab technician “unquestionably creates something new when cDNA is made.”

Method of Screening: The asserted ‘441 patent claims are directed to a particular method of screening for BRCA1 mutation by comparing a patient’s gene sequence with a germline BRCA sequence. Both claims 7 and 8 depend from claim 1 that the Federal Circuit found invalid in its 2012 decision as “a patent-ineligible abstract idea of comparing BRCA sequences and determining the existence of alterations.”

Following the two-step analysis from Mayo and Alice, the Federal Circuit first determined that the asserted claims embody an abstract idea through the comparison steps.

Here, under our earlier decision, the comparisons described in the first paragraphs of claims 7 and 8 are directed to the patent-ineligible abstract idea of comparing BRCA sequences and determining the existence of alterations. The methods, directed to identification of alterations of the gene, require merely comparing the patient’s gene with the wild-type and identifying any differences that arise.

Going to the second part of the Alice/Mayo test, the court looked to the claims to find any “non-patent-ineligible elements” sufficient to “transform the nature of the claim into a patent-eligible application.”  Here, the claims require various physical transformations, including hybridizing the gene probe; amplification of the gene; and sequencing the gene.   However, according to the appellate panel, those transformations are insufficient – primarily because those steps “set forth well-understood, routine and conventional activity engaged in by scientists at the time of Myriad’s patent applications” and are the activities that a scientist would have relied upon to achieve the goals of the invention.

The second paragraphs of claims 7 and 8 do nothing more than spell out what practitioners already knew—how to compare gene sequences using routine, ordinary techniques. Nothing is added by identifying the techniques to be used in making the comparison because those comparison techniques were the well-understood, routine, and conventional techniques that a scientist would have thought of when instructed to compare two gene sequences.

With the claims invalid, Myriad has now lost the case.  In my view, an en banc reversal is highly unlikely.

About Dennis Crouch

Law Professor at the University of Missouri School of Law. Co-director of the Center for Intellectual Property and Entrepreneurship.

331 thoughts on “Federal Circuit: Next Round of Myriad Patent Claims Are Also Invalid

  1. Just to stirr this boiling pot with an analogy question, noting that now all human gene structures are now public info, like other known chemicals:

    Would whomever first discovered [not that many years ago] that lead affects child brain development be able to get get a valid patent with generic claims broadly covering any conventional chemical test for lead content in children’s blood?

    I think we know what the Supremes would say. [Please, no more comments by folks who think that posting their personal disagreement with decisions of the Supremes is of the slightest value or interest or carries any weight.]

    1. The answer is pretty clearly no, right?

      The best method of rejection will depend on the wording of the claim.

      As you stated, I could see 102, 103 or 101 applying.

      If the claims are old or merely an new obvious use of using the old test (using a lead test to discover the concentration of lead…) I could see using 103.

      But if the claims are worded in such a way so as to monopolize the (new) correlation between lead concentration and child brain development, I could see a 101. Depends on the claim.

      1. >>to monopolize the (new) correlation between lead concentration and child brain development

        You got love these words without any meaning. The judges just proclaim this with no evidence or without going through any type of analysis. Moreover, by its very nature one cannot be sure this is true.

        1. I agree with Arthur. If the claim is generally drawn to the correlation between lead in the blood and brain development problems, there is probably a 101 issue. I think the wording of the claim is crucial.

          Liekly ineligible under 101:

          A method comprising testing blood for lead, wherein the presence of quantity X of lead indicates an increased risk for brain development problems.

          Possibly eligible under 101:

          A method comprising acquiring a sample of blood from a patient, subjecting the sample of blood to [the chemical test for lead], and inserting the product of the chemical test into [analytical lab equipment].

          Note that the (possibly) eligible claim doesn’t say anything about the law of nature.

          1. If you say so. Lots of conflation of different issues. To my mind, figuring out that correlation should be patent eligible. Those correlations are great to know and they only get it for 20 years. And they share it and there are lots of ways to use it without infringing or paying.

            And exactly why do we want to not promote things like that again? Why is that? The only reason I can figure out is that Benson (the root of all evil) wanted to kill software.

          2. RH “generally drawn to the correlation between lead in the blood and brain development problems,”

            And what’s to prevent Judge Louries, Omalley, and Mayers from distilling the claims down to a gist/ concept of their own creation of say, a correlation between lead in the blood and brain development problems. Then simply say the claim is directed to the correlation between lead in the blood and brain development problems, and therefore ineligible subject matter. See how easy that it is? Just the way the anti lobby likes it.

            1. I share the concern that claims not be distilled down to their gist, but I also think that drafting is important. Two claims which were intended to cover the same thing might be construed very differently!

              In that second claim I proposed up at 18.2.1.1 (the possibly eligible one), there’s no law of nature recited (or other judicial exception) for a judge to distill the claim down to. So that kind of drafting might be more effective at avoiding this sort of claim interpretation.

              After thinking about what I wrote, I think I can distill the distinction between the claims down to a piece of advice:

              If the drafter thinks a law of nature would distinguish a claim over the prior art, there is probably a 101 issue. If the drafter does not think a claim needs a law of nature to distinguish over the prior art, then just leave out the unnecessary verbiage!

              1. If the drafter thinks a law of nature would distinguish a claim over the prior art, there is probably a 101 issue. If the drafter does not think a claim needs a law of nature to distinguish over the prior art, then just leave out the unnecessary verbiage!

                Good advice, with the additional reminder that “laws of nature” are just a subset of the larger universe of ineligible abstractions (like any other fact or “correlation”).

              2. might be construed differently

                And might not be.

                Maybe you missed the combination of the Court criticizing the “scriviners” (you yourself mentioned that the two claims were meant to protect the same thing)…

                As well as

                …the unlimited “Gist/Abstract” sword which ‘magically’ slices through the words of Congress and disbands with any silly notion that your claim IS to an item stipulated as meeting one of the statutory categories (take your pick as any claim sounding in any of the four categories is not spared the limitless “Gist/Abstract” double blade.

                With these combined, there is no ‘game’ you can come up with, and the only way whatever Manipulation you effect, the only guarantee you have that it will not be found invalid is if you have not yet appeared before the Court.

            2. 101, … distilling the claims down to a gist/ concept of their own creation of say, a correlation between lead in the blood and brain development problems. Then simply say the claim is directed to the correlation between lead in the blood and brain development problems, and therefore ineligible subject matter.

              101, according to the new guidelines from the PTO, the “directed to” step of the analysis searches the claim for nonstatutory subject matter such as product of nature, laws of nature or abstract ideas, and for the latter gives enough cases and examples for the average person figure out what that is.

              It is not in particular, at least according to the PTO, a search for an inventive concept or gist of the invention. Rather, it is a search of the claim for nonstatutory subject matter.

        2. NWPA: “The judges just proclaim this with no evidence or without going through any type of analysis.”

          This is exactly right. And the reason why you do not see any level of Integration Analysis in the majority of CAFC decisions, is that without the facts and the law, you can make up anything you want.

    2. I’ll rephrase the question – let me know if I misunderstood you.

      If a chemical test for lead in fluids (generally) was known, would a claim directed to this chemical test for lead in blood (specifically) be eligible under 101?

      1. If a chemical test for lead in fluids (generally) was known, would a claim directed to this chemical test for lead in blood (specifically) be eligible under 101?

        Absent any express teaching in the art that “blood is not a fluid” or that “the test cannot be used on blood” (and that doesn’t appear to be part of your hypo) the test would seem to fall in the category of “old technology applied to material that was contemplated by the technology”.

        In other words, it’s old. There’s no “invention”. It’s tanked under 101 or 102 and it doesn’t matter which.

        You can take it out of the medical field and (as usually happens) the result is more easily “digested.” Let’s say I invent a device for an amputee to hold a book up to his face. Now you come along and try to claim the identical device except that in your claim the device comprises The Flower Died Today (your excellent new book that nobody ever disclosed specifically before).

        Do you deserve a patent? Of course not. Is this a question of “obviousness”? Nope.

        Now, you can argue that chemistry is an “unpredictable art” and that argument will have weight in certain instances and change the analysis. But it doesn’t have weight in every instance. Your hypo suggests that the test for detecting lead in fluids generally was known. Given that blood is a fluid, where’s the “unpredictability” in that case and, more importantly, where does the solution to that “unpredictability” appear in your claim?

        1. Malcolm, you simply are not correct to say that it does not matter between 101 and 102, as it mattering is very much the point of the coversation.

          You have retreated to your old position of “WHATEVER

          Then to make matters worse, you drag out the canard of “book” something you know is not in the Useul Arts to begin with and cannot be used to make a point in law that must be made with the proper basis of being in the Useful Arts.

          And it’s not as if this type of duplicity has not been pointed out to you previously…

          You see PatentBob, this is precisely why the merry-go-round keeps on going around.

          1. “something you know is not in the Useul Arts to begin with and cannot be used to make a point in law that must be made with the proper basis of being in the Useful Arts” (sic)

            Given relatively recent supreme court decisions that are pushing software into non-statutory land, it doesnt sound like such a terrible analogy… Two non-statutory things.

            Of course I am talking to the guy who will, with a straight face, argue with you that a light switch in the on position is a different light switch than the same switch in the off position.

            Its been a hard day for you anon. Lots of people have been taking implicit and explicit swipes at you.

            Have you considered going on a little holiday break from posting here? Maybe you could spend that time focusing on improving your “craft” at i.p.w a tchdog.

            1. Dear Happy,

              Thank you for your concern but let me assure you that this has not been a hard day at all.

              People taking swipes at me (either implicitly, explicitly, or both) don’t bother me, as any one familiar with the law can readily see that the swipes badly miss.

              Further, you again seem to miss the fact that I debunked the “light switch” mischaracterization – several times now.

              And further still, your comment about the Supreme Court pushing software into non-statutory land is dreadful off. Surely you are not referencing the Alice decision, are you?

              Please feel free to explicate and confirm how little you understand what is going in that decision.

              And finally, “Have a nice day.”

          2. “book” … cannot be used to make a point in law

            Totally false and ridiculous on its face. But keep pounding the table anyway. You don’t look like a raving lunatic at all! You’re a very serious person.

            mattering is very much the point of the coversation.

            Indeed. That’s why subject matter eligibility is important and it’s why it can’t be disregarded as some sort of mere formality that can be addressed by mere wordsmithing. It does matter. It matters a lot.

            Get used to it because it’s not going away.

      2. RH Wrote: “If a chemical test for lead in fluids (generally) was known, would a claim directed to this chemical test for lead in blood (specifically) be eligible under 101? ”

        Yes, if you can show a new use of the old test in combination ( Integrated ) with all the other elements. The claim as an integrated whole needs to be doing more than the individual sum of each part or element.

    3. curmudgeon Would whomever first discovered [not that many years ago] that lead affects child brain development be able to get get a valid patent with generic claims broadly covering any conventional chemical test for lead content in children’s blood?

      Methods of detecting lead in blood have been around for a long time, including detecting lead in children’s blood, so the answer is surely no.

      A claim that would effectively amount to ownership of the discovery such that nobody could detect lead in children’s blood using the old techniques and then think about “what it means” and/or communicate that ineligible “meaning” to somebody presents severe subject matter eligibility issues.

      Now, if someone were to develop some new technology for detecting lead in children’s blood (e.g., some method that unexpectedly results in improved measurements of lead levels) we’d have a completely different story and, depending on the details of the claim, a completely different outcome.

  2. This comment from Hans is worth elevating given what we’re guaranteed to hear over and over again from defenders of Myriad’s claims and similar claims that attempt to fence off “important” parts of the human genome:

    [someone suggested] that you need FDA clearance in order to bring a genetic test to market? Um, not exactly. Myriad’s test is what is known in the industry as a “home brew” test. These are tests where everything is performed in-house. Although the FDA was theoretically given authority to regulate these tests in 1976 when the Food, Drug & Cosmetic Act was amended to specifically include in vitro diagnostics under the umbrella of a “medical device,” it has up to now chosen to not do so. Labs that offer home brews generally must follow a set of regulations known as the Clinical Laboratory Improvement Amendments which are implemented by the Center for Medicare and Medicaid Services. But that’s really it. There is a push to get the FDA to more aggressively regulate home brews, but naturally the labs that offer home brews resist this, and frankly for good reason (well, mostly). The bottom line is that there is absolutely no comparison in getting a drug to market versus getting a home brew test to market.

    The notion that tests such as those offered by Myriad and Prometheus would not exist absent patent protection is offensive. I actually know what I’m talking about here. And I also know a thing or two about patents and genetic tests, having literally been on the front lines in this area for years. The term “gnostic” means “pertaining to knowledge.” This definition gives one a clue as to why the screening claims at issue in today’s decision were invalidated, and why the claims at issue in Mayo v. Prometheus were invalidated. Fundamentally they were efforts at patenting information. Don’t let anyone fool you about that.

    If the FDA does decide to aggressively regulate home brews, then I would personally be in favor of a “marketing exclusivity” period for home brews just like occurs now for new drug products. That could provide the so-called necessary incentive for the development of home brew tests.

    I’ll also take this opportunity to remind everyone that the alleged value to “science” of the correlations and information disclosed in the typical data-crunching correlation patent is infinitesimally small given (1) the lack of peer review of patent disclosures; (2) the lack of any incentive for patent applicants to highlight the shortcomings of their own data (in fact, the opposite incentive exists); (3) the well-known effect that “legalese” has on the comprehensibility of patent disclosures to skilled artisans; and (4) with respect to claims, the lack of any uniform standard for determining when a given “new” correlation between X and Y is sufficiently robust to be of any practical value to anybody.

      1. Peer review is just like what Winston Churchill said about democracy: it’s the worst system of advancing human knowledge, except for all the others.

        I think, however, that MM is rather missing the point. Kary Mullis’s PCR patent is much less readable than his PCR papers. But we would not have the papers but for the patents. If Cetus had thought they could not have protected Mullis’ invention with a patent, they simply would not have disclosed the technique at all, and molecular biology would have advanced far more slowly.

        No doubt MM will respond that someone else would have discovered (and disclosed) PCR anyway. That may well be true, but we should not be indifferent to whether the disclosure is made now or three years hence. We are each only going to be around for a finite time, and we all have, therefore, a real interest in seeing that as much progress gets made in the time we are still around to enjoy it.

        1. Greg DeLassus: If Cetus had thought they could not have protected Mullis’ invention with a patent, they simply would not have disclosed the technique at all

          This is a joke, right? Please tell me this is a joke.

          No doubt MM will respond that someone else would have discovered (and disclosed) PCR anyway. That may well be true

          It is true.

          we should not be indifferent to whether the disclosure is made now or three years hence.

          Try to focus on the topic of the discussion, Greg. Nobody here is suggesting eliminating patents on innovations like PCR. In fact, I made the opposite contention already in this thread (comment 9.1).

          Please try to step it up, Greg.

          1. Your problem is that you want to judge patents based on the gist how does it make me feel standard MM.

            Shameful lack of discipline and understanding of how law should be applied.

        2. Thanks Greg. I used to type out long answers and explain all the particulars on this board, but I tired of the endless nonsense. On the next thread it will be as if MM never read or responded to any of your posts.

