Sequenom: A great discovery should be worth something!

Sequenom v. Ariosa (on petition for writ of certiorari 2016)

Sequenom’s petition for writ of certiorari argues that the Federal Circuit and the lower courts have “dangerously overextended Mayo” and its bar to patent eligibility and that clarification is needed from the U.S. Supreme Court.   The science at issue is fascinating and stems from the problem of running dangerous fetal DNA tests.  The discovery here was that fetal DNA can be found floating around the blood of the pregnant mother and that the fetal DNA can be selectively amplified by focusing on the paternally inherited portion of its DNA (rather than the maternally inherited).  Sequenom’s patent claims two simple steps: (1) amplifying paternally inherited DNA from a plasma sample taken from a pregnant female and then (2) detecting the presence of the DNA.  Of course, the technology for these two steps was already known in the art at the time of the invention, and these two steps were (and are) the fundamental steps generally used to detect particular DNA molecules.  The Federal Circuit found these claims unpatentable under Mayo v. Prometheus because they effectively claim the unpatentable natural phenomenon: the existence of paternally-inherited cell-free fetal DNA (cffDNA) in the maternal bloodstream.

The petition for writ of certiorari asks the patent eligibility, but does so in a way that attempts to also lead the court to the answer:

Whether a novel method is patent-eligible where: (1) a researcher is the first to discover a natural phenomenon; (2) that unique knowledge motivates him to apply a new combination of known techniques to that discovery; and (3) he thereby achieves a previously impossible result without preempting other uses of the discovery?

The brief here does a good job of attempting to set-up some dividing lines for the Court – if it wishes to draw them.  The petition will have strong support from industry as well as many in academia.  However, it is unclear whether a ‘win’ here for the patentee would translate to support those seeking to patent software inventions.

[SequenomCertPetition]

About Dennis Crouch

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

204 thoughts on “Sequenom: A great discovery should be worth something!

  1. I read in my CIPA Journal yesterday that CIPA (the UK’s Chartered Institute of Patent Attorneys) submitted an Amicus Brief. CIPA sits on an island in the Atlantic Ocean mid-way between the EPO and the USPTO, the home of English law but nevertheless these days embedded in the mainland European Romano-German civil law thinking that holds sway in Japan, China and a good deal of the rest of the world. The invention here was of course conceived on the island.

    One would therefore think that the CIPA Brief would be worth reading.

    Can any kind reader put up a Link that will take me to that Brief? Would be very grateful. Thanks in advance.

  2. Title is a red herring. Infringement is the real issue. A product may be sold, and title transferred, without authorization from a patentee. If the product is covered by a patent and the sale is not authorized by the patentee, the sale constitutes infringement of the patentee’s right of exclusivity and necessarily results in a transfer of title (a sale is a transfer of title).

    The purchaser continues to own the product and does not infringe the patentee’s right of exclusivity unless the purchaser sells or uses the product without the patentee’s authorization. Even if the purchaser infringes by unauthorized use, the purchaser (not the patentee) continues to hold title to the product.

    If the patentee sells the product in the United States, the US patent rights are exhausted and can no longer be enforced in the United States. Since US patents are limited to the US, they cannot be enforced outside the US. Consequently, so there can be no exhaustion outside the US.

    1. Steve, under the law, one cannot sell something and retain title. Your post seems to suggest that one can.

      1. Steve also seems to think that there is no such thing as exhaustion – that even if you sell something, the person you sold the item too cannot sell it herself, less she commit patent infringement.

        I think he is “off” on more than just the article.

  3. Ned: It does not cover an existing process. There is no 101 problem.

    Thankfully, Ned, that’s not the test for the subject matter eligibility of a method claim.

    This isn’t terribly difficult stuff, as I’ve noted many times, but there’s a bit more to it than “hey it’s new!”. You should know better by now, as should everyone else. There’s no excuses for completely missing the boat in 2016.

    1. “Detecting” natural phenomenon using prior art detection t0 0ls designed for that purpose is ineligible subject matter for the simple reasons that I and RG and the CAFC have provided. Granting broad “detect this ‘new’ thing using prior art t0 0ls designed for that purpose” patents inevitably leads to a land rush by the gr ifting class trying to free ride on the patent-worthy discoveries of others (in this instance, PCR). Is that what happened here? Probably not, but that doesn’t change the fact that the claim being sought is exactly that kind of ju nk. Learn to write better claims to avoid this problem and you’ll be g0lden. It’s not difficult.

      The best way to promote progress in detection techn0l0gy is to grant patents on new detection devices, not to burden existing technology with endless “detect this thing” and “detect that thing” patents.

      1. Spammy MM does it again. They shouldn’t allow patents on new alloys. It is ridiculous. They should just allow patents on new smelting equipment. As if that makes sense….

        There really is no sense to anything you write MM. You are a total propagandist and judicial activist for the anti-patent movement. Clearly a paid blogger.

        1. There really is no sense to anything you write MM.

          LOL

          Maybe next time you can try to address what I actually wrote instead of pulling some b iz arr0 strawman out of your behind and attacking that.

          As we predicted long ago, the rich entitled class of patent maximalists will never, ever stop whining that they don’t have enough patents. It’s all that they know how to do. They take themselves very seriously but nobody else should because the more you listen to them the quicker you realize that (1) they don’t know what they are talking about and (2) they don’t care about anything except themselves.

          NWPA is a quintessential example of these perpetually mewling babymen.

          1. Maybe next time you can try to address what I actually wrote instead of pulling some b iz arr0 strawman out of your behind and attacking that.

            Malcolm at his AccuseOthersOfThatWhichMalcolmDoes finest.

            What a putz.

            1. What a putz.

              And like clockwork in steps NWPA’s longtime bff “anon” to spew an insult and nothing else.

              “Alloys are ineligible for patenting because of people like you. Just like terr0rists!”

              Complete bal0ney but, hey, whiny little babies love to play with bal0ney. And NWPA and “anon” are the whiniest little babies out there.

              Cry me a river, babymen! What a pack of entitled cr e e ps.

        1. MM doesn’t want to know this. He just wants everything to not be patentable.

          I’ve finally figured out that MM is in this area. That’s why he understands basically nothing about computer science and electrical engineering.

          1. PB: MM doesn’t want to know this. He just wants everything to not be patentable.

            Oh, lookie here comes PB the big li ar again! Can you imagine? A patent attorney who li es his behind off all the time because it makes him feel good! Nobody could have predicted such a creature showing up in a subject matter eligibility thread.

            I’ve finally figured out that MM is in this area.

            Wow! A real Sherlock Holmes! Yes, I have a Ph.D “in this area”. Surprise! I’ve only said so a thousand times.

            he understands basically nothing about computer science and electrical engineering

            LOL Comp00ters is teh hard! It’s especially hard to figure out how they look up rules and compare stuff in a database. Whoooo boy it just makes everybody’s head spin!

            In fact, like a lot of people who are a lot smarter than you, PB, I started programming at age eleven. That was a long time ago. Since then I’ve collaborated with some of the sharpest computer programmers out there, both during my graduate career and (of course) during my career as a litigator.

            Fyi, I’ll add you to the long list of the junk patent lovers who deride their critic’s intelligence but who are incapable of understanding straightforward arguments or writing one in basic English. Just keep crying, crybaby! There’s more to come.

          1. Yes, MM I misspoke.

            No one tested maternal plasma for DNA. I think those were the facts here. Of course, the facts may not be correct.

            1. No one tested maternal plasma for DNA. I think those were the facts here.

              Nope. Wrong again. People tested maternal plasma for DNA and they even used PCR to do it.

              That’s an important fact: there’s nothing special about maternal plasma that prevents PCR from detecting DNA floating around in it.

              Heck, people were even using reverse PCR which is more complicated and requires more enzymes to detect RNA in plasma. And RNA is more labile than DNA.

              Anything else?

              1. Nope. Wrong again. People tested maternal plasma for DNA and they even used PCR to do it.

                Not sure if that is on the record before us….

                I “get” why you want to “say so,” but the mere “say so” – especially from you – is just not all that compelling.

    2. Yes, it also has to be useful. It can be invented or discovered.

      It always helps to go back to the actual law:

      “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.”

      These claims seem to meet the requirements: The relate to a discovery of a new and useful process.

      1. PB: It always helps to go back to the actual law:

        It also helps to understand that the Supreme Court interpets laws and pretending that they haven’t interpreted 101 numerous times in 9-0 decisions that will never be overturned is something that only a deceitful or incompetent attorney would do.

        If you want to sit in an ech0 chamber and freely weep with your fellow feeble-minded hacks about perfectly reasonable Supreme Court decisions, then you know where to go. Or you can dry those tears and grow up. Or just admit that you lack the brains to have the discussion.

        Make the best choice for you.

      2. PatentBob, the process was not the discovery. The fact that fetal DNA was present in maternal DNA was the discovery. A fact. A fact of nature.

        When a law of nature, a natural phenomenon or product of nature is involved, the claim cannot be on it. What can be claimed is a new process using the discovery.

        Here the process claimed was new because of the testing of the maternal plasma for maternal DNA was literally new.

        I just say that it seems clear that the Feds did not understand Mayo. There was no new process at all. Everything was old but the information obtained. To allow such a patent would be to make infringements of people who practiced the prior art.

        1. Ned: The fact that fetal DNA was present in maternal DNA was the discovery.

          No, that wasn’t the “discovery”. If you can’t keep the basics facts straight please just stay out of the discussion. It’s the right thing to do.

          the testing of the maternal plasma for maternal DNA was literally new,

          It was very well known that there was maternal DNA in maternal plasma. Please get the basic facts straight.

          What can be claimed is a new process using the discovery.

          Sure. What’s being claimed here is not a new process for using “the discovery” but a broadly defined old process for detecting “the discovery”. It’s a huge distinction and a big problem for the applicant on a number of legal fronts.

          1. MM, I misspoke there.

            However, if the petition summarizes the facts correctly, it was not known that maternal plasma had fetal DNA.

            Now if this is not factually correct, we have a different case.