          Still your posts are great.

        3. Greg DeLassus:

          Peer review … is the worst system of advancing human knowledge, except for all the others.

          Deep stuff. Very impressive. You gotta love these patent attorneys who aren’t afraid to speak their … well, “minds” really isn’t the right word here.

          Meanwhile, the point made about the absence of peer review of patent disclosures stands unrebutted.

          1. [T]he point made about the absence of peer review of patent disclosures stands unrebutted.

            It stands unrebutted because it is a fair point. I agree with you that the level of science in patent writings is not always up to snuff, in large measure because of the lack of peer-review, as you point out.

            1. To my mind the problem is the lack of modernization of the prosecution process. The PTO must be the experts. The MMs of the world constantly want to try to switch the burden from examining at the PTO to submitting papers that indicate your worthiness of getting a patent.

              That makes no sense from any type of business or information processing point of view.

              1. I guess that my point was that I agree that an argument that patent application disclosures somehow advance the state of the are is indeed flawed. They are not written to be read by other scientists. They are written to be read by judges and (to a lesser extent) other lawyers.

                Moreover, as MM points out, any old fool can submit an application, and if one had to advance the state of the art by wading through all of that dross and picking the good stuff out from the wackadoodle, it would be slow going. Mercifully, no one does. The state of the art advances in practice by the communication of ideas in peer reviewed journals, and at conferences, and by competitors buying each others products and reverse engineering them.

                To say, however, that therefore patents are dispensable (or even deleterious) to scientific progress rather misses the point. How much of the disclosure in journals and conferences and sales would we have without the patent system? I gather that MM believes that the answer to this question is “about as much as we have today,” but this seems rather naive to me.

                Regrettably, while this is in principle an empirical question, I do not know how one actually does the experiment to answer it. Even if dispensed with patents for the next ten years and saw no change in the pace of innovation, you could not formally rule out the possibility that institutional inertia kept things going for a few years beyond the point at which the legal incentives that built that inertia left off. On the other hand, if you did away with patents and innovation tanked a year later, how would you know whether the observed effect was not some sort of supply shock or business cycle phenomenon?

                1. >How much of the disclosure in journals and conferences and sales would we have without the patent system?

                  That is the key point. I do know with computers that we started down the road of trade secrets and secrecy in the early 1980’s when I was a developer. Companies would make you sign draconian agreements not to compete with them and not to disclose anything you have done.

                  And chip makers were building chips with built-in mechanisms to hide how the code was written.

                  I could go on….it was bad. We are going back there now.

                2. Greg: To say, however, that therefore patents are dispensable (or even deleterious) to scientific progress rather misses the point.

                  Well they certainly are dispensible because “scientific progress” has been happening without patents for a long time. And I don’t recall anyone saying that patents are “deleterious to scientific progress” so whatever “point” is being missed there exists only in your mind, Greg.

                  How much of the disclosure in journals and conferences and sales would we have without the patent system? I gather that MM believes that the answer to this question is “about as much as we have today,” but this seems rather naive to me.

                  It’s you that’s being “naive” here.

                  Here’s a little thought experiment for you: take all the “disclosures in journals and conferences and sales” throught US history that were never patented and weigh them. Now subtract the weight of all the unique patent disclosures. Do you know what you are left with? About the same amount of disclosure.

                3. it’s you that’s being ‘naive’ here

                  Naive…? Like the patent system is not under attack naive?

                  Like that?

                4. Greg: if one had to advance the state of the art by wading through all of that dross and picking the good stuff out from the wackadoodle, it would be slow going. Mercifully, no one does.

                  You’ve clearly never worked in the medicinal chemistry arts. Medicinal chemists read as many, if not more, patents than scientific papers, because big pharma companies discourage (or prohibit) publications regarding small molecule drugs that are in development (i.e., undergoing clinical trails). While plenty of publications do reach the scientific journals, the most important compounds typically first show up hidden away in the midst of hundreds of compounds in published patent applications.

                5. “anon”: this is Malcolm being “pro-patent”…

                  Because a “true” “pro-patent” belieber sticks to “anon’s” awesome script.

                  Yes, we’ve heard it all before.

                  Go ahead. Tell everyone that “MM must be an Examiner” or that I must be a “paid shill.” Or my personal favorite: “MM is Dennis’ sockpuppet.”

                  Super effective stuff. Very serious.

                6. [Y]our emperical experiment is called the Bayh-Dole Act.

                  This cannot be correct. The Baye-Dole Act did not change the law in Europe, or Japan, etc. For the experiment to tell you anything, it would have to be worldwide, not US specific.

                7. Besides, as I noted before, it is impossible to tease out what is “effect” and what is “coincidence” when legislation is changed. What you really need are two parallel Earths, one of which abolishes patents worldwide and the other of which retains them, and then compare the state of technology in each at the end of some arbitrary time period (10 years?). Suffice it to say, this is a hard experiment to run.

                8. Actually Greg, since there is no “world patent” and all patent law is sovereign in nature, you cannot test this out on a worldwide basis.

                  Notwithstanding any operational difficulties the closest that you will come to a test is in fact the Bayh-Dole act.

                  Your “cannot be correct” is simply too presumptuous and ungrounded.

            2. What also stands unrebutted Greg is that the mere idea of “peer review” does not stop a cesspool of CRP generation and such “being blessed” from a biased and agenda driven body of people having deleterious impacts on real innovation.

              When meritocracy is replaced with “peer approval,” one cannot close one’s eyes to the effects of such.

              1. a biased and agenda driven body of people having deleterious impacts on real innovation

                Because “anon” is totally unbiased and has no agenda.

                Try to believe it, folks.

                When meritocracy is replaced with “peer approval,” one cannot close one’s eyes to the effects of such.

                Fancy sounding but utterly devoid of meaning. Thanks for the warning, “anon.” Yay “meritocracy”, whatever that is supposed to mean.

          2. Note too that there is no peer review of papers in law journals. So Lemley’s continued parade of judicial activism papers are only approved by Lemley.

        4. If someone (SC, congress) decided to do away with “software” patents (assuming one could even define what those are), I see many of my clients ceasing to publish probably 90% of what they do. The clients that are involved in areas where publishing is mandatory for academic purposes would still publish, although I think the amount of publication would go down. I’m just not sure by how much.

          These are all clients doing work with real computer systems (nothing “abstract” but likely would meet that “definition”), but the amount that published would decrease will depend on the specific areas the clients are in.

          By the way, I wonder why I come here. 90%+ of the comments below are sniping between people, long rambling discourses that could be boiled down to a few sentences, etc. The amount of actual civility and interesting debate is too small. It also seems that the people asking true questions and posing good comments get immediately attacked and bludgeoned to the point they don’t come back. (I’m probably getting the same treatment, but I don’t have time to revisit any comments I make, so I wouldn’t know.) All the “old timers” here, who seem to be taking the same positions every time, seem like some kind of obdurate, masochistic yet cliquish group. Why do this? Why argue with people who refuse to even attempt to see your opinion or evidence? Life is to short to behave like this. I expect this for an article about the Newtown massacre and gun control, but I had assumed professional people with multiple degrees were somehow different. Perhaps I’m mistaken.

          1. The simple answer PatentBob is that propaganda works.

            Letting the one side have their drive-by monologues without rebuttal would be (and has been) used as propaganda.

            What would make this a better and true dialogue would be the insistence of validly made counterpoints being integrated into the discussion.

            As has been my stance since I first started posting here.

          2. people asking true questions

            Question for you, “PatentBob”: it’s 2014. Mayo v. Prometheus was decided 9-0 over two years ago, after years of debate about the correct outcome (calling it a “debate” is being generous because the losing side had only one “argument” that never made sense).

            So … when do “questions” by alleged patent attorneys — patent attorneys who portray themselves as well-informed people — which betray a complete misunderstanding of the claims at issue, the eligibility issues presented, and the rationale underlying the decision become “true questions” for discussion, as opposed to attempts to derail the thread and/or tr0ll the blog and/or just introduce choking dust into the conversation?

            It’s like having a blog about voting rights legislation where some guy keeps “arguing” that the “real issue” is that slavery shouldn’t have been abolished, therefore anybody who doesn’t “acknowledge that” is “biased.”

            And we all know where the misinformation and confusion about subject matter eligibility is coming from. It’s right out there in the open. It’s *been* right out there in the open the whole time. It’s two blogs, primarily. And guess what? Invested patent attorneys behind both of them.

    1. That’s actually not accurate any longer, I believe. FDA calls these “home brew” tests Laboratory Diagnostic Tests (LDTs) and recently indicated that they intend to take a much greater oversight role in them There is a new draft guidance dating from October. The definition of LDT is actually quite narrow now, too. The relevant FDA page is here: link to fda.gov

      1. Trust me, it is accurate. There is no formal regulation by the FDA of home brew tests. And it is “laboratory developed test” not “laboratory diagnostic test.” What was published in October was a “framework” for regulatory oversight of home brews. This is light years from actual regulation. None of this is particularly relevant to the subject of the post. I only brought it up earlier to rebut the contention that home brews like Myriad’s BRACAnalysis test require FDA approval. That contention was made in support of a policy argument in favor of patent protection for these tests.

  3. So, are the common-law exceptions to section 101 a matter of constitutional law? I cannot find a case that says that they are, and I note that even the scholars who really want the exceptions to be a matter of Con Law never cite a case, which tells me that there is no such case. See, e.g., Robert Kreiss “Patent Protection for Computer Programs and Mathematical Algorithms: The Constitutional Limitations on Patentable Subject Matter” 29 NM L Rev 31, 58 (1999).

    So, what Con law jurisprudence do we have on the Patent & Copyright clause? Well, just two years ago in Golan v. Holder, 132 S. Ct. 873 (2012) the court considered whether it was constitutional for the Congress to extend copyright terms on works that had already lapsed into the public domain in the U.S. Congress had, pursuant to our Berne convention obligations, extended the copyright term on Dmitri Shostakovich’s works in the U.S. Lawrence Golan, a symphony conductor, sued the Justice Dept arguing that he had previously been able to perform Shostakovich in the U.S. without copyright clearance, and that he was harmed by the copyright revival because he would now need clearance to perform these works. He argued that the term extension was unconstitutional because the Constitution provides that patents and copyrights are authorized by Art. I, § 8, cl. 8 to “promote the progress of science and useful arts,” and that this term extension could not possibly promote Shostakovich to write new works, because he was dead.

    The Supreme Court held that the standard for review of IP clause cases is “rational basis.” Golan, 132 S. Ct. at 889. Patent and Copyright statutes can survive constitutional scrutiny under the IP clause so long as “Congress rationally could have concluded that [the statutory provision] ‘promotes the diffusion of knowledge’…”

    So, when considering whether the subject matter eligibility exceptions are a matter of Con law, the question to ask is “Could Congress rationally believe that extending patent protection to (e.g.) isolated nucleotides promotes the diffusion of knowledge?” Surely the answer to this question is yes. That is not to say that extending patent protection to isolated nucleotides does promote the diffusion of knowledge, but Congress could at least rationally believe as much.

    In other words, Congress could revise the statute to reverse Myriad, Mayo, and/or Alice. That is a separate question from whether Congress should, but clearly Congress can.

    1. Thanks Greg.

      I would take this opportunity to point out to my loyal circle of naysayers that the reference that Greg puts on the table for discussion has previously been put on the table by yours truly.

      Dialogue, gents, means actually engaging those counterpoints given to you, even as they wreck your little “opinion/policy” agendas.

    2. I think you’re over reading the holding in Golan. The Court explained that they would not review the law in question specifically because the copyright act had built in safeguards to protect ideas.

      *****************
      The idea/expression dichotomy is codified at 17 U.S.C. § 102(b): “In no case does copyright protec[t] … any idea, procedure, process, system, method of operation, concept, principle, or discovery … described, explained, illustrated, or embodied in [the copyrighted] work.” “Due to this [idea/expression] distinction, every idea, theory, and fact in a copyrighted work becomes instantly available for public exploitation at the moment of publication”; the author’s expression alone gains copyright protection. Eldred, 537 U.S., at 219, 123 S.Ct. 769; see Harper & Row, 471 U.S., at 556, 105 S.Ct. 2218 (“idea/expression dichotomy strike[s] a definitional balance between the First Amendment and the Copyright Act by permitting free communication of facts while still protecting an author’s expression” (internal quotation marks omitted)).

      Given the “speech-protective purposes and safeguards” embraced by copyright law, see id., at 219, 123 S.Ct. 769, we concluded in Eldred that there was no call for the heightened review petitioners sought in that case.[30] We reach the same conclusion here.
      **********

      I’m not saying you’re wrong necessarily, but I don’t think Golan supports your position as strongly as you’d like. Especially where the Court has specifically held that the claims at issue in the cases you cite amounted to the protection of an idea itself.

      1. Fair enough. Maybe, then, the abstract idea exception really is a part of Constitutional law. Consider me unconvinced, but I will agree to say “maybe.”

        That really says nothing about Mayo or Myriad, however. There is nothing about isolated DNA claims that implicates the first amendment. Similarly, there is nothing about the first amendment that protects administration of drugs or measurement of drug metabolites. In other words, maybe the Congress has no power to legislatively overturn Alice, but I stand by the contention that Golan proves that they can overturn Mayo and Myriad. It is an open question whether they will want to, but they surely can.

        1. I stand by the contention that Golan proves that they can overturn Mayo

          You can contend whatever you want but you are dead wrong and you haven’t provided a remotely convincing argument for your position.

          Nevertheless, enjoy the “freedom” to spout indefensible nonsense about Congress having the authority to override the First Amendment and grant patents on information. You are a very serious person with a law degree and everything and you make everyone blush with your deep insights.

          there is nothing about the first amendment that protects administration of drugs or measurement of drug metabolites.

          That’s nice. Nobody ever argued otherwise. Any other worthless strawmen you want to beat up on today?

          1. So the community highly regards this blog, and whenever anyone recommends to another potentially interested party it is also with the caveat “don’t read the comments.”

            It is comments like this that have made that necessary.

            “You are dead wrong and you haven’t provided a remotely convincing argument for your position.”

            Note that you had to qualify that with “remotely convincing,” because he at least put forth an argument. You have not, you simply accused him of being wrong because you didn’t like his argument. You didn’t respond to it. You didn’t attempt to counter it. You just called him wrong because you said so. And then you went on to personally attack him.

            The world isn’t out to get you. When someone anticipates a counter argument and responds to it, that doesn’t make it a strawman and it certainly doesn’t warrant a personal insult.

            It is comments like this that will insure that I and most readers will continue to visit only for the articles themselves.

        2. There is nothing about isolated DNA claims that implicates the first amendment.

          See my post at 16.5. DNA exists in nature. The structure of the isolated part exists in nature, it pre-existed the isolation of it, and actual newness is a constitutional requirement.

          The process for isolating it is eligible. The actual structure is not.