            From the first two sentences in the petition:

            “In 1996, two doctors discovered cell-free fetal
            DNA (cffDNA) circulating in maternal plasma. They
            used that discovery to invent a test for detecting fetal
            genetic conditions in early pregnancy that avoided
            dangerous, invasive techniques.”

            Is there something special about cell-free?

            1. Now, MM, it is my contention that the operative facts are that no one prior to the invention used any method, new or old, to

              “detecting paternally inherited nucleic acids”

              in

              “maternal plasma,”

              which seems to be term used for “non-cellular fraction” of maternal blood.

              This process is literally new.

              1. All that’s “new”, Ned, is the natural phenomenon being detected.

                You’re argument (like Sequenom’s) is semantic.

                Thankfully there are tons of experienced patent attorneys like myself out there who see right through the sorts of arguments you’re making. And we all know what happens to those arguments when we get to the Supreme Court (which we most likely won’t because why would they waste their time?).

                1. MM, it does look like we do have another disagreement on what the Supremes are likely to do when they take this case, and I think they will take it.

              2. Ned, you prompted me to look again at the EPO decision and I find it to agree with you on what is the contribution to the art and the patentable novelty. Now, was it obvious? At the EPO, the Opponent bears the burden of proof, under the EPO’s special Problem and Solution Approach and in this case that was quite a challenge for the Petitioner for revocation. Besides, the Petitioner didn’t even turn up, to present its case at Oral Proceedings.

                Which all goes to show how hard it can be , once a patent is granted, to get one of its claims struck down as obvious.

                1. Max, unless, as you can say the patent solves a known problem with a solution that was trivial, I daresay that patent should not be invalidated for lack of quasi novelty we know as lack of invention.

                  At the USPTO, unfortunately, petitioners are using the claims themselves to find reference that, combined, have all the limitations, filing petitions and then having patents invalidated under the ritualistic chants of KSR.

                  1. I daresay that patent should not be invalidated for lack of quasi novelty we know as lack of invention.

                    whaaaatttt?

                  2. As pointed out in the Committee Report, it has been recognized for well over a hundred years that not everything which is new is capable of being patented. The newness, that is the difference over what was previously known, must be sufficient in character, or in quantity, or in quality, in order that the new thing may be patented. This requirement has commonly been referred to as the requirement for the presence of invention; when the requirement is not present it is stated that the subject matter involved lacks invention. The comparison is between the subject matter claimed to be patentable and what is disclosed or described in the available statutory prior art material, and it is irrelevant whether the claimant knew or did not know this prior art material. The inventor may indeed have made an invention in the psychological sense, but it would nevertheless not be patentable if the quantum of novelty over the prior art material of which he may have been in total ignorance was not sufficient. This requirement for invention with which we are here concerned is more of a legal concept than a psychological one.
                    The source of the requirement under the prior statute has been variously attributed. The opening clause of old R.S. 4886 which specified the classes of patentable subject matter (see section 101), began “Any person who has invented or discovered any new and useful art, machine, etc.” Two requirements may be found here: novelty (although novelty is further defines to referring to the conditions which defeat novelty), and utility (which condition is not further defined). The use of the word “invented” in this phrase has been asserted as the source of the third requirement under discussion. However, a different origin, with which the language and arrangement in the new code are in harmony, has also been stated. This is that the requirement originally was an extension of the statutory requirement for novelty. Expressions such as “patentable novelty” and “patentable difference over the prior art” have been often used as synonyms, and the problem involved is in fact an assessment of the quantum or quality of the novelty present. The famous “doorknob case” in the Supreme Court, Hotchkiss v. Greenwood, 52 U.S. (Dec. term, 1850), is usually cited as the first case to make requirement. It is commonly stated that this case involved the question of invention in making a doorknob from clay or porcelain, but this was not the actual question involved, and the decision of the court plainly implies that if the patentee had been the first to make a doorknob of clay or porcelain there would have been no question as to the validity of the patent involved. The actual facts were that doorknobs made of clay or porcelain were old and that doorknobs made with a certain shaped hole for attachment of the shank, but made of metal, were also old; the doorknob of the patent had the old shape of the metal doorknob and was made of clay or porcelain, the old material for making other doorknobs. There would be very little question today as to the unpatentability of a device with such a difference over the prior art. The Supreme Court, with a dissenting opinion, found the patent invalid as involving no more “ingenuity and skill” than possessed by “an ordinary mechanic acquainted with the business.” Although other language is also used, one quotation from the decision is significant, “No one will pretend that a machine, made, in whole or in part, or materials better adapted to the purpose for which it is used than the materials of which the old one is constructed, and for that reason better and cheaper, can be distinguished from the old one; or, in the sense of the patent law, can entitle the manufacturer to a patent.” This would place the matter on the basis of novelty, the new machine cannot be distinguished from the old, hence it is the same, and is not novel in the sense of the patent law. Even before the date of this decision, expressions such as essentially anticipated, not essentially new, substantially alike, and not materially new, are found in some decisions.

                    Federico on the new 103.

                  3. In pieces – this filter bl0ws

                    How in the world does a block quote from Federico – with nothing more – support your frankly
                    0ut
                    land1sh
                    statement at 4:22 pm above regarding NOT invalidating?