          1. I agree that novelty and non-obviousness are constitutional requirements, but as Judge Lourie noted, the bare novelty of isolated DNA comes from the chemical distinctions (free phosphates) between the isolated and in situ sequences. That Justice Thomas preferred to ignore the words of the statute (“composition of matter”) in favor of his own rough-and-ready understanding of the technology does not rise to a constitutional problem. Certainly Justice Thomas never referenced the IP clause in his opinion.

            1. Greg,

              If you adhere to the notion that non-obviousness is a constitutional requirement, are you saying that pre-1952 law (which lacked the explicit non-obviousness requirement) was unconstitutional?

              Really?

              (and please recognize your own citation to Rich and the history of Congress choosing non-obviousness instead of “invention”).

              1. Hotchkiss was predicated on the idea that non-obviousness is a background supposition to the patent law, because Congress is not statutorily empowered to set up a patent system that would allow patents on obvious developments. Judge Rich certainly did not disagree with that point. Indeed, he says as much in the very first paragraph of the cited article.

                The old “inventive step” common law was necessary in order for the pre-1952 act to be constitutional. That does not mean, however, that every jot and tittle of that pre-1952 jurisprudence was constitutionally necessary. Congress was free to prune out some of it (such as “flash of genius”), just as Congress is free to prune out some of the less savory recent developments (such as “inventive concept”).

                1. Congress is free to prune out some of the less savory recent developments (such as “inventive concept”).

                  Please tell everyone how Congress can eliminate consideration of the inventor’s contribution to the art from the patent system and leave us with (1) a working patent system and (2) a Constitutional patent system.

                  You really do sound like you were born yesterday, Greg. Either that or you’re just a dishonest hack desperate for attention.

                2. Somehow, I am reminded of Saki’s The Hen.

                  “It’s a most awkward situation,” said Mrs. Sangrail. “Do you suppose they won’t speak to one another?”

                  “On the contrary, the difficulty will be to get them to leave off. Their remarks on each other’s conduct and character have hitherto been governed by the fact that only four ounces of plain speaking can be sent through the post for a penny.”

                  It is as if there is a contest to see how much ad hominem invective can be packed into a given number of words.

                3. Two points Greg:

                  1) you fail to recognize the difference in the path chosen by Congress with non-obviousness INSTEAD OF inventiveness, and

                  2) you appear to be a relatively new poster to Malcolm’s tactics. Would it surprise you to learn (as I have recently learned) that Malcolm’s behavior has persisted in this very same manner for more than eight years and running?

                  Why do you think that Malcolm treads such a well worn path?

                4. [Y]ou fail to recognize the difference in the path chosen by Congress with non-obviousness INSTEAD OF inventiveness

                  Possibly. Could you unpack this a bit? I am not clear on how your response relates to my earlier point.

                  In any event, I am not saying that the pre-1952 acts were unconstitutional, but only because Hotchkiss et al. redeemed them.

                  Meanwhile, as noted above, Judge Rich himself says in “Laying the Ghost…” that “it is §103 which brings about statutory compliance with the Constitutional limitation on the power of Congress to create a patent system” (emphasis in original). In other words, I am not saying anything particularly original or controversial.

                5. Greg,

                  Are you saying that your point is not to the fact that there are differences in the law as written by Congress pre- and post-1952, but that both versions of the law served to make sure the system set up by Congress met with the constitutional strictures?

                  In that case, the emphasis of my post – the fact that Congress did act to make the change in 1952 is not germane to the particular point you are stressing (yet remains crucial for understanding what today’s law means and why the conflation of the Court in avoiding what Congress did with its action of distilling both 101 and 103 from the same pre-1952 paragraph means for both 101 and 103 jurisprudence).

                6. My apologies. In re-reading my 4:02 post, I see that I could have been more clear.

                  It appears that we are in agreement, dear anon. I am saying that both the 1836 Act and the 1952 Act were constitutional. The 1836 Act would not have been constitutional if the Supreme Court had not read a requirement for “inventive step” into it, but that is neither here nor there.

                  As Judge Rich was careful to explain, “obviousness” is not the same thing as “invention,” but neither are the two concepts totally unrelated. Congress was free to modify the common-law doctrine of “invention,” but it was not free to do away with the core insight of the old “inventive step” jurisprudence—i.e., that patents may not be granted for improvements that are merely obvious developments on the state of the immediately previous art.

                  Meanwhile, I agree that the Supreme Court seems lately determined to revive the old “inventive step” standard, and to pack the 101 and 103 analyses back together. I agree that this is wrong, but regrettably it will likely require a new statutory revision to make the SCotUS give up this trend.

    3. In other words, Congress could revise the statute to reverse Myriad, Mayo, and/or Alice.

      Possibly something could be written to reverse Myriad or Alice.

      But not Mayo. That’s never going to happen.

      That is a separate question from whether Congress should, but clearly Congress can.

      Clearly you don’t understand what you’re talking about, Greg, and we know that because you’ve indicated as much in very plain terms. It’s like you were born yesterday … when it comes to certain issues anyway (go figure).

      Here’s the education received below and you have not acknowledged:

      1. A method comprising the steps (1) drinking a cup of coffee and (2) thinking about whether a set of primers is identical to another set of primers.

      Drinking coffee isn’t “abstract”. But the claim prevents me (and other coffee drinkers) from thinking about an abstract relationship between two primers. In other words, the claim protects the abstraction.

      That’s Mayo, in a nutshell.

      It’s really quite straightforward, Greg. Start with the fundamentals and learn to apply them and never forget them. It’s what the courts are doing and it’s what the PTO is doing. You need to learn to do it, too, if you want to taken seriously by anyone outside of the tiny circle of hacks who never saw a patent they couldn’t defend.

      1. Your nutshell still revolves down to the b@nal “can’t patent unrelated aggregations” – with or without ANY elements of a claim sounding in ‘mental steps.’

        Nothing more.

        Let’s talk about learning lessons on basics, as you ever clench right your eyes to that basic lesson.

    4. “Could Congress rationally believe that extending patent protection to (e.g.) isolated nucleotides promotes the diffusion of knowledge?”

      Actually greg the question is “Could Congress rationally believe that extending patent protection to abstract ideas, natural phenom, and laws of nature promotes the diffusion of knowledge?” Since those are the three things currently excluded.

      1. I think that it makes more sense to take them separately. As noted above, it is possible that any one of these common-law exceptions is constitutional requirement without all three being constitutional requirements.

        1. Yes, Greg, let’s talk about stuff that has zero chance of happening rather than the fundamental errors you’ve made about subject matter eligibility that, for whatever reason, you appear loathe to correct or acknowledge.

          Have we seen this diversionary tactic before?

          Here it is again, Greg:

          1. A method comprising the steps (1) drinking a cup of coffee and (2) thinking about whether a set of primers is identical to another set of primers.

          Drinking coffee isn’t “abstract”. But the claim prevents me (and other coffee drinkers) from thinking about an abstract relationship between two primers. In other words, the claim protects the abstraction. Therefore the claim is ineligible for patenting.

          That’s Mayo, in a nutshell.

          You understand this, right, Greg? You get the fundamentals, right? I mean, you’re a smart, articulate guy. You aren’t going to pretend that you were never taught this basic lesson. Are you?

          I sure hope not because it’s going to keep coming back, over and over and over again. You wouldn’t want to mislead your clients, would you?

        2. “As noted above, it is possible that any one of these common-law exceptions is constitutional requirement without all three being constitutional requirements.”

          Hilarious but oooooook.

    5. The Supreme Court held that the standard for review of IP clause cases is “rational basis.”

      Well certainly you know this cannot be true. No clause or whatever gets inherent rational review. The only question is whether the issue raised impinges on something that triggers a level of heightened scrutiny, and in some cases there is inherent heightened scrutiny. The court simply refused to make a per se rule of heightened scrutiny with respect to an already-lapsed grant.

      For example, if Congress wrote a statute saying that the government would pass judgment on the ideas in a work, and give protection to ideas it liked and refuse protection to ideas it disagreed with, do you think the court would say that when Congress acts within its IP power rational review is applied? That’s viewpoint discrimination which always gets strict scrutiny.

      So you have to take it in the context of what was argued (what is the standard applied to extension of the time period). That is subject to rational basis review.

      Graham, on the other hand, points out that Congress is given wide latitude to chart the best course. The court said:

      Within the limits of the constitutional grant, the Congress may, of course, implement the stated purpose of the Framers by selecting the policy which in its judgment best effectuates the constitutional aim.

      But that is within the context of saying:

      The clause is both a grant of power and a limitation. This qualified authority, unlike the power often exercised in the sixteenth and seventeenth centuries by the English Crown, is limited to the promotion of advances in the “useful arts.”

      There is a question as to whether there is a technological nature test. Further:

      The Congress in the exercise of the patent power may not overreach the restraints imposed by the stated constitutional purpose. Nor may it enlarge the patent monopoly without regard to the innovation, advancement or social benefit gained thereby.

      The utility requirement is a constitutional requirement. Further:

      Moreover, Congress may not authorize the issuance of patents whose effects are to remove existent knowledge from the public domain, or to restrict free access to materials already available.

      The novelty requirement is a constitutional requirement.

      In other words, Congress could not repeal Sections 102 and 103, replace them with nothing, and have a constitutional scheme.

      But the key phrase is: The Congress in the exercise of the patent power may not overreach the restraints imposed by the stated constitutional purpose.

      The stated Constitutional purpose is to advance the useful arts.

      From there, you just have to look at the words of every judicial exception case, where they say that the granting of a patent on (the exception du jour) has been determined to impede rather than promote the sciences – the court has already determined the power lies outside of Congress’ general grant.

      You see, before Congress instituted a more detailed act, the general rule was that anything could be patented save that which the Constitution prohibited. The court has already construed the constitution on this issue. The fact that Congress came in, re-said what the court was already working under (that generally everything is patentable) and codified additional limitations, doesn’t change the fact that the court has already construed what the constitution prohibits, and some things fall outside of Congress’ power.

      1. Random,

        With all due respect, you just pulled that out of your arse.

        Your understanding of Constitutional and statutory construction is abysmal.

      2. For example, if Congress wrote a statute saying that the government would pass judgment on the ideas in a work, and give protection to ideas it liked and refuse protection to ideas it disagreed with, do you think the court would say that when Congress acts within its IP power rational review is applied? That’s viewpoint discrimination which always gets strict scrutiny.

        Sure, as Arthur pointed out above, I have overstated Golan. Part of the reason that the Court applied rational basis scrutiny was that they found a statutory reason to avoid the First Amendment issues. Surely, as you said, if the Government were to judge the merits of the ideas when assessing patentability (or copyright eligibility), this would run up against the First Amendment and trigger strict scrutiny. So I agree, my earlier formulation “rational basis is all you need” was a sloppy way of putting it.

        What I meant (and I think that this is clear enough) is that rational basis is all you need to amend section 101 to include software and isolated biomolecules explicitly. Only I have to back off even from this claim. I just do not know about software (it is not really my bailiwick). I am not saying that I think that Congress cannot explicitly include software as an eligible category in section 101, but I have to confess that I do not know enough to speak to the subject.

        I am standing my ground regarding isolated biomolecules, however. At least in the case where the isolation imparts a new functionality (aspirin in tablets vs acetylsalicylic acid in tree bark), Congress can rationally believe that the progress of science and useful art would be promoted by allowing the patent. As for novelty and nonobviousness, a chemical that was hitherto unknown (even if pre-existing) is necessarily both novel and nonobvious. Besides, the novelty can be said to reside in the purity.

        Congress would not be acting beyond its constitutional powers to overturn Myriad by legislation.

    6. Since the filter ate my prior response, I’ll try again.

      Since the Statute of Monopolies sought to limit patents to “inventions,” I do not believe that Congress can constitutionally grant patents on things that are not in fact inventions. Clearly, products of nature are not inventions.

      1. Ned,

        I think that you need more than just a foreign sovereign’s law to make the case about an issue for US constitutional coverage (especially English law, which for example can be seen to serve to reinforce the bias you have against Process as a full and equal statutory category).

        Can you provide something more to close the gap?

        1. Yeah, anon, the Boston Tea Party was a revolt against the trade patent given to the British East Indies Company. We revolted against trade monopolies just as did the British.

          There is little doubt that both we and the British fully intended to limit patents to new inventions, not preexisting trade or products.

          1. …and yet Ned, you seem to continue to struggle with the simple understanding from Golan that the very same Constitutional clause was seen by the Supreme Court to NOT impede the removal of an item and re-instating protection under that clause. The case discusses and admits to the fact that certain works would stop being freely available / very much like the “preexisting trade or products” you speak of hear.

            Further, the revolt you speak of, while such does provide historic context, does not permit the type of use of foreign sovereign law that you attempt to perform (as I have mentioned in the past, your apparent desire to make the statutory category of Process into a sub-category of the hard goods categories is a similar flaw).

  4. Anonymous at 5.1.1.1.1.1.1 thinks himself clever with the quip of “I’d love to see anon argue in Federal Court. It would be quite amusing…

    Two words: bite me.

    A few more words: get up to speed with the legal concepts under discussion that back up my position.

    My pal Hal shared something this morning that aligns with my well-developed legal views:

    “The PTO Guidance… is a manifestation of an anti-patent Administration at work, according to a former high ranking Patent Office official:

    The former high ranking official states that “[o]riginally, legal guidelines were the province of the Solicitor’s Office and were used primarily to make sure the examiners did not extend the cases inappropriately… They were designed to curb examiners’ practices of rejecting cases that should not be rejected. Somewhere along the line, the Solicitor’s Office lost control of the guidelines. That may explain the problems with recent guidelines, at least in part. Of course, ultimately it’s the head of the PTO who governs the Office’s policies. [Former head of the Patent Office] Bruce Lehman believed strongly in the way we applied the law in the mid- to late 90s. Since he left, there’s no one who believes in tempering the Supreme[ Court] (within the law, of course).”…

    “I’ve encouraged the Office to push back on the nonsense coming from the Supreme[ Court]. They can do that just as easily as they can do what they are doing – extending the law in a way the hurts the patent system.”

    – – –

    Let’s try to realize that attorneys are called to do more than just slavishly accept edicts from the Supreme Court without using that which we (should) have been trained to use: critical thinking.

    The let’s remember that our oaths are not to the Supreme Court, but to that item that (still) is above the Supreme Court: the Constitution.

    1. Lots of people have lots of different views on what the constitution means. Its nice that you have yours.

      Like these tax protester folks: link to en.wikipedia.org

      You should take a look at the funny stuff they file in tax court. They certainly DO NOT “slavishly accept edicts from the Supreme Court.”

      You sound a lot like them.

      1. Who cares…?

        You should.

        If you did, you would realize that my views are grounded in the law, and you would not be so inclined to attempt to kick up dust with the tax crowd diversion.

        Perhaps instead of distracting things, you may want to instead discuss the legal issues here. That is, if you are up to the task…

        1. The tax protesters also feel that their “views are grounded in the law.”

          Between anon’s version of the constitution and the SC’s version of the constitution, I’ll choose the SC. So will most attorneys and agents.

          I will also pay my taxes.

          It really is a shame that the PTO doesn’t have penalties like the IRS for frivolous arguments to flush out people like you (See: link to irs.gov).

          The public perception of this profession continues to be harmed by not stamping out this nonsense.

          1. …and as far as “frivolous,” you should then easily dispense with them from a legal position instead of the mere name-calling you are currently engaged in.

            Gee, it seems that such is too difficult for you.

          2. The public perception of this profession continues to be harmed by not stamping out this nonsense.

            Indeed. And it’s part of the reason that their losses have come so swiftly. The public can see how “anon” and his “More Patents All the Time Easier to Enforce” crew think about these issues and how they think about the “jihadists” and “communists” and “anti-Americans” who disagree with them. And the public reacts accordingly.

            But these people can’t help themselves. For starters, they aren’t that intelligent. They don’t know when to shut their silly traps and they’ll never be able to figure that out.

            [shrugs]

            1. or maybe your posts, sounding as they do in “just sh utup” are just not compelling?

              I suggest that you stop [shrugging] and start making arguments based in law and fact instead of opinion and “policy.”

              1. start making arguments based in law and fact

                You’ve been spouting this self-serving horsehockey for years.

                Meanwhile I’ve lost count of the losses that have been handed to you.

                And those losses are going to keep coming.

                With the exception of a couple tiny blips, the past few years has been like one long party of victories for me. Granted, it was a fairly predictable (and predicated) party and, granted, it’s just getting started.

                But maybe you should think about finding a new script or, maybe, just keeping your f00l trap closed for a change. You really aren’t accomplishing anything except providing more evidence to everyone that a significant faction of the pro-software patent community is more than a little bit kookoo.

            2. MM,

              I have to wonder what public policy goal is being fulfilled by allowing frivolous argument before the PTO.

              The reason people do it before the IRS/Tax Court is the same reason applicants do it before the PTO… To increase administrative burden in order to bump up the probability of receiving *something* that they would not otherwise be entitled to. How could this possibly be good?

              The PTO doesn’t even need congress to step in… Just use OED and pull a small random sample of cases and review the responses. Hand out some suspensions… And the nonsense would come to an abrupt end.

              But the PTO doesn’t do that. There must be a public policy goal being fulfilled allowing this to occur… So what is it?

              1. There must be a public policy goal being fulfilled allowing this to occur

                I don’t think so at all.

                The PTO is run like a private club with dues-paying members. Every effort is made at every turn to satisfy the needs of those members so that the dues keep coming in.

                And the members of that club are well-versed in using whatever leverage they have to pronounce themselves The Most Important People Ever at every opportunity. This is why banal irrefutable statements like “you can’t protect information with a patent” is treated like some sort of radical proposition by these folks but goofy unsupportable nonsense like “nobody will innovate software if we don’t get software patents” must be taken very, very seriously.

                It’s a big joke. And these guys like it that way. The more broken the system is, the more overwhelmed the system is, the more harassed and malleable the system is, the easier it is for them to exploit it for their own selfish purposes.

                It’s always been fairly transparent that this is the way it works but now that people can talk about it and publicize it on the Internet, it’s more transparent than ever. This makes them super crazy which is why we see the c l 0 wns here accusing critics of being “jihadists” and “communists.”

    2. My pal Hal

      I’d love to hear the great Hal Wegner acknowledge that you’re his “pal.”

      shared something this morning

      Looks like “Hal” shared some whining complaint.

      legal guidelines were the province of the Solicitor’s Office and were used primarily to make sure the examiners did not extend the cases inappropriately… They were designed to curb examiners’ practices of rejecting cases that should not be rejected.

      What about all the cases that should have been rejected but weren’t because the Examiners were never informed of the fundamentals the keep the patent system from turning into a chum party for sharks? Are we supposed to believe that invalid claims were never granted in the “early 80s and late 90s”? Call me crazy but it seems like Examiners can use all the guidelines for rejecting claims that they can get. I mean, it’s not like there’s a shortage of patents these days. On the contrary, the system is exploding:

      link to techdirt.com

      Here’s a really simple, basic question for the great Hal Wegner and his fellow operators at Foley: is information eligible for patenting? If the answer is “no”, then explain in no more than three sentences how Examiners are to reject and identify claims to “new” methods/compositions that limit the information that practitioners of the prior art are allowed to acquire or use?

      Basic stuff. Has Hal ever once addressed the issue? If not, why take him seriously about anything? He just comes off like an entitled whiner who thinks that the greatest number of patents in history is somehow not enough.

      1. > is information eligible for patenting? If the answer is “no”, then explain in no more than three sentences how Examiners are to reject and identify claims to “new” methods/compositions that limit the information that practitioners of the prior art are allowed to acquire or use?

        MM, tell us how you tell the difference between posts by anon and looking at the ridges on your palm?

        1. Deep compelling arguments from the “most articulate” defenders of the lowest forms of innovation.

          Try to believe it, folks.

          You’d think at some point some of the smarter people on their own team would tell them to STeffU for a change. But no.

          Go figure.

          1. More empty insults from the self-appointed determinator of what is “lowest” – the guy who envisions himself as protecting the children running through the field of grain.

            Try an argument with law and fact, Malcolm.

          2. So, no substantive response. In other words, again, we have you not getting that the information processing is doing what your brain does and replacing people based on their brains not bodies.

            Hard for to wrap this around your brain.

          3. >lowest forms of innovation.

            That’s funny. So, the department of labor estimates that up to 40,000,000 Americans that are information workers will be replaced over the next 20 years by these “lowest form of innovation” or information processing machines.

            Gee, they sound so much like the “lowest forms of innovation” doing what people do for a living.

            I have to give it to you MM, not many people could make so many statements boldly that are just so ridiculous as to warrant censor.

            1. Maybe someday NWPA will learn the difference between a patent claim and the underlying technology (to the extent there is any underlying technology).

              But I doubt it. After all, he’s inability to tell the difference has served him so well these past several years.

              LOL

  5. All of the reasoning in this discussion regarding why this decision was right is wrong. The claim might well be valid if it claimed the use specific pairs of specific primers with specified lengths and sequences using specifically claimed PCR conditions that created a PCR product comprising a fragment of the gene that comprises a locus of mutation, or specific primers and conditions that would amplify the mutant allele, but not the wild-type. It is that the claims read on ANY pair of primers that hybridize to the gene, used in any assay format under any conditions that violates the principles of Morse, Mayo and Myriad.

    1. >It is that the claims read on ANY pair of primers that hybridize to the gene, used in any assay format under any conditions that violates the principles of Morse, Mayo and Myriad.

      Here is that ridiculous language from Benson. The inventor is entitled to what they have enabled. They should get all type of primers that they enabled. If there are other primers before their invention then it is a 102 issue. If a non-obvious variant of their primers is invented then it is scope of enablement issue. See LizardTech.

      That is the only rational way to work with modern inventions. What you just spouted is nonsensical stuff made up by judicial activist to burn the system down.

      1. The problem with this “all” business is that there is no way to test this. This becomes a subjective flash of genius determination by a judge. It is not a good test nor does it reflect the fact that the inventor is entitled to the scope of enablement of their claims. And note that all your arguments you may trot out all go to other parts of the 1952 Act such as 112 (the WD is a very tight constraint now), 102, and 103.

        Please this is really just psychotic nonsense.

        1. And try to really go through the intellectual exercise of asking yourself what premises do I need to assert that this claim “the claims read on ANY pair of primers that hybridize to the gene.” And why aren’t they entitled to this? Because of what? What if they disclose ALL pair of primers that hybridize to the gene in the spec? How do you know there are other pairs? If there are other pairs are they merely obvious variants? If they aren’t obvious variants, then that is the one case where the claims can be invalidated based on the new invention.

    2. Safsky: The claim might well be valid if it claimed the use specific pairs of specific primers with specified lengths and sequences using specifically claimed PCR conditions that created a PCR product comprising a fragment of the gene that comprises a locus of mutation, or specific primers and conditions that would amplify the mutant allele, but not the wild-type.

      Depending on the specifics, that sort of claim would likely represent an improvement over existing technology that is based on patent-eligible innovations.

      Note that those specifics are exactly what’s missing from the claims in another “important” biotech subject matter eligibility which presents issues similar to those addressed by the CAFC in this case: Sequenom v. Ariosa.

      See discussion here: link to patentlyo.com

      1. It will be interesting to see whether the CAFC decides Ariosa, or whether it is dismissed as moot. I gather that relevant claims have already been ruled invalid under 102/103 in an IPR, and that the parties have agreed on a settlement regarding the remaining claims.

    3. I think that you are correct that some of the crowing below rather overstates what is actually said in Judge Dyk’s opinion. There is at least some reason in the opinion (pgs 19 & 20 of the slip op.) to think that narrower method claims would have survived. I agree with NWPA that there is no reason why the breadth should have made a difference in this section 101 analysis, but it certain does seem that it did make a difference, and that narrower claims might yet have survived.

      1. I agree with NWPA that there is no reason why the breadth should have made a difference in this section 101 analysis

        It depends on the limitations in question. You’ll note that Safsky is identifying physical/structural limitations beyond the chemical structure of the primers themselves.

        1. Are you attempting to make an issue and elevate one option of claim writing style as to being the only legally allowed form, ignoring the Prof. Crouch coined phrase of a Vast Middle Ground, yet again?

          You really should take notice of the 1952 Act and the Frederico commentaries on how that act opened up wide the ability to use functional language in describing inventions in accordance with the words of Congress.

          When your advocacy misrepresents material points of law – and this is (politely, yet firmly) pointed out to you, you should be able to recognize your self-sworn duties not to engage in conduct involving misrepresentation (you know, portraying an optional path as the only legal path).

          1. you should be able to recognize your self-sworn duties

            Please get the medical attention you need.

            I told you this year was going to be a difficult one for you.

            Here’s a news flash: next year’s going to be worse. A new prescription would do you a world of good.

          1. Prometheus v Mayo:
            “to transform an unpatentable law of nature into a patent eligible application of such a law, a patent must do more than simply state the law of nature while adding the words “apply it.” See, e.g., Gottschalk v. Benson, 409 U. S. 63, 71–72. It must limit its reach to a particular, inventive application of the law.”

            1. Sure, obviously claim breadth must have something to do with section 101. My post 14.4 was careful to specify “this section 101 analysis,” because I do not understand how the specific breadth on which Judge Dyk remarked (the fact that the process could be used for other purposes than simply to diagnose cancer, or that the method could involve other probes and primers than those disclosed in the application) had much of anything to do with section 101. To my mind, that part of the opinion read more like it should have been a section 112 invalidation.

  6. Random Guy says “Congress lacks the ability to grant a patent if it does not promote the sciences” and no one has questioned this. I do. Ignoring the fact that congress does not grant patents, it is the incentive provided by the securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries that promotes progress. There is no constitutional requirement that the subject matter of each patent or copyright promotes anything at all, and the idea that patents or copyrights could be invalidated for failure to promote progress is bizarre – or is there a jurisprudence of failure to promote progress that has escaped my notice?

    1. Safsky: There is no constitutional requirement that the subject matter of each patent or copyright promotes anything at all,

      The utility requirement is in the statute for a reason.

      1. Utility is a low bar for a reason.

        Further, as I have explained in detail previously, innovation cannot be thought of in merely the linear sense of improvement stacked upon improvement as that is not how innovation works in reality.

        One sense of the word “promote” that needs to be kept in mind is aligned with the notion of an advertising promotion: simply, “get the word out.” This is why publication is the sine qua non of Quid Pro Quo.

        I have also shared an analogy that might help: patents are NOT so much about paving a road to some desired future, but rather are more of a paving a parking lot so that all avenues to the future – no matter the quirky twists and turns that just are not foreseeable – will be enabled with paving underfoot.

        Yes, the vision of a big ‘ol parking lot is a lot less “enticing” than a picture of a logical network of orthogonal streets, but real innovation tends to be far more messier than the pretty “street” picture.

          1. You’ve conveniently overlooked the rest of my post – you say “keep up” while I am moving forward and you are going in reverse.

            Yes, the gap is widening, but you need to pay attention to the directions each of us is going.

            That is, if you care to stop your usual AAOTWMD, insults and CRP posts (rights years and running indicates that you will not and quite possibly cannot)

            1. the gap is widening, but you need to pay attention to the directions each of us is going./i>

              Anybody know what “anon” is blathering about now?

              Better question: who cares?

              ROTFLMAO

    2. Safsky, since Congress cannot grant patents, would it be more appropriate to point out that Random may have simply misspoke?

      I think Random’s point was that “Congress” could not pass statutes authorizing the grant of patents that did not promote progress in the useful arts. Do you think they can?

      1. Thank you for your reply. Should Myriad now have to pay for Ambry’s attorney fees through the appeal process? Wouldn’t it be fiscally irresponsible for Myriad to move forward with this case, even if Ambry doesn’t request a Summary Judgment? Clearly they must have put their best foot forward to try and force the injunction.

  7. Good news from the CAFC this week. The I/P Engine v. AOL, Google, Target, etc. case was rejected for rehearing en banc.

    That’s the long running online shopping cart patent extortion scam. Now all that is over. The Mayer and Wallach ruling will stand.

  8. In a somewhat related case earlier this week the Federal Circuit tanked a different company’s “diagnostic” patent claim covering the use of a combined and specified set of DNA amplification primers in a “multiplex” amplification reaction.

    In that case (Promega v. LifeTech) the issue was enablement. The enablement problem arose because the claim was open-ended (reciting a set of primers without restrictions on other primers that might also be included), but in order to get the claim allowed the applicant

    repeatedly argued to the United States Patent and Trademark Office (Patent Office) during prosecution that its then-pending claims were patentable because the prior art did not disclose “methods for selecting, coamplifying, and evaluating the specific sets of short tandem repeat loci” recited in the claims. According to Promega, this lack of disclosure was critical, as the state of the art in this technology area “d[id] not disclose or suggest that any arbitrary combination of loci can be co-amplified without undue experimentation.”…More specifically, Promega represented to the Patent Office that the addition of even a single locus to an existing loci combination rendered that new loci combination patentable [even where sequencing the individual locus was obvious].

    This same basic argument was apparently made over 70 times in the course of procuring the patents.

    And then guess what Promega argued in its infringement contentions when the competitor’s product used additional primers?

    Live by the sword, die by the sword. No sanctions … yet (although it’s difficult to see why they shouldn’t be applied here).

    A similar axiom would appear to apply to Myriad in the 101 context: if all that you “innovated” was the discovery of an ineligible composition (in Myriad’s case, naturally occuring DNA sequence), you better recite something in the claim more substantial than the applications of that ineligible discovery that were in the prior art.

  9. If (going forward) someone discovers that a gene mutation causes a disease, are there any mechanisms available for protecting diagnostic uses of this discovery?

    Obviously there’s the trade secret route – Myriad could carry out genetic tests for people without ever disclosing how their test works.

    Is there any other option?

    1. If (going forward) someone discovers that a gene mutation causes a disease, are there any mechanisms available for protecting diagnostic uses of this discovery?

      Innovate some new technology for obtaining the relevant information.

      PCR was such an innovation. That’s the kind of innovation the patent system was designed to promote. It wasn’t designed to enable bottom feeders to fence off obvious uses of old technology, or to permit people to control who can access to information that is technologically obtainable by anyone who seeks to obtain it.