                  4. Federico speaks of the true (and remaining) value of the pre-1952 opening clause (now 101) – quite different from the conflated attempts we see in those attempting to re-write history as if the Act of 1952 did not happen.

                    Add to this the other architects recollection (see the Hricik side of the blog), and it is beyond clear that I have a far better handle on this material than you.

          2. Here is the claim at issue:

            21. A method of performing a prenatal diagnosis,
            which method comprises the steps of:

            (i) providing a maternal blood sample;

            (ii) separating the sample into a cellular and
            non-cellular fraction;

            (iii) detecting the presence of nucleic acid of fetal
            origin in the non-cellular fraction according
            to the method of claim 1 [that is, by (i)
            amplifying and (ii) detecting paternally inherited
            nucleic acids, and];

            (iv) providing a diagnosis based on the presence
            and/or quantity and/or sequence of the fetal
            nucleic acid.

          3. If you can’t keep the basics facts straight please just stay out of the discussion. It’s the right thing to do.

            IF ONLY Malcolm would adhere to his own advice offered here….

            1. …tell me about the facts regarding inherency and how [Old Box} magically somehow has ALL future innovations that come by way of the manufacture known as software already in there.

              And then tell me how you “stay out of the discussion” – (and staying out AFTER you dump your pile of C R P in a drive-by monologue does not count).

              Yeah, thought so.

  4. Max said: (Note that the paid bloggers are probably going to spam the thread because they don’t like this message.) This is exactly right.

    The Petition cites the equivalent Decision in Europe (T0146/07) to dismiss the attacks on validity. Mindful of the prohibition (Art 52(2)(a) of the EPC) of patents for “discoveries, I turned to the Decision, curious to see what claim was found to be not invalid. Here it is:

    1. A detection method performed on a maternal serum or plasma sample from a pregnant female, which method comprises detecting the presence of a nucleic acid of foetal origin in the sample, wherein said nucleic acid is a paternally inherited sequence which is not possessed by said pregnant female.

    WHAT! No separating step? No amplification step either? Discovery? Pre-emption anybody?

    Fun, isn’t it, how claims to the same (?) invention vary, from jurisdiction to jurisdiction. Mind you, the view at the EPO is that the Inventor who makes a new and inventive contribution to the useful arts ought to be in line for a patent on it, but only insofar as the scope of the claim is commensurate with the contribution to the art. As here, I would say.

    1. Ah, but did you note just how quickly MaxDrei turned tail and became docile when challenged by Malcolm?

      Memories of the fire hose when reaching for a banana…

      …or the dangers of maintaining a “false” politeness instead of a healthy debate (over whatever point MaxDrei had originally thought of contributing).

      Apparently such is the “desired” ec(h)osystem

      1. Yes but:

        i) see 7211111 below. The petitioner for revocation in Europe ducked out of disputing validity before the case went to the decisive January 2011 Hearing before the EPO Appeal Board. For whatever reason, Petitioner lost its motivation to dispute validity before the Board came to a decision.

        ii) my position is that the EPC text is Quality, but that not all advocacy under the EPC is of adequate quality. Poor quality advocacy does not prove that the substantive law of the EPC on patent validity is also poor. MM expressed himself unimpressed by the quality of the Petitioner’s advocacy on his side of the Atlantic.

        iii) so I don’t see it as an issue whether I am “docile” and at what point in the discussion I became “docile”. Even if few others do, I for one would like to see more inventions made in Oxford enjoying strong commercial success;

        iv) at the EPO, fact-finding is different from what it is before a court in England. No discovery. No cross-examination. MM’s view of validity might accord quite closely with what an English court would find, after discovery and x-exam. He knows this technical field, and I don’t.

  5. “Whether a novel method is patent-eligible where: (1) a researcher is the first to discover a natural phenomenon; (2) that unique knowledge motivates him to apply a new combination of known techniques to that discovery; and (3) he thereby achieves a previously impossible result without preempting other uses of the discovery?”

    I thought the whole issue in this case was that the court determined 3 to not be the case in this particular instance?

    1. Yes, whether or not some of the claims here are so broad as to preempt every possible test of the unborn child as long as it is done from a sample of the mother’s blood, does seem very much of a still-open issue here? Especially since they are not claiming or limited to any unconventional or specific testing methods.
      It depends on how one defines “preemption.” But it would not make sense to define”preemption” so broadly as to encompass prior art blood tests on blood from any other sources since no valid claim can preempt prior art.

        1. All claim pre-empt.

          Right. That’s why “pre-emption” is only a problem when a particular claim or class of claims “pre-empts” ineligible subject matter that belongs to the public. That’s certainly the case when the applicant attempts to broadly monopolize the use of a conventional detection tool to detect a natural phenomenon that the applicant “discovered” through the use of the coventional detection tool.

          Pretty easy stuff. You’d have to be a captured agency (like the PTO) or someone trying to directly capitalize on the PTO’s incompetency to struggle with this one. It sure the heck ain’t about “women’s health” (and let’s face it: the class of attorneys favoring patent maximalism are the last people on earth we should be looking to for advice on that front).

          1. Not sure what your point is.

            ALL claims “broadly monopolize” (to use your words) what they claim.

            It’s more than a misnomer to rely on “conventional as you attempt to do, conflating 101 with 102/103.

            That’s just the Big Box of protons, neutrons, and electrons in action for you.

            1. “anon”: t’s more than a misnomer to rely on “conventional as you attempt to do, conflating 101 with 102/103.

              And again we see the patent maximalists pretending that they didn’t get their b-tts handed to them in Mayo.

              Do they think they’re f00ling anybody? Are they ign0 rant? L i ars? Or both?

              The last option seems most likely.

              1. Except not – as has often been pointed out (you might notice this if you actually engaged the counter points put on the table for discussion)

                Same old Merry Go Round from Malcolm…

                1. “anon” the counter points

                  Ah yes, those “counter points” that were “never addressed.” Sure they weren’t! Because “anon” says so. And he’s super serious.

                  He’s not a totally crazzy g00n with severe antis0cial tendencies. Nope. He’s super serious!

                  Sure he is.

                  1. Malcolm, your type of “address” simply does not count because it is void of any cogent legal points and is just your typical recitations from your short script (which includes the ultra banal “so serious” line of C R P).

                    But you already knew that, eh pumpkin.

      1. >>Yes, whether or not some of the claims here are so broad as to preempt every possible test of the unborn child

        1) There is patent law that polices claims that are so broad as to cover new inventions.

        2) So, what you are saying is you can’t claim what you invented/discovered. That is the real agenda here. Just bizarre. Only people that are completely ignorant of science and innovation would take views like this.

        But, don’t worry. Google is going to take care of that innovation thing that is needed for the economy like Goldman Sachs takes care of the financing part of the economy. No worries. Everyone just needs to get a job with Google or Goldman.

          1. iwasthere: An extremely narrow claim today – will look extremely broad in the future.

            What about the extremely broad claims, like the claim at issue here?

            What will they look like in the future?

            The answer is that they will look like bad j0 kes.

  6. 101 Skeptics should be clamoring for this claim to not reach SCOTUS. Yet another example of a claim that has been struck down by 101 for convenience and could not survive rigorous post-KSR 103 anyways.

    Until the bar can locate such a case there will be no 21st century Diehr. There is a reason Mr. Heller was not a DC gangbanger and Citizens United was just a group that wanted to run a documentary on Pay-Per-View: Good facts make good law. Maybe we as patent practitioners should learn this fundamental aspect of advocacy.

    1. You’re saying Citizens United is “good” law?

      “The Citizens United ruling, released in January 2010, tossed out the corporate and union ban on making independent expenditures and financing electioneering communications. It gave corporations and unions the green light to spend unlimited sums on ads and other political tools, calling for the election or defeat of individual candidates.”

      link to publicintegrity.org

      To me, this “law” has allowed a truly shocking amount of money to flow into political campaigns. We’re talking on the order of hundreds of millions of dollars for campaigns. I’m not sure that’s a good thing.

      1. PatentBob, since the Bill of Rights, the press (the loud voice of its owners, who are companies and unions) has been protected. The First Amendment is not simply about the rights of individuals.

        Saying that companies and unions have loud voices because they have money does not change the fact that they are like the press when they speak. Powerful voices are needed and desired in elections.

        That said, the stink of corruption of certain politicians throughout their entire career, from the time they made 100,000 in one day on a paltry investment, to the numerous “speaking engagements” at ridiculous fees, to using influence and power to obtain enormous “contributions” from Sheiks. The scale of corruption is something to behold. Holding power to this person is solely about influence peddling and always has been.

        I am glad that Sanders is running against such corruption. I wonder why he does not point fingers.

        1. On, and just to be fair, there is another politician in this race who openly admits to buying influence. I don’t like this side either. Crony capitalism. We need to stop electing corrupt politicians.

          1. Except a corporation is not like the press at all. The corporation is pushing their particular point of view. The press is at least theoretically supposed to be unbiased and at least has some forces to make it so. Much like the checks and balances in our Constitution.

            1. Nettles, the pattern with you is consistent. You see nothing wrong with not telling the full truth when it suits you. Typical Nettles: press and corporations: similarity both put out information to the public. Differences: massive to an intellectually honest person, but for the Nettles no difference because it suits his nasty little world views.

              You see that is why you are intellectually dishonest and worthless for any type of intellectual discussion. That is why I do not engage you in real discussions because you think nothing of ly ing.

            2. Much like the checks and balances in our Constitution.

              Perhaps a little less “compelling” and a little more “on point” for our “blog ecosystem,” once upon a time there were blog posting rules that indicated that such “corporate speech” was not allowed in the blog comments, that all comments were limited to personal views.

              I have demonstrated conclusively (and as feedback to a previous Prof. Crouch call for “clean up yhe ecosystem”) that Ned’s non-personal posts led only to gamesmanship, shi11ing for a particular viewpoint, the absence of FULL discussions on the merits, and plainly twisted and incorrect portrayals of law, facts and history.

              When “truthiness” is treated as merely a convenience and something to be selectively adhered to based on business objectives, we have entered an Orwellian system of government in the mega-corporatism mode.