      1. So in other words no capital will be spent looking for the genetic mutations that cause diseases because the SCOTUS and Fed. Cir. have gone mad.

        1. no capital will be spent looking for the genetic mutations that cause diseases because the SCOTUS and Fed. Cir. have gone mad.

          Cue up the chicken littles with the rehashed baloney.

          link to aclu.org

          People who support gene patents often argue that genetic investigation is like drug development and will not take place without the incentive of the patent system. But studies sponsored by the federal government have established that gene patents, unlike other patents, are not required to incentivize research.[15] The Human Genome Project sequenced the entire human genetic sequence and did not patent any of the genes it identified. More than five million dollars of federal tax money funded the pursuit of the BRCA1 gene specifically.[16]

            1. I am not sure what the ACLU study proves. Even if investigators will make the discovery, who is going to take the product through FDA clearance without a promise of exclusivity to recoup the capital outlays necessary for Phase I, II, & III studies?

              1. I am not sure what the ACLU study proves.

                It proves that NWPA’s statement to the effect that correlations between genetics and disease aren’t going to be discovered without patents is complete b.s.

                Even if investigators will make the discovery, who is going to take the product through FDA clearance without a promise of exclusivity to recoup the capital outlays necessary for Phase I, II, & III studies?

                Oh noes! We’re all going to die of undiagnosed genetic diseases because obtaining “FDA clearance” for existing DNA sequencing technology is just too darn expensive! How will humanity ever solve this super difficult problem?

              2. And without “exclusivity” where will the money come from to pay for the expensive SuperBowl ads which will inform consumers whose sequencing method — which uses existing technology — is “recommended by 3 out of 5 doctors surveyed”?

                It’s a real mystery.

                1. Almost as much mystery as to why you keep on peddling some “but for only” reason why we have a patent system in the first place.

                  Sure, “but for” is one reason to have patents, but it surely is not the only reason.

                  Feel free to discuss other reasons.

                  Dig deep.

    2. Myriad could carry out genetic tests for people without ever disclosing how their test works.

      Given Myriad’s behavior, the best result is that nobody should ever give money to Myriad for anything, ever.

    3. If (going forward) someone discovers that a gene mutation causes a disease, are there any mechanisms available for protecting diagnostic uses of this discovery?

      There is no patent protection for finding out that thing A causes thing B.

      An eligible thing would be a new, particular means of determining whether thing A is present. The natural extension of that is means to prevent thing B from happening despite A being present. A third eligible thing would be new means of mitigating the effects of B. A fourth eligible thing would be means of removing B altogether.

      So yeah, one is just limited to novel forms of diagnosing, inhibiting, mitigating, and curing diseases.

        1. I suspect we are going to go into very dark times where information is on longer exchanged. These big corporations will probably set up employment agreements that lock you for life and disclosing anything about what you are doing to an outsider will be termination and law suits.

          1. Playing the devil’s advocate, ‘it’ is there or it is not there, and you want to have a patent on a mere ‘determining’ which at its gist is a mere mental action, an abstract thing.

            Now if you want to patent a new machine to be used for this mental process…

            1. Playing the devil’s advocate, ‘it’ is there or it is not there, and you want to have a patent on a mere ‘determining’ which at its gist is a mere mental action, an abstract thing.

              Ah, I misunderstood. Yes a claim to “determining the existence of…” is invalid.

              A claim reciting novel steps that result in a determination is not invalid.

              1. continuing to play the devil’s advocate, that is not what your own “scoreboard” indicates.

                (and yes, this disparity should make you question why your scoreboard is so erratic)

                1. That IS what it says. You must misunderstand. The problem in this case is that there was no novel determination – they were applying the test the same as it always has been done. A new means (of which this is not) would be novel and eligible.

                2. On the contrary, my random examiner friend, I understand the legal position perfectly well and it is you that (obviously) now conflate the distinct legal requirements of eligibility and novelty.

                  You really do need to understand your own scoreboard’s erratic behavior – this is just not something that you can clench tight your eyes and merely hope goes away.

                3. On the contrary, my random examiner friend, I understand the legal position perfectly well and it is you that (obviously) now conflate the distinct legal requirements of eligibility and novelty.

                  They’re not as distinct as you think. When the “invention” consists of the idea to direct oldtest to new(appearing in nature)subject, the “invention” is ineligible because the only novelty is an ineligible idea or an ineligible subject.

                4. You compound your ignorance by seeking to glorify yourself in it.

                  While there is (no doubt) some overlap in terms, the legal concepts are very much distinct.

                  Hint: seek clarity rather than obfuscation in your attempted understanding of law.

    4. The last two pages of the slip opinion suggest that if Myriad had limited itself to particular probes directed to particular mutations that Myriad itself discovered (see US 5,753,441 Claim 21), then this might be section 101 eligible. I guess that is the sort of claim that I am going to start drafting until I am proven wrong. That said, I think that it would be perfectly sane (albeit appalling regrettable from a public policy point-of-view) for biotech innovators to start doing more with trade secrets than with patents in view of recent jurisprudential trends.

      1. Greg: if Myriad had limited itself to particular probes directed to particular mutations that Myriad itself discovered

        Those mutations are also naturally occuring, of course, and ineligible for protection both as information and as primers.

        I guess that is the sort of claim that I am going to start drafting until I am proven wrong.

        Great idea. After all, none of this was predictable by anybody. It would be irresponsible to speculate or to provide a client with reasonable advice before taking thousands of dollars of their money.

        I think that it would be perfectly sane … for biotech innovators to start doing more with trade secrets than with patents in view of recent jurisprudential trends.

        The “sane” answer is that it depends very much on the “innovation” in question.

        appalling regrettable from a public policy point-of-view

        Because the best policy is for a tiny tiny group of already wealthy people to control how and when everybody else gets to use publically available technology to gather information about their own genomes.

        Sounds like something Republicans would love. Double so if it impacts women negatively. Call your Congressman!

        1. Because the best policy is for a tiny tiny group of already wealthy people to control how and when everybody else gets to use publically available technology to gather information about their own genomes.

          It is regrettable because trade secrets impede the ability of competitors to understand an invention and improve upon it. If Prometheus had set up its own clinics where they simply monitored thiopurine metabolites and adjusted drug dosages–without telling anyone about the correlation between adverse effects and metabolite serum concentrations–they could have made a mint. Patients would have flocked to their clinics because of the reputations among those with the relevant diseases “hey, if you go to the Prometheus clinic, you have a 45% better chance of not dying from the treatment.” But other scientists working in the field would not have the advantage of this information, and therefore they would be in no position to build and improve upon it.

          By incentivizing trade secrets at the expense of patents, one slows down the progress of science.

          1. It is a nightmare. Proust has no science background just like the Google judges. Basically we have judicial activist judges that have no experience in science, patent law, or innovation making things up.

          2. Greg: If Prometheus had set up its own clinics where they simply monitored thiopurine metabolites and adjusted drug dosages–without telling anyone about the correlation between adverse effects and metabolite serum concentrations–they could have made a mint.

            Because nobody every thought about adjusting a dosage of a drug in response to the rate of metabolism of that drug. Especially when a patient isn’t sick, or is getting sicker. Adjusting a dose? Who would ever think of such a thing?

            other scientists working in the field would not have the advantage of this information, and therefore they would be in no position to build and improve upon it.

            Right. Far better to force hospitals to pay Prometheus so doctors can think about this roughly calculated correlation — that needs improving — before the doctors can improve upon it. Yes, that sounds like a great way to advance knowledge.

            By incentivizing trade secrets at the expense of patents, one slows down the progress of science.

            As a scientist who has published research articles in the most widely read journals on the planet, I can confidently tell you that the number of patents I consulted and referenced in the course of performing my research was precisely zero. I’m 99.9% this is true of everyone who ever worked there and also true of my adviser (who was no slouch). I’m 100% confident that this is scenario applies to the vast majority of research labs in existence today, and I’m 100% confident that the negative impact of this “failure to keep up on the patent database” on the rate of scientific progress of science is too small to measure.

            Here’s another news flash: pretty much the only people on the planet who believe that claims like Myriad’s claims should be patentable are patent lawyers directly invested in the retention of such claims, their clients, and the super wealthy elites who like to gamble on such patents. That’s it.

            If you’re serious about promoting scientific progress, there are far better ways to go about doing that. Here’s a remarkable proposition: instead of building bombs and robots to vaporize people on the other side of the world, let’s spend money to improve science education and create publicly funded institutions to perform the research so the knowledge is available to everybody?

            What’s the matter with that? Too “communist” or something?

            1. >Because nobody every thought about adjusting a dosage of a drug in response to the rate of metabolism of that drug

              MM why don’t you address what he said. He said 101 was not the right invalidation. Instead you misrepresent as you always do.

            2. Because nobody every thought about adjusting a dosage of a drug in response to the rate of metabolism of that drug. Especially when a patient isn’t sick, or is getting sicker. Adjusting a dose? Who would ever think of such a thing?

              The Prometheus discovery was not simply that you should adjust the dose. It was a precise numerical cut-off about when the adjustment needs to be made to avoid adverse consequences (such as death). I guess that someone else might, by trial and error, have discovered the same set of numerical cut-offs given enough time. How many patients would have to die in the meantime because this information is known only to three people in the world?

              As a scientist who has published research articles in the most widely read journals on the planet, I can confidently tell you that the number of patents I consulted and referenced in the course of performing my research was precisely zero.

              Sure, no argument there. I was a microbiologist until quite recently, and only once did I ever have occasion to read a patent when looking for an item of information. But trade secret protection does not mean merely that you do not patent. It means that you do not disclose at all. Many scientists both publish and patent, but if you are going for trade secret protection, you do neither. You also do not talk about your discoveries at conferences, or even reveal them to your customers who have reason to need to know what it is that you are doing. In other words, by pushing innovators to use trade secrets instead of patents, you stifle the dissemination of information.

              If you’re serious about promoting scientific progress, there are far better ways to go about doing that. Here’s a remarkable proposition: instead of building bombs and robots to vaporize people on the other side of the world, let’s spend money to improve science education and create publicly funded institutions to perform the research so the knowledge is available to everybody?

              You will get no argument from me. I would be delighted to see the Defense Dept’s budget slashed by 66% and the savings plowed into the NIH, the NSF, and the public schools.

              1. Greg: The Prometheus discovery was not simply that you should adjust the dose. It was a precise numerical cut-off about when the adjustment needs to be made

                In fact, the claim prevented people from thinking about increasing the dosage when the measured metabolite levels fell within a large range that started from zero and ran up to some other number; on the other end (lowering the dose) the range went to infinity. That’s how “precise” it was, Greg.

                Nice try, though.

                How many patients would have to die in the meantime because this information is known only to three people in the world?

                I have no idea, Greg, nor do you. But I can tell you that I’ve never seen these awesome arguments before. “Some people might die — we don’t know how many — if we don’t grant patents that turn doctors who think about treating those patients into infringers.” Super compelling stuff.

                Many scientists both publish and patent, but if you are going for trade secret protection, you do neither. You also do not talk about your discoveries at conferences, or even reveal them to your customers who have reason to need to know what it is that you are doing.

                That’s nice. Scientists keep information to themselves all the time for all kinds of reasons (including patent-related reasons) and they’ve been doing so since forever. But you knew that already.

                Some scientist wants to keep his/her discovery a trade secret because he thinks he/she can “make a mint off it”? Be my guest. But that scientist shouldn’t expect to receive any public money based on his/her “secret discovery”. See how that works, Greg?

                I was a microbiologist until quite recently

                Golly, let’s all take a guess as to what it is that you do now.

          3. Excellent point. There are benefits and detriments to everything. Outlawing software patents could have the same effect, everyone will simply do things as trade secrets and much will not be published.

            1. Outlawing software patents could have the same effect, everyone will simply do things as trade secrets and much will not be published.

              And the effect of the failure to publish “software patents” on the software industry will be … catastrophic? That’s the theory?

              Funny stuff.

              1. Yes it could be very bad. Just look back at the early 1980’s to see where things were going. And the new trade secret laws are clearly there to help lock up employees.

                And, please, the patents provide the disclosure but that means that the companies share things and they are published in popular magazines and taught at universities.

                1. Night, What was being taught was not patented in the first place.

                  What was patented was discouraged from use. Why do you think the RSA algorithm was not used for communications for so long?

      2. That said, I think that it would be perfectly sane (albeit appalling regrettable from a public policy point-of-view) for biotech innovators to start doing more with trade secrets than with patents in view of recent jurisprudential trends.

        Again, the concepts are not new. Funk Brothers was in the 1940s, and it wasn’t the first natural phenomena case.

      1. Regarding trade secrets in genetic testing – there is lots of this going on.

        No doubt.

        People have used secret techniques when performing services or creating products for other people since forever.

        That doesn’t “slow progress.” It promotes competition between the various owners of the trade secrets and people can decide whose “secrets” are better in the marketplace. When someone starts leaping ahead, it usually doesn’t take long for someone else to figure out what the “secret” is and improve upon it or replicate it. See, e.g., everybody’s favorite soft drink and a zillion other low-risk, relatively cost-free “innovations”.

        It does slow down the desire to file a bunch of expensive patents, though. Thankfully we’ve got a surplus right now of a few hundred thousand per year, at least.

        1. Your view here Malcolm is simply wack.

          You preach uncovered secrets as if that was a necessary outcome at the same time trying to portray secrets as a viable protection avenue (albeit implicitly).

          You can’t have both.

      2. No doubt, and that is regrettable. Science builds on previous science. Secrets may be privately advantageous but they are a deadweight loss to the public.

        1. Secrets may be privately advantageous but they are a deadweight loss to the public.

          False.

          There is no “deadweight loss” when the public is given the opportunity to take benefit from the secrets, which is pretty much always the case when the secrets are used in trade. People have been relying on trade secrets in business since forever. I rely on them. You almost certainly do as well.

          Just a friendly reminder: you aren’t commenting over at some Patent Lovers Anonymous blog where any defense of any patent will be cheered for its bravery (and which is where you seem to have gotten much of your misinformation about patent eligibility). I’m going to challenge you on thoughtless assertions every time you make them.

          1. Just a friendly reminder:… I’m going to challenge you on thoughtless assertions every time you make them.

            Good. It would be a deadly dull conversation otherwise.

        2. Hilarious Greg. I don’t think you know what deadweight loses are.

          “Causes of deadweight loss can include monopoly pricing (in the case of artificial scarcity), externalities, taxes or subsidies, and binding price ceilings or floors (including minimum wages). The term deadweight loss may also be referred to as the “excess burden” of monopoly or taxation.”

          ^Sounds like patents themselves cause the deadweight loss bro.

          1. Of course patents can cause deadweight loss. As can copyrights. That does not really prove that trade secrets cannot cause deadweight loss. In any event, if you think that I have misused the term, then please simply substitute the correct term as necessary. The point I am making is not really dependent on the word “deadweight.”

            1. Greg: That does not really prove that trade secrets cannot cause deadweight loss.

              Way to move the goalpost, Greg. That wasn’t your original assertion. Far from it.