              That’s not good for anybody.

              1. anon, I think that is basically right. I think there are propagandist, advocates, and intellectual discussers. The propagandists like MM push visions and fabricate a whole new reality. The advocates tend to just ignore facts to push their position. The intellectual discussers tend to be interested in the understanding what is going on with the law. The propagandists are the anti-patent judicial activist.

                But, –in reality–you can’t really have a discussion with propagandist or advocates. You can understand their positions and dig for weakness, but there is never going to be a meeting of the minds. They have an agenda and that is all that matters to them.

            3. Night, pamphleteers. Who the are they, but people who had loud voices because they had publishers behind them.

              The point here is that loud voices are required in politics, otherwise the vested interests cannot be turned out. That is what is behind the first amendment in the first place.

                1. anon, I am not following the point. The press is made up of companies that have markets for their views and communicate via media. The press is not made up only of those who express approved views. Nor is access to the people or media limited to certain people.

                  I think the founders wanted everyone the opportunity to speak, including those who communicated with printing presses. Today, those presses have been expanded to include the internet, TV, radio and whatever.

        2. The fact that you would even compare the press to a corporation illustrates that you are intellectual dishonest and a scoundrel.

      2. I think he is saying that you should find a vehicle that has good facts if you want to win your point at SCOTUS. The facts in Citizens – was a movie that was, without question – political speech. And, therefore, having the highest chance of being protected.

        1. No crap. I pointed to two cases where the people advocating won. They won against huge entrenched interests, they secured a change in law that not only helped them but changed the course of the law in that area.

          Civil rights attorneys do this all the time as well, they find the nicest old couple who just wants to get married, they find a 11 year old girl who wants to go to school, etc. When did the patent bar forget about the “Bar” portion of their education?

          1. I think you’re given what you’re given. The last bunch of cases for patents have been business methods or testing. They haven’t been on point, but one can’t create on-point cases out of thin air. Until someone brings such a case, you get what you get (and you don’t get upset).

    2. >>by 101 for convenience and could not survive rigorous post-KSR 103 anyways.

      Yes, the SCOTUS decided they would create Alice, which is clearly unconstitutional, for convenience. That is what they did. They are people of very low moral quality.

  7. For what it’s worth, I think the eligibility problem raised by these claims is more easily understood as an extension of Myriad than Prometheus v. Mayo (with the caveat that some might view Myriad itself as an extension of Mayo).

    Remember that Myriad discovered a natural phenomenon that was (allegedly) previously “unknown”, i.e., the existence of a specific sequence(s) in a human chromosome. Myriad then tried to protect this “great discovery” by broadly claiming methods of “detecting” the specified sequence(s) using conventional techniques (e.g., claim 7 of the ‘441 patent). Those claims were tanked as backdoor efforts by the Federal Circuit to restrict access to the ineligible phenomenon (i.e., the naturally occuring sequence) itself:

    From the CAFC’s Myriad v. Ambry decision (2014): Similar concerns to the ones the Supreme Court expressed in Myriad with respect to isolated DNA exist here: allowing a patent on the comparison step could impede a great swath of research relating to the BRCA genes, and it is antithetical to the patent laws to allow these basic building blocks of scientific research to be monopolized.

    The flavor of the claims at issue in Prometheus v. Mayo was a bit different. As everyone knows by now, Prometheus’ game was to protect an ineligible correlation not by reciting a “new” detection method but by reciting an admittedly old detection method and a “new” step of thinking about what the collected data “meant.” Prometheus’ was an equally awful claim (maybe worse), of course, and the underlying concerns very similar in each of these cases (Alice as well, for that matter). But I don’t see the result in Sequenom as a direct application of the Supreme’s reasoning in Mayo mainly because the “novel” aspect in Mayo was a bona fide abstraction (thinking about a correlation) but the “novel” aspect of Sequenom’s claim is a natural phenomenon.

    In all of these cases, of course, the problem is the lack of recitation of “something more” in addition to the natural phenomenon besides the tools, structures and physical transformations that were (1) already in the prior art and (2) known to function in exactly the manner for which they are recited in the claim.

    An obvious question for many defenders of this claim (who tend to be critics of subject matter eligibility in general) is: why is PCR recited at all? If the “great discovery” is that “cell free fetal DNA is in maternal serum” and “103 is the answer!” then what’s the problem with the following claims?

    1. A maternal serum composition, wherein said composition comprises detectable amounts of fetal DNA, wherein said fetal DNA is not in a cell.

    2. A method comprising detecting fetal DNA in maternal serum, wherein said fetal DNA is not in a cell and wherein any effective detection method is used for said detection.

    What is the point of all those extra limitations that were put into the issued claims if all that matters is the “great discovery” of fetal DNA floating around in maternal serum?

    1. All true, Mr. Mooney, I quite agree. See, it isn’t that hard.

      That said, there is a legitimate policy question. Sure, some things are “out there” in nature, undiscovered. Shouldn’t there be room to claim things that are discoveries in nature, but which nonetheless require inventive-like activity to discover? Seems that there is a category of things in nature whose discovery should be patent eligible.