              The point I am making is not really dependent on the word “deadweight.”

              Here’s a radical idea: spend some time figuring out whether your point is defensible before making it.

              You are right about one thing, though: it isn’t dull dismantling your comments. It’s kinda refreshing. What’s the phrase? “Fresh meat” or something like that.

    5. RH, how long do you think one could keep as secret information that X causes Y when you provide reports to doctors and patients in sufficient numbers so that others can figure out what the correlation is?

  10. The last bit of property that Myriad wants to control but which also deserves to be tanked are their claim(s) to old methods (and compositions) of putting their new — but ineligible — sequences into cells for the purpose of studying the effect of those sequences on cells. The problem with those claims seems less with subject matter eligibility but more of a utility issue.

    Anything new can be “studied” using old technology. There’s no reason to allow patent protection for such methods or compositions absent some substantial utility beyond “let’s see what happens.”

  11. Could the “method reasoning” be any less grounded in conflation of 103 and 101?

    B-b-b-but the ends justify the means…

    /off sardonic bemusement

  12. Footnote 4 shows how far the CAFC has advanced in its thinking about eligibility issues, particularly the often-misunderstood concept of “pre-emption”:

    The preemptive nature of [Myriad’s asserted method] claims is not ameliorated even if we accept Myriad’s argument that other methods of comparison exist. If the combination of certain routine steps were patent eligible, so too would different combinations of other routine steps.

    I hope everybody is able to follow that. The “pre-emption” concern is not about the particular “building block” that is taken out of the public domain by a specific claim (e.g., the particular abstraction that is “managed” or “mediated” by a typical “on a computer” claim). The concern is with allowing corporations (or other “persons”) to use the patent system to effectively deny the public its right to use old technology — any old technology but especially information gathering, processing and dissemination technology — for its intended purpose.

    This is an important decision from the CAFC in many respects, but perhaps especially this one. The CAFC took a big step forward today.

  13. [N]either naturally occurring compositions of matter, nor synthetically created compositions that are structurally identical to the naturally occurring compositions, are patent eligible. . . .

    A correct holding, as many practitioners often seem to forget that patent law is concerned only with structures.

    A DNA structure with a function similar to that found in nature can only be patent eligible as a composition of matter if it has a unique structure, different from anything found in nature. . . .

    Here, let me help the software people out a bit by substituting legal synonyms.

    A software program with a function similar to that which constitutes a judicial exception abstract idea can only be patent eligible as a statutory process if it has a unique structure, different from anything found in man . . . .

    I can name at least two people who fail to understand their own anthropomorphication arguments. If only one would describe and claim their algorithms by structure rather than function…

    In reviewing these claims, the Federal Circuit found that the “primers before us are not distinguishable from the isolated DNA found patent-ineligible in Myriad and are not similar to the cDNA found to be patent-eligible.”

    Ah, no wonder why they got it right, this one was a softball.

    Here, the claims require various physical transformations…those transformations are insufficient – primarily because those steps “set forth well-understood, routine and conventional activity engaged in by [POSITAs] at the time of [the] patent applications”

    Where’s that DDR Holdings post again?

    1. If only one would describe and claim their algorithms by structure rather than function…

      You were strangely quiet on that 108 page “structural description of the coast of California comment I made.

      (connect the dots)

      Then get in touch with the Vast Middle Ground allowed per the words of Congress (and still allowed).

      1. Then get in touch with the Vast Middle Ground allowed per the words of Congress (and still allowed)

        This case, this one, the one you are commenting on, is finding those functional words invalid and you’re still sitting here saying the words are still allowed. Was this ladders-of-abstraction case applying the vast middle ground held invalid because it was obvious (the only thing you ever seem to acknowledge), or because the words of the claim and the scope they entail was found to be simply improper OUTSIDE of the obviousness of the combination? Nor is it the first case to do so. I don’t know how you can so blithely maintain your quips right in the middle of it happening to you.

        I’ve seen this episode before, and it ends with you saying that some case down the line (where they outright say the words “there is no vast middle ground allowed per the words of Congress”) is a complete left turn that will ruin all patent law. As if the court wasn’t saying the same thing in different words for months or years…Take a look about your frying pan, and notice how hot it is – these are those months, you’re in them, right now.

          1. What you’re missing, anon, is that Congress, the Judiciary, and the Executive are co-equal branches of government.

            To be clear, I’m not saying they each play the same role (they most certainly do not), but to say “see the words of Congress” is to ignore that the judiciary and the executive branches exist. This is especially frustrating in light of the fact that it is the executive branch that issues patents and the judiciary that interprets them, so we could just as easily say “see the words of the executive” or “see the words of the Judiciary”, respectively.

            The patent system we have today is not a function of Congress independent of the other branches of government, and it is only willful ignorance that would assume otherwise.

              1. I’d love to see anon argue in Federal Court. It would be quite amusing. I’m sure arguments to ignore the Supreme Court because it is violating the constitution would go real far.

      2. There certainly is a “vast middle ground” between “screwdriver” or “freezer unit” and “configured to determine child-safe status of said copyrighted program.”

        And nearly all of that “vast middle ground” is functionally claimed nonsense that is going to be kicked to the curb in a relatively short while.

        Just wait and see. It’s inevitable as night follows day. Predictable, and predicted. And then we’ll have something resembling a sane patent system again after a couple decades of system-corroding craziness and hordes of bottom feeders rushing in to “get rich” off the work of others.

        1. so… when software claims start getting tanked by whatever case takes out functional language, how long will it be before agents/attys start using strategic obfuscation in the specification and 112 6th to try to get equivalent protection? Isn’t that the next step?

          1. That is already a problem, and not just in the software arts. Go read a patent from the 1930s-1970s. Generally, it seems like people used to actually want to, you know, describe their invention. Now it seems like attorneys are so terrified that someone might ‘limit’ their invention, they’re deliberately trying to hide the ball.

            Plus, go over to IP Watchdo g. GQ has already written on exactly this topic. He has specifically said that is his strategy. Load the spec with so many technical details that judges/juries are so intimidated they’ll just throw up their hands and say “Wow, that’s so technical, must be an invention in there somewhere.” Maybe it will work. I’m skeptical, though.

            1. word on the street is the the pto tends not to give 101 rejections on 112 6th claims because the statute explicitly says corresponding structure in it. so, yes, this may be a very viable strategy.

          2. No – it will be easier to obfuscate with perfectly “objective structural term” claims like the 108 page mind-numbing California coast description.

            Of course, charges of “hiding the ball” will soon follow…

              1. Well, I agree with you in that a 200 page disclosure won’t necessarily make the invention clearer, by itself.

                I’m irritated because I had to deal with this exact issue recently.

                Two patents, one very recent, one from the 70’s. Both directed to very similar inventions. The one from the 70’s was very easy to read and understand. The modern one was virtually incomprehensible, even though it was directed to a relatively simple mechanical invention. Much kicking of dust and hiding of balls.

            1. I would suggest that strategic obfuscation is already in full swing.

              I suspect Biosig II would stop that.

              Simple test for reasonable clarity: When less vague terminology is both readily available and apparent, it is not reasonable to be intentionally vague.

              1. What is the scale for relative vagueness?

                How do newly coined terms fit into that scale? …the right of the inventor to be their own lexicographer?

                Did your rest last night at that Holiday Inn meet to your approval?

                1. What is the scale for relative vagueness?

                  I would assume it’s similar to relative obviousness, in that it is relative to a particular situation and you cannot give a general rule easily.

                  Which is why its helpful to create guideposts, as the court did with KSR (naming some exemplary rationales) and as this would be.

                  How do newly coined terms fit into that scale? …the right of the inventor to be their own lexicographer?

                  They’re free to use whatever terms they want, but they still have to define those terms. A non-limited “widget” by any other name is still non-limited and is not reasonably definite.

                  Did your rest last night at that Holiday Inn meet to your approval?

                  Huh?

        2. You’ve told me that the troll problem is irrelevant to your stance on software patents and 101.

          Yet you continue to trot out the incendiary “bottom feeders” trope.

          So which is it: (1) are you upset with the “bottom feeding” trolls and their attorneys; or (2) are you upset with the attorneys who advised their clients that, under the law 10 to 15 years ago, they could patent their software?

          If neither, cut the incendiary BS.

          1. By “bottom feeding” I’m referring to the micromental “innovators” who “innovate” ineligible or obvious “improvements” to technology created by others.

            It’s certainly related to trolling and helps to fuel it, but trolling is not the only reason to object to bottom-feeding.

            incendiary

            Grow up.

            1. ^^^ perhaps Malcolm should first try the advice he so lavishly bestows on those with whom he disagrees…

              Nah, rules don’t apply to him (eight years and running)

  14. >directed to the patent-ineligible abstract idea of comparing BRCA sequences and >determining the existence of alterations

    Wow in what universe is that an “abstract idea”. The abstract idea has eclipsed the flash of genius as the most patent rights destroying judicial creation.

    1. comparing…and determining the existence of alterations

      Wow in what universe is that an “abstract idea”.

      Well I suppose some would argue ever since math came up with the concept of delta, but it was probably when math came up with the concept of zero. Negation is an old, old concept, and we have been saying this is not that since forever.

      The abstract idea has eclipsed the flash of genius as the most patent rights destroying judicial creation.

      You know they have children’s books where they show you two pictures and you have to point to what is different, right?

      Nothing is added by identifying the techniques to be used in making the comparison because those comparison techniques were the well-understood, routine, and conventional techniques that a scientist would have thought of when instructed to compare two gene sequences.

      Pretty simple to me – the invention was not in the comparison techniques.

      1. Really Random. So according to you abstract means old. So a judicial exception for 101 eligibility that should be used as little as possible is meant to mean old.

        1. should be used as little as possible

          It should be used as often as necessary. Given the incredible incompetence and short-sightedness of the USPTO and the Federal Circuit over the past twenty years “as often as necessary” means “a lot.”

          This has all been noted before and it’s a fact of life. Deal with it.

        2. Really Random. So according to you abstract means old. So a judicial exception for 101 eligibility that should be used as little as possible is meant to mean old.

          Well its not so much me as the Supreme Court.

          You can’t get around the fact that the only thing they were doing is looking for differences, and they were doing it using routine methods. If I told you to look for clues using the same common forensic techniques, but applied to a new crime scene, you wouldn’t call me an inventor.

          I don’t know why you think the “teaching” to apply the same techniques to a new subject would constitute anything more than an idea – as he invented neither the technique, nor the BRCA subject. What else could he have added to the art? What more could his invention plausibly be other than the thought that using the known technique on the new subject would be beneficial?

          1. >>would constitute anything more than an idea

            What they did is not abstract and not an idea. It may be obvious. But the rest of your nonsense is just that nonsense.

            1. What they did is not abstract and not an idea. It may be obvious. But the rest of your nonsense is just that nonsense.

              What did they do? They didn’t create the gene. Nor did they create the effect the gene has on the body. They didn’t create, nor did they improve, the test for finding the gene. What did they do? Did they even teach you how to do the test? No, the art already knew that.

              What did they do? They suggested that you might want to apply the neither new nor improved test to the thing occurring in nature, to do exactly what the neither new nor improved test always does, to get results you would entirely expect.

              So what did they do? They suggested you try something. How could you say that’s not an abstract idea? That’s like saying the suggestion on where to eat for lunch requires an obviousness determination to figure out if its patentable.

                1. “Before the Myriad inventions, we did not know how to test for BRCA1.”

                  I think you need to contact Kevin Noonan for some facts. He was very good at providing them for that case. Iirc the only thing we didn’t know before Myriad “taught” everyone was the location/identity of the BRCA1. All the rest, i.e. how to “test for” it, was known.

                  Perhaps MM can clarify for us.

                2. Before the Myriad inventions, we did not know how to test for BRCA1. They taught us how to do that.

                  Arguably true but that’s some thin “baloney slicing” (to borrow a phrase).

                  The only thing that wasn’t known was exactly where to point the telescope (or, in this case, the PCR or hybridization reactions) to gather the desired information.

                  But there was no question that the gene existed and there was no question that it would be discovered and there was no question that it would discovered imminently and there was no question that, immediately after its discovery, information about the gene would be useful to people, and there was no question about how that information would be subsequently gathered.

                  This scenario is true of pretty much every significant genetic disease which is why people who aren’t directly invested in the patent system are generally repulsed by the idea that a corporation can “own” the right to use existing technology to obtain information about one’s own genome.

                  The best way to promote the gathering and dissemination of more public information about the human genome is to provide people with the education and training required to obtain that information and then put them to work on that task. In exchange, the public gets the information. I know it sounds like a communist plot to some people but a much larger number of people are guaranteed to benefit more directly (and indirectly) versus the “you discovered the information, you have exclusive rights” model that others have been promoting.

                3. My apologies to Prof. Crouch, but I can make a reply to his post, whereas I seemingly cannot make a reply to MM’s. This reply is really directed to the latter.

                  The only thing that wasn’t known was exactly where to point… the PCR or hybridization reactions[] to gather the desired information.

                  But there was no question that the gene existed and there was no question that it would be discovered and there was no question that it would discovered imminently and there was no question that, immediately after its discovery, information about the gene would be useful to people, and there was no question about how that information would be subsequently gathered.

                  Four responses:

                  (1) I agree that the BRCA1 gene was the subject of eager investigation at the time that Univ. of Utah discovered it, so it would have been discovered anyway, regardless of the Utah researchers. On the other hand, it is not clear to me that the other research groups who were after it had some sort of principled opposition to filing a patent, so the “it would have been discovered anyway” line is not really so potent an anti-patent argument as you might suppose.

                  (2) Even if others would have discovered it anyway, it takes more than discovery to bring a genetic test to market. You also need FDA clearance, which is costly. By what mechanism do you propose that this FDA clearance would have been obtained? I have not seen the ACLU passing the hat to fund FDA trials for other genetic disease diagnostics.

                  (3) Perhaps a better way of running drug/diagnostic development and discovery would be to devote public funds to the discovery and regulatory clearance of certain high-profile diseases (breast cancer, AIDS, etc). I cannot say that such an idea would be a bad one. Does it not seem a mite dangerous, however, to dismantle the current system by which discoveries are funded and brought through regulatory clearance, without a public funding mechanism in the works to replace the status quo?

                  (4) I also note that if we are to rely entirely on public funding (as we will, if patent protections become too weak) then we will only get advances for politically popular diseases. Expect under such a regime, to see a lot of Ebola drugs, and breast cancer drugs, and drugs for other politically significant diseases. Expect to see rather little progress for chlamydia, or Lime disease, or back pain, because these diseases have less telegenic patients.

                4. I’m pretty much through trying to educate you, Greg. You’re just spinning around kicking up dust and, frankly, your arguments are nonsensical.

                  And this:

                  Expect under such a regime, to see a lot of Ebola drugs, and breast cancer drugs, and drugs for other politically significant diseases. Expect to see rather little progress for chlamydia, or Lime disease, or back pain, because these diseases have less telegenic patients.

                  is comedy gold to the extent it’s not completely arse-backwards and ignorant of the rationale for maintaining a robust government-funded medical research program.

                  Have a nice day, Greg.

                5. Greg, somewhere in this thread you state that you need FDA clearance in order to bring a genetic test to market? Um, not exactly. Myriad’s test is what is known in the industry as a “home brew” test. These are tests where everything is performed in-house. Although the FDA was theoretically given authority to regulate these tests in 1976 when the Food, Drug & Cosmetic Act was amended to specifically include in vitro diagnostics under the umbrella of a “medical device,” it has up to now chosen to not do so. Labs that offer home brews generally must follow a set of regulations known as the Clinical Laboratory Improvement Amendments which are implemented by the Center for Medicare and Medicaid Services. But that’s really it. There is a push to get the FDA to more aggressively regulate home brews, but naturally the labs that offer home brews resist this, and frankly for good reason (well, mostly). The bottom line is that there is absolutely no comparison in getting a drug to market versus getting a home brew test to market. The notion that tests such as those offered by Myriad and Prometheus would not exist absent patent protection is offensive. I actually know what I’m talking about here. And I also know a thing or two about patents and genetic tests, having literally been on the front lines in this area for years. The term “gnostic” means “pertaining to knowledge.” This definition gives one a clue as to why the screening claims at issue in today’s decision were invalidated, and why the claims at issue in Mayo v. Prometheus were invalidated. Fundamentally they were efforts at patenting information. Don’t let anyone fool you about that. If the FDA does decide to aggressively regulate home brews, then I would personally be in favor of a “marketing exclusivity” period for home brews just like occurs now for new drug products. That could provide the so-called necessary incentive for the development of home brew tests.

                6. R. I don’t think this is correct. Before the Myriad inventions, we did not know how to test for BRCA1. They taught us how to do that.

                  My understanding of what the court said is that the technique was already known in the art, they just applied it in the direction of BRCA1.

                  Isn’t this argument that “I told you to shine your flashlight at new thing, so allow me to re-patent using a flashlight?”

                7. To “other ‘in-house'”:

                  Perhaps I was not clear, so I will clarify: The FDA does not formally regulate home brew tests. It did send letters to a few labs back in 2010 years ago notifying them that their tests “may” be subject to pre-market approval procedures under Section 510(k) of the FDCA. To the extent any labs have “complied,” this compliance has been totally voluntary, and driven more by public relations than by any belief that the FDA is correct.

          2. If I told you to look for clues using the same common forensic techniques, but applied to a new crime scene, you wouldn’t call me an inventor.

            Pretty sure the folks who can’t puzzle their way through “correlations aren’t eligible for patenting” are happy to call you whatever feels right at the moment.

            1. MM you are conflating so many things it is ridiculous.

              You obviously feel like this is a big win for your judicial @ctivist’s agenda.

              My sense is that at some point the sane will win out over this the ridiculous use of these judicial exceptions.

            2. And is that your brain performing correlations, but at the same time maintaining that machines that perform the functions that you are paid for aren’t eligible for patentability.

              1. This “argument” of yours is less than worthless for your team. By all means please keep making it!

                It’ll work really well when you make it directly to a judge instead of some guy on a patent blog.

                1. You mean the argument that machines that perform the functions that people are getting paid for should be eligible for patentability?

                  You think that is a bad argument. I guess with the Googlized Federal Circuit you may be right. Lower than the bought of courts of the 1800’s in the US.

    2. Wow in what universe is that an “abstract idea”.

      The universe where doing stuff in your head is considered “abstract”, at least from the perspective of a patent system designed to promote progress in non-mental arts.

      In short: our universe.

    3. Wow in what universe is that an “abstract idea”.

      It’s almost like patent attorneys are learning that people regularly do stuff. And that people solve problems by applying the same techniques over and over again. And that granting patents on doing those things is a bad idea.

      The idea of comparing something to a known other thing and looking for differences is a well-known technique. Inserting otherwise patent ineligible subject matter into that known process does not make it patent eligible! Imagine that.

      Does this patent actually claim the test? No. It claims a way of doing the common task looking for a known, patent ineligible thing. If you want to claim the test: actually claim how you’ve implemented your test. Not how one could test it.

      1. If you want to claim the test: actually claim how you’ve implemented your test.

        Well of course they can’t do that, as that would make it clear that this application was a tailor-made obviousness case.

        Which was kind of why they didn’t do it, don’t you think? Great example of using functional language to try and hide an obvious act.

        1. …an obvious claim…

          And I am sure that obvious claims rejected under the statutory grounds for rejecting obvious claims would not raise the same type of dander as this whatever-ends-justify-the-means brouhaha.

          1. And I am sure that obvious claims rejected under the statutory grounds for rejecting obvious claims would not raise the same type of dander as this whatever-ends-justify-the-means brouhaha.

            Exactly my point. When Applicants learn that what they must do is claim the technique, rather than the result of the technique, the case will be seen for the obvious act that it is and nobody will cry about a patent getting invalidated, as this is (apparently) an easy obviousness case once you strip out the improper language.

            One can’t complain about Myriad here – the claims were set in stone before the previous case. One can only hope that future applicants will understand what language to use.

              1. Your point is that this belongs under 103 obviousness…?

                My point is that if they claimed their invention it would belong under 103 obviousness. But some people need to be taught to claim their invention and not “the field of their invention” or “anything that also causes the same result as their invention.”

                Lacking a claim to the invention (which was clearly obvious) the court invalidated the claim before them – the claim to the field.

                1. Sorry Random, but I do not recognize this strawman “field of invention” that you has created.

                  Are you once again merely displaying your ignorance of how 99.9% of claims that have any value use the ladders of abstraction?

                2. Sorry Random, but I do not recognize this strawman “field of invention” that you has created.

                  It wasnt a strawman to the Supreme Court. I suppose they used field of use, I guess you got me there.

                  Are you once again merely displaying your ignorance of how 99.9% of claims that have any value use the ladders of abstraction?

                  No, I’m demonstrating your ignorance of 112, 1st and 101. The argument that Myriad wants to re-patent something that belongs to the public because they need it to make money is not a strong argument. But I guess when “commercial benefit” is the only nail to pound, you get out your hammer.

          2. the statutory grounds for rejecting obvious claims

            Because “anon” knows what they are. And he’s a super serious person with lots of important insights about the patent system. That’s why so many of his views are adopted by the public and the courts.

            LOL

        2. You know, maybe it was “a tailor-made obviousness case.” If the court had invalidated these claims on 103 grounds, I really would not be too troubled. I think that it is crazy that this claim could be invalid under 101 grounds, however, as an “abstract idea.” There is nothing abstract about a set of PCR primers or a gene-probe. These are actual physical entities, not at all abstract.

          I under stand why this case was a 101 case and not a 103 case. Most district court judges were history majors, and most jurors have no more than a high-school education. They do not want to have to wade through all of that prior art. The reason that courts are so eager to invalidate on 101 grounds is that it spares the trier-of-fact from the tedious business of listening to sparring PhDs drone on about what was or was not disclosed in Phuc & al. (2003). But, that is not a good enough reason to conflate 101 and 103 back into a single analysis.

          The part of Claims 7 & 8 that was not “abtract” was dismissed as “routine and conventional.” “Routine and conventional” does not appear anywhere in the statutory text. If the Supreme Court wants to read these words into the text, the place where the words most naturally fit is in 103, not 101. This case should not have been decided on 101 grounds.

          1. Greg, you appear to be unable to grasp the fundamentals or you have never bothered to consider them.

            You can protect abstractions with a patent claim even if the patent claim recites non-abstract subject matter.

            Here’s a simple example:

            1. A method comprising the steps (1) drinking a cup of coffee and (2) thinking about whether a set of primers is identical to another set of primers.

            Drinking coffee isn’t “abstract”. But the claim prevents me (and other coffee drinkers) from thinking about an abstract relationship between two primers. In other words, the claim protects the abstraction.

            Get it? I hope so. It’s really quite straightforward. Start with the fundamentals and learn to apply them. It’s what the courts are doing and it’s what the PTO is doing. You should learn to do it, too.

          2. If the Supreme Court wants to read these words into the text, the place where the words most naturally fit is in 103, not 101.

            The term “natural fit” is completely nonsensical in this context.

            More importantly, 103 does not work to screen out claims that protect previously undescribed but otherwise ineligible subject matter unless you incorporate eligility considerations into the 103 analysis (and note that 103, arguably, expressly precludes claim dissection — kind of a problem for your “theory”).

          3. You know, maybe it was “a tailor-made obviousness case.” If the court had invalidated these claims on 103 grounds, I really would not be too troubled.

            My understanding is that the claims did not claim the technique, the claims claimed a result and the specification said that application of the known technique would achieve the result. If the claims had been properly constituted (i.e. had claimed the technique, rather than the result, as was required) the court has already said that it was a routine technique to apply in this situation, and thus would have been obvious.

            These are actual physical entities, not at all abstract.

            There has been an actual, physical entity in pretty much every exception case, including Alice (a computer) and the previous Myriad case (genes). There was an actual, physical entity in the first exception case (the Morse telegraph). However, the claims are either not limited to their particular physical structures, or their structures are only tangentially mentioned when the actual focus of the claim is on something else. Including a concrete thing does not inherently make something not abstract.

            They do not want to have to wade through all of that prior art.

            I would agree that if the technique applied was not known in the art then the holding should not stand. The CAFC seems pretty clear that it existed though, and beyond that the idea to apply the technique to the same kind of thing the technique is commonly applied to is an obvious act, true, but is also nothing more than an idea.

            “Routine and conventional” does not appear anywhere in the statutory text. If the Supreme Court wants to read these words into the text, the place where the words most naturally fit is in 103, not 101.

            Routine and conventional has to do with “invention” doesn’t it? If you invent an improved arrow, it doesn’t add anything to create a system claim where you pair it with a known bow. It’s not accurate to discuss, for 101 purposes, the bow in the system, because the applicant is admitting that isn’t his invention. If the arrow itself isn’t eligible for whatever reason, the inclusion of the known bow shouldn’t save it, because that’s just an attempt to make eligible something that isn’t by relying upon the old.

            If I then make a method claim where I shoot the arrow with the bow in a conventional manner, the fact that the subject of the known action is new (i.e. now I’m shooting a new arrow!) doesn’t make the method itself new. So I think it goes beyond just being obvious to shoot the new arrow in the same way, it’s a statement that the idea to apply the method is itself an invention, and the court does not approve of that.

            1. There has been an actual, physical entity in pretty much every exception case, including Alice (a computer) and the previous Myriad case (genes). There was an actual, physical entity in the first exception case (the Morse telegraph). However, the claims are either not limited to their particular physical structures, or their structures are only tangentially mentioned when the actual focus of the claim is on something else. Including a concrete thing does not inherently make something not abstract.

              Let us set Morse aside, because it was decided before there was a 103, so it would not make sense to say that it should have been decided on 103 instead of 101 grounds. Beyond that, I would say that you are wrong about the Myriad example, and that the Alice example proves my point, not yours.

              The supreme court Myriad did not involve an “abstract idea,” so it is inapposite to cite it in a discussion of abstract ideas. Meanwhile, the claims invalidated as drawn to abstact ideas in the first CAFC Myriad did not involve any tangible objects. Those claims merely recite “comparing a sequence,” which even I agree can be done entirely in one’s head, and therefore should not be patent eligible.

              Meanwhile, Alice, as you say, involved a physical computer. A computer is not an abstraction. It is a real and tangible thing. This case should not have been decided on 101 “abstract ideas” grounds. The right way to decide Alice would have been to say “escrow accounts are routine and conventional at the time of invention, and it was obvious to one of ordinary skill at that time to use a computer to automate the escrow interaction.” I have no beef with the decision to invalidate Alice‘s claims, which seem obvious enough to me. I simply disagree with the idea that this should be done on 101 grounds. The proper ground for the Alice holding was on 103 grounds, but the judge (perhaps understandably) did not want to suffer the tedium of dueling experts discussing the state of the art in the early 1990s.

              1. Alice, as you say, involved a physical computer. A computer is not an abstraction. It is a real and tangible thing. This case should not have been decided on 101 “abstract ideas” grounds.

                Yes, computers are “real and tangible.” They are also ancient and their purpose for existing is equally ancient.

                A claim to “A computer, wherein said computer is configured to store and transmit [insert super valuable non-obvious information here]” is properly tanked because it protects ineligible subject matter (i.e., the information).

                It does not and should not matter that the computer can be “dropped on your foot.”

                We can certainly change the words we use to perform this analysis (they use different words in the EPO, for instance) but the issue presented by such a claim doesn’t change, nor does the fact that no sane patent system will ever tolerate the granting of such claims.

                I’m sure you understand this straightforward and fundamental analysis, Greg. Let me know if I’m wrong.

              2. But you can’t set Morse aside for exactly the reason you say – it was there before there was a 103. Morse and it’s progeny (up to Halliburton) provide the best picture for 101 reasoning.

                You’re attempting to sidestep the Morse logic by arguing that 103 largely picks up the slack. But the problem with that is that “largely” is the correct word – the fact that there may be overlap in a significant range of 101 and 103 issues doesn’t change the fact that the overlap is not complete, and that is why you need 101 to exist, for the times when 103 would not be proper.

                It’s this simple – if 101 and 103 fully overlapped (i.e. there are no claims that would be valid under one that wouldn’t be valid under the other, and vice versa) then you have no reason to be upset, as 101 becomes just an easier means of invalidating what 103 would have anyway. But you are upset, and the reason you’re upset is because you believe there ARE cases where 101 and 103 don’t overlap. And for that it’s incumbent on you to deal with the 101 reasoning on its own footing.

                101 and 112 serve a particular purpose that no matter how obvious or non-obvious an action is, the applicant is still limited to what he has created and then not more than that. 103 is insufficient to handle that. Given that 101 and 112 serve purposes that 103 doesn’t, your argument reduces to “the defendant should be made to argue, and the courts should only opine upon, only the most likely (or best fit based upon recent caselaw, or most pleasing to Greg) means of invalidity” which is silly on its face. Compliance with all requirements is mandatory.

                1. I definitely agree that claims need to satisfy all statutory requirements, not just 103. I also agree that there are cases where a claim can survive 103 but not 101, and in those case the claim should fail on 101 grounds. I also agree that there are cases where a claim should fail on both 101 and 103 grounds, and in those cases, there is nothing wrong with deciding the case on either or both grounds.

                  What I am trying to say, however, is that I do not think that this case (or Alice, or Mayo) should have invalidated the claims at issue on 101 grounds. At the point that you are talking about something being “routine and conventional,” you are discussing the prior art. Section 101 is not supposed to be about the prior art. Diamond v. Diehr, 450 U.S. 175, 190 (1981) (“The question… of whether a particular invention is novel is wholly apart from whether the invention falls into a category of statutory subject matter”). Invalidation on the basis of the prior art is supposed to be the domain of 102 & 103.

                2. You’re attempting to sidestep the Morse logic by arguing that 103 largely picks up the slack. But the problem with that is that “largely” is the correct word – the fact that there may be overlap in a significant range of 101 and 103 issues doesn’t change the fact that the overlap is not complete, and that is why you need 101 to exist, for the times when 103 would not be proper.