      1. HoPB: Shouldn’t there be room to claim things that are discoveries in nature, but which nonetheless require inventive-like activity to discover?

        First, I don’t know what “inventive-like activity to discover” is supposed to mean. The vast majority — and I mean at least 99.999% — of “discoveries” are made with the intent to discover something.

        As for claiming “discoveries” in general, there is already an infinite amount of room in our patent system to do that. The only restrictions are that the claims can’t protect abstractions and they can’t protect the natural occurring phenomenon itself (e.g., directly, by reciting the structure of the naturally occuring phenomenon, or indirectly, by reciting the detection of that phenomenon using conventional detection methods designed for that purpose).

        Seems that there is a category of things in nature whose discovery should be patent eligible.

        It doesn’t seem that way to me. Why does it seem that way to you? Somehow there are not enough patents? Nobody in America wants to do anything unless they can make a billion dollars off it? What “category of things” did you have in mind exactly?

        1. …because “invention” and “discovery” do not have identical overlap in meaning….?

          (Of course you already knew that, right? :-) )

      2. Hierarchy,

        You raise a good question. On page 26 onto 27, the petition asks similarly in reference to the very first patent which was granted to Samuel Hopkins for an improved method of making potash. (The number is X000001, search X1 as a patent number on the PTO website. See Wikipedia for an explanation of X-Patents. If you knew about these, raise your hand.)

        My attempt at a hypothetical is the discovery that metallurgical slag heaps contain minute amounts of some valuable mineral that can be recovered in commercial quantities using know processes. For a 101 discussion, we must assume the claim to using said slag heaps as feed-stock to the process is novel and unquestionably non-obvious.

        So there it was in plain sight until discovered by an industrious bee. Should the process be patentable?

        (Perhaps a rara avis expert in both metallurgy and bio-tech can improve on the details.)

          1. ALL things – at their core – use existing things.

            Yes, let’s recite pablum and pretend that it’s deep insight!

            Because nobody except “anon” has ever thought about subject matter eligibility before.

            If you start running really really fast guys you might catch up in ten years. Good luck.

            1. Yes, let’s recite pablum and pretend that it’s deep insight!

              LOL – you still cannot connect the dots and figure out that the “pablum” is just my poking fun and that very “logic” that you want to use.

              You funny.

              (more than just a bit thick, but Funny)

    2. MM, I think the idea is not to claim a composition that is not new though discovered, nor an existing process that is in common use where the meaning of the results is new.

      The detection of paternal DNA in maternal plasma to isolate fetal DNA is literally a new process. It does not cover an existing composition. It does not cover an existing process. There is no 101 problem.

    3. besides the tools, structures and physical transformations that were (1) already in the prior art and (2) known to function in exactly the manner for which they are recited in the claim.

      You are doing that conflating thing again…

      Revisit the Big Box of protons, neutrons and electrons…

      Match that against your (1) and (2) – hint; your (1) and (2) are met for everything.

      Talk about needing something more…

      😉

      1. “anon” Revisit the Big Box of protons, neutrons and electrons…

        Keep accumulating those orgones, “anon”! You are a super serious person.

        1. What point are you trying to make, Malcolm?

          That you don’t yet realize that the Big Box is a slap at your “logic”…?

          In that case, “well done.”

            1. You remain blithely unaware of what is going on. Or just choosing to act like that (Vinnie Barbarino meme, anyone?)

              Impressed“….?

              Sure pumpkin.

  8. I’m very surprised at how poor the patent bar is. Oil companies test for oil under other people’s land all the time, yet I’ve never seen a patent for “Applying conventional drilling to this newly discovered source of oil located at X,Y”, which is clearly an eligible claim under most of your thinking. It’s no more anticipated or obvious to think that oil will be in a given geographical location until you test for it than to think that fetal DNA will be in a given biological location until you test for it. Sure oil is *generally* in the ground, but fetal DNA is *generally* within the mother’s body too. The only distinction is a claim to a specific location, which seems to be enough to confer both eligibility and non-obviousness. There’s clear secondary considerations of non-obviousness – there are records of sales of land and appraisals of land value which are inconsistent with knowledge of oil. Seems like we’ve got an allowable claim here.

    Clearly a patent on drilling previously-undetected oil would cut the value of the land and induce the owner to sell to the oil company. Conversely, the land is pretty worthless absent the ability to drill on it, so for 20 years the oil company can rob the landowner of the value of their title. Patent bar is sleeping on the job and costing their companies millions? Billions?

    1. Actually I think I have a whole new scheme here – you can discover oil, monopolize its extraction, get the government to use eminent domain to take the now-worthless land for almost nothing (so long as the market value is appraised while the patent is in force) and give it to you and you don’t even have to pay for rights at all! All of these oil companies are going around paying for rights when they could have gotten the land at pre-discovery values with just a little patent law application.