                  I guess that my point is that once Congress separate the Supreme Court’s old “invention” jurisprudence into two separate analyses (101 & 103), the old “invention” cases ceased to offer meaningful guidance about current law. Giles Rich and Pasquale Federico (the authors of the 1952 text) were both quite explicit that the statutory revisions were intended to correct what Congress regarded as mistakes by the SCotUS. See, Giles S. Rich “Laying the Ghost of the Invention Requirement.” 1 APLA QJ 26 (1972). Therefore, it is not terribly helpful to cite Morse in this context. To my mind, the ongoing validity of Morse lies mostly its section 112 “written description” implications.

                3. >I also agree that there are cases where a claim can survive 103 but not 101, and in those case the claim should fail on 101 grounds

                  I’d like to see a few of these cases that aren’t the ridiculous nonsense from the “abstract” witch word.

                4. >I also agree that there are cases where a claim can survive 103 but not 101, and in those case the claim should fail on 101 grounds

                  I’d like to see a few of these cases that aren’t the ridiculous nonsense from the “abstract” witch word.

                  If I trek through the Amazon and discover a new frog that can cure warts by sitting on them. The frog is therefore useful. I can describe the frog in exquisite detail (including an ATCC deposit of genetic material) thus satisfying 112. The frog is novel, because there is no category of 102 into which the frog will fit. Because there is no category of 102 into which the frog will fit, it also cannot be obvious, because 103 can only make recourse to art that is available under 102. For all that, however, my newly discovered Amazonian frog should not be patentable, because she is not “new” under 101.

                5. Mind you, I realize that my Amazonian frog is not an abstract idea. My only point was that I can happily grant the existence of a claim that can satisfy 102, 103, and 112, yet still fail 101.

                6. Greg, born yesterday:

                  I do not think that this case (or Alice, or Mayo) should have invalidated the claims at issue on 101 grounds. At the point that you are talking about something being “routine and conventional,” you are discussing the prior art. Section 101 is not supposed to be about the prior art. Diamond v. Diehr, 450 U.S. 175, 190 (1981)

                  I’ve already educated you on this point, Greg, and you are still pretending that you don’t “get it.”

                  The Supreme Court in Mayo put a bullet through the head of the ridiculous idea that understanding of the prior art was “not permitted” in an eligibility analysis. And as I said: I explained to you what that is the case.

                  If you want to act like a f00l who was born yesterday, that’s your choice. But you do look like a f00l when you behave like you’re behaving now. And I’m going to call you out, every time.

                7. Greg,

                  Your citation was previously put on the table for discussion.

                  Get used to having such valuable input simply ignored, as the people you are addressing have shown no interest in a meaningful dialogue and only wish to engage in their drive-by monologues.

                8. At the point that you are talking about something being “routine and conventional,” you are discussing the prior art. Section 101 is not supposed to be about the prior art.

                  But routine and conventional does go to what is “the invention” doesn’t it? If you don’t distinguish between the two you wouldn’t give 101 any teeth.

                  If you don’t distinguish between the two you could have, for example, a prohibition on claiming the natural law e=mc^2, but could claim any embodied calculation of it. “I don’t claim the equation, but I claim a paper upon which the equation is written.” The argument in favor of that is that the paper itself was eligible, and if it couldn’t lose its eligibility then the “paper + writing” system is eligible.

                  Some (misguided, I think) people think that. Instead, the correct way to think about it is that the paper was once eligible, but once it became clear that the paper was known and that THIS invention is not about improving the paper, the paper was no longer enough to confer eligibility. A reading of the claim and spec would make it clear that the important part of the claim is the equation, and that there is no attempt to create a “new and useful” or otherwise improved paper. Because nothing about the paper was new or improved, it wasn’t really the subject of the invention. Instead the paper is a backdrop limitation upon which the real point of the invention – the equation, could be fixed.

                  Same thing applies here. The circumstances of the case are clear that it’s not an attempt to improve a technique. It’s an attempt to take the same old technique and apply it to a new subject, as if every time we shone a flashlight on something new and non-obvious it allowed the re-patenting of the flashlight. That kind of logic would result in a brake system being patented forever – being repatented in each non-obvious car it was used in. The logic applied to the natural law case would remove e=mc^2 from the public (for all intents and purposes) and the logic applied here would be to essentially repatent both the technique and the natural law.

                  I guess that my point is that once Congress separate the Supreme Court’s old “invention” jurisprudence into two separate analyses (101 & 103), the old “invention” cases ceased to offer meaningful guidance about current law.

                  But this is why you need to read the old 101 cases. The judicial exceptions are not about the Court attempting to construe Congress’ intent in interpreting 101. The judicial exceptions are necessary limitations in order for 101 to be constitutional.

                  Just as Congress could not make a law defining what you are allowed to say in political speech, Congress lacks the ability to grant a patent if it does not promote the sciences. The court has determined that the “all inclusive” nature of 101 is too lax to be constitutional. Faced with the option of declaring 101 unconstitutional or saying it is constitutional but for these exceptions, the court wrote in exceptions. Congress cannot legislate its way around this (other than to simply codify what the court has decreed), and their desires are unimportant. It matters not one lick that Congress separated 101 and 103, or what Congress intended to do when it wrote the ’52 act, because the judicial exceptions are constitutional requirements, not statutory ones.

                  Let me ask you this: Do you think the patent power would allow Congress to set up a statutory scheme that would allow them to grant an exclusionary right on say, political speech, to a particular person or group? Or would the Constitution deny them the power to do that? Then the question becomes, is the bill of rights the only place wherein Congress is denied power? I think you’ll find that the patent clause itself has a built in power limitation, at least according to the Court.

                  the ongoing validity of Morse lies mostly its section 112 “written description” implications.

                  I disagree about the 101 analysis, but I agree with this part. Many on this board will have a rude awakening when this chicken comes home to roost.

              3. What you will find Greg is that you have just articulated very well the exact situation we are in now. This will not affect one iota the thoughts of MM or his cohorts.

                The “bottom feeders” is what they believe all patents are for. Lemley, I would bet, would agree with what you just wrote but wants to end patents for policy reasons and is doing it through his judicial activism.

      2. its not that they don’t understand, its that their careers depend on the prosecution of these claims by paying clients – clients who generally expect to *get something* when they pay for these services and may stop filing and paying for services if they no longer *get something*.

        when paying the mortgage is contingent on a particular line of reasoning necessary to *get something* for your clients, no matter how contorted that reasoning may be, you tend to contort your worldview to agree with it.

        1. Nothing like spinning an obvious falsehood that attorneys “just do this for the money”….

          But hey, such slander is only at the expense of attorneys so it “goes” here…

      3. “It is difficult to get a man to understand something, when his salary depends upon his not understanding it!” – Upton Sinclair

    4. NWPA The abstract idea has eclipsed the flash of genius as the most patent rights destroying judicial creation.

      Oh the humanity!

    5. Hopefully cases like this one will do for “inventive concept” what Great A&P Tea Co. did for the “flash of genius,” i.e. prompt Congress to redraft the statutes in such a way as to make clear that the Supreme Court has gone badly off the rails.

      1. Hopefully cases like this one will do for “inventive concept” what Great A&P Tea Co. did for the “flash of genius,” i.e. prompt Congress to redraft the statutes in such a way as to make clear that the Supreme Court has gone badly off the rails.

        But flash of genius was judicially created where Congress hadn’t spoken within their power. The judicial exceptions are outside of Congress’ power. There’s no statute they could write which would make a judicial exception eligible.

        1. I do not think that this is correct. If Congress were to amend 101 to say “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, software alogrithm, or isolated biomolecule, or any new and useful improvement thereof…”, Congress would over-rule the SCotUS’ judge-made exception, and SCotUS would simply have to give effect to the statutorily-expressed will of Congress. The judicial exceptions are not matters of Constitutional law.

          1. The judicial exceptions are not matters of Constitutional law.

            100% sure that you are dead wrong about that, Greg, at least with respect to the patenting of abstractions (e.g., information, including correlations and “natural laws”).

            The First Amendment is going to easily trump any attempt by Congress to “legitimize” the practice of attempting to protect information with patents.

            More importantly, the political will to write such legislation is non-existent outside of the tiny bizarro world bubble of patent expansionists.

            1. 100% sure that you are dead wrong about that, Greg, at least with respect to the patenting of abstractions (e.g., information, including correlations and “natural laws”).

              I have been wrong before. Care to cite a case? I am open to correction.

              The First Amendment is going to easily trump any attempt by Congress to “legitimize” the practice of attempting to protect information with patents.

              Does the First Amendment nullify the Copyright Act? After all, copyrights create a limitation as to what information you are allowed to recite and reproduce?

              More importantly, the political will to write such legislation is non-existent outside of the tiny bizarro world bubble of patent expansionists.

              As I said elsewhere, you may well be right about this. I have very little sense of the popular sentiment about software patents. I would not care to wager one way or the other about the likelihood of Congress amending section 101.

              1. Greg: Care to cite a case?

                I don’t need “a case”, Greg. And you shouldn’t need one either. All I need — and all that nearly everyone needs to understand my point — is some oxygen and a working brain that isn’t buried in the sand pretending that we live in some alternate universe where you can patent information. Maybe you should try harder. Just a little harder. Do you understand yet why your previous statements about protecting abstractions with patents were completely erroneous and impractical? Last time I checked you never acknowledged that.

                Does the First Amendment nullify the Copyright Act? After all, copyrights create a limitation as to what information you are allowed to recite and reproduce?

                Again, Greg, tast time I checked there were some pretty significant restrictions in the Copyright Act about what you could protect. Something about “expressions”, as opposed to the underlying information? And then there’s that “Fair Use” bit. Do you recall where the concept of Fair Use came from, Greg?

                I have very little sense of the popular sentiment about software patents.

                You should educate yourself.

                1. Wait a minute, you are “100% sure” of something about which there is no case to cite? If I know one thing about the law, it is that there is no such thing as 100% certainty in advance of the decision, even if there is a controlling precedent. But where there is not even controlling precedent…

                2. Educate me as to how the First Amendment impacts the utility protection afforded by patents (in direct contrast to the expressive protection afforded by copyright).

                  Come astound me with your grasp of the basics.

                3. Greg: Wait a minute, you are “100% sure” of something about which there is no case to cite?

                  Indeed, Greg.

                  It’s called having a brain and knowing how to use it.

                  Someday you might understand.

                4. ” If I know one thing about the law, it is that there is no such thing as 100% certainty in advance of the decision”

                  I was 100% certain of the result in Myriad and noted exactly why they’d hold the way they did. Poof, they held exactly the way I said they would. Because I knew dat lawl and so do they. It was easier than a straight-forward 102.

              2. I have been wrong before. Care to cite a case? I am open to correction.

                Start with Graham, section II, which places the Court and Congress’ roles into the proper context. There’s also what you would call a pre-52 case that goes into it quite extensively. As a similar situation, there’s some writing on the “technical arts” requirement – i.e. previous courts (and some members of the current court) think it is beyond Congress’ power to grant a patent outside of the technical fields. That would also be an example of the Constitution limiting Congress’ power to grant as they please.

                Does the First Amendment nullify the Copyright Act? After all, copyrights create a limitation as to what information you are allowed to recite and reproduce?

                But if you know Copyright you know that a) the courts have litigated the first amendment/copyright issue before, which suggests the same should(/has) be done in the patent context and b) Copyright (as with patents, though that appears less clear to some) only protects particular expressions of ideas, and not ideas themselves, and is thus similar to a “manner” (as in time, place, manner restriction) restriction on free speech. The use of ideas is simply beyond Congress’ power to control.

                This is why we can have Superman, a story about an alien that comes to earth, is super strong, can fly, and fights villains while drawing power from our sun, and still also have Thor, a story about an alien who comes to earth, is super strong, can fly, and fights villains while commanding lightning. The former can shoot heat from his eyes, the latter fights a guy who shoots heat from his eyes. And yet the makers of the Superman movie didn’t sue the makers of Thor, because it was not their ideas which were protected (as those are free to all) but because Superman didn’t appear in the Thor movie.

                As I said elsewhere, you may well be right about this. I have very little sense of the popular sentiment about software patents. I would not care to wager one way or the other about the likelihood of Congress amending section 101.

                Even ignoring the citations to what the Court says, how can you argue against the fact that since ’52 the court has again said that abstract ideas and the rest of the exceptions exist, and then in the AIA Congress chose not to amend 101? I’m assuming you’re aware that the court presumes congress is aware of its decisions, and thus an interpretation, followed by a revisitation to the statute with no change, operates as a blessing and gives the Court’s previous interpretation the force of law.

                So even assuming Congress was not constitutionally bound, you can’t argue that based on Court precedent, Congress has ratified the interpretation, and further makes no moves now to undo what the court has been doing yearly for years.

                1. ^ was in response to the statement that Congress would statutorily allow abstract ideas or naturally occurring things. The answer is they cannot, as that statute would be unconstitutional.

          2. The judicial exceptions are not matters of Constitutional law.

            Incorrect. That is exactly what they are. This is why your thinking on this is wrong.

            1. The “mooring” to the constitution is frail at best – pay attention to the use of “may” and note the pure conjectural basis.

              As scriviners themselves, the Court fails. If – and a mighty big if at that – you give weight to their words, then you necessarily remove their authority as they dwell in the future and there is no present case or controversy for such future projected ‘wrongs.’

              The emperor has no clothes and the townsfolk shower nothing but lavish praise on the raiments that are not there.

              1. The “mooring” to the constitution is frail at best – pay attention to the use of “may” and note the pure conjectural basis.

                Ah, now you not only presume to know Congress’ intent, but the Supreme Court’s job as well. Why not tell us what the PTO should do and just go for the trifecta.

                If – and a mighty big if at that – you give weight to their words

                Well, I suppose you don’t have to, you just choose to not sue in an American court.

                then you necessarily remove their authority as they dwell in the future and there is no present case or controversy for such future projected ‘wrongs.’

                You think that the privatization of a public right doesn’t amount to a controversy?

            2. You have made many well reasoned and thought provoking constitutional arguments this evening, starting with your post at 5:40 pm. I am afraid that there is not time this evening to write a response worthy of your well made points. Hopefully I will get a chance tomorrow to respond. If not, I thank you for a chunk of pleasant food for thought.

            3. I am really intrigued by your hypo about a piece of paper with e=mc^2 on it. I confess that I have never encountered that one before, and it has rather set me back on my heels.

              In any event, I have responded to the Con law argument in post 16 above. As noted above, I am not convinced that the subject matter exceptions can be regarded as a matter of constitutional law.

              That said, you make a worthy point about the unsupportability of my own argument that prior art should not be a part of the section 101 analysis. I am going to have to rethink the way I understand 101. I thank you for this chunk of enlightenment.

              1. That said, you make a worthy point about the unsupportability of my own argument that prior art should not be a part of the section 101 analysis. I am going to have to rethink the way I understand 101.

                Good idea. How long will that “rethinking” take, Greg?

                Hopefully you haven’t already published anything or advised clients based on your misunderstanding.

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