      1. Not to worry,

        We’re on it like white on rice. Just to this adjacent your neighbors fence:

        What is claimed is:
        1. A method for recovery of conventional non-viscous oil and associated fluids from hydrocarbon formations or reservoirs without the injection of external fluids, comprising the steps of:
        drilling a substantially vertical wellbore into a hydrocarbon reservoir or formation containing non-viscous oil and associated hydrocarbon fluids;
        drilling from the surface at least one well including a substantially horizontal portion intersecting or terminating in close proximity to said vertical wellbore;
        collecting fluids from said reservoir or formation in said at least one well;
        routing fluids collected in said at least one well into said substantially vertical wellbore;
        conducting said fluids to the surface in said substantially vertical wellbore.

        1. Well you could *do that, but then you’d be trespassing. That invention can’t be practiced in my scenario. But you’re missing my point – why don’t oil companies use patents to protect the oil they discover if the discovery + conventional drilling techniques is eligible subject matter?

    2. The specification practically writes itself: “Prior to applicant’s discovery of oil on defendant’s property, the location was a garbage dump.”

      But hey: why limit this principle to fetal DNA and oil? “Prior to applicant’s discovery of the dangerously low levels of yellow spotted tree frogs, this area of the forest was used for logging.”

      I claim exclusive rights to “Detecting yellow spotted tree frogs at location X, wherein said levels are dangerously low.”

      Rince, recycle, repeat ad nausem.

      There really is no such as “too many patents” is there? Three hundred thousand per year is basically chicken feed.

      C’mon, people. We all have to dream so much bigger. After all, a bunch of filthy rich people are telling us that we just have to dream bigger or … China! And they’re very serious! They think really deeply about this stuff. Sure they do.

    3. The specification practically writes itself: “Prior to applicant’s discovery of oil on defendant’s property, the location was a g@rbage d ump.”

      But hey: why limit this principle to fetal DNA and oil? “Prior to applicant’s discovery of the dangerously low levels of yellow spotted tree frogs, this area of the forest was used for logging.”

      I claim exclusive rights to “Detecting yellow spotted tree frogs at location X, wherein said levels are dangerously low.”

      Rince, recycle, repeat ad na usem.

      There really is no such thing as “too many patents” is there? Three hundred thousand patents per year with millions of granted patents in force is basically chicken feed.

      C’mon, people. We all have to dream bigger! After all, a bunch of filthy rich people are telling us that we must have patents on everything or … China! And they’re very serious! They think really deeply about this stuff. Sure they do.

    4. Random, would the following be patentable?

      1. Method for drilling for oil under large building without destroying the building, comprising:

      a. locate drilling rig diagonally across the planet; and
      b. apply conventional drilling techniques to reach oil under said large building.

      1. Assuming it was novel, sure. But being patentable does not make it legal, and slant drilling is illegal. A person owns the sky above and the land below their plot, which is why yours and Les’ comment at 10.1.1 are irrelevant. But in my hypothetical the benefit of obtaining the patent is not to actually practice the invention, but to deny the practice to the rightful owner of the land.

        Your patent can’t be practiced, and doesn’t affect the value of someone else’s land. My patent denies the owner the use of his land. There’s no distinction from a value standpoint whether the land has no oil or whether it has oil that cannot legally be extracted due to infringing a patent.

        But we’re getting off topic – The only question is whether the claim is allowable. According to you it is not claiming the new oil, and indeed it does not, and therefore it is eligible. Further, it is non-obvious because the limitations directed to oil that was not previously known render the claim as a whole obvious. Is the claim allowable or not? If not, why not?

        1. Even if I drill straight down on my land, if I tap a pool of oil that extends under your land, I am still draining the oil from under your land. The angle of the hole doesn’t matter.

          1. Les, farmers do this all the time with water tables. The water table is not the property of one, but the use by one affects all.

            I have not studied this, but there has to be a lot of law on the topic, especially in California.

  9. A great discovery should be worth something!

    I know Dennis has a fondness for the junky claims at issue in this case, although I’ve never understood why. Certainly Sequenom has done a great job slinging its propaganda from day one of this case, relentlessly characterizing itself as some sort of savior of women’s health (total b.s. — and it didn’t work for Myriad either, for the same reason).

    Let’s set aside the “worth something” bal0ney because Sequenom and its fanb0ys are the only entities out there arguing that “discoveries” are not “worth anything” unless you can get a really really really broad patent on the discovery. Sequenom has already made tons of money — hundrdeds of times more than most people will ever see in their lifetimes — off this alleged “discovery.” No tears need be shed for poor little Sequenom.

    And the inventors of this “great discovery”? Surely they will receive the Nobel prize and the highest awards in medicine from their peers, no? Because … “great”. Right?

    Let’s look at the “greatness” of the claimed “discovery” again in the context of the admitted facts.

    1) It was known in the prior art that fetal cells existed in maternal plasma.

    2) It was known in the prior art that where there are cells, there are broken cells

    3) It was known in the prior art that PCR could be used to detect vanishingly small amounts of fetal DNA sequences in a mixture, including mixtures of maternal and fetal DNA

    4) It was known that there is nothing special about maternal serum that prevents PCR from working on it

    Got that? It’s pretty straightforward stuff.

    The fact in (1) is especially important for two reasons. The first is that it utterly destroys the b.s. propaganda that “but for Sequenom’s discovery, women would have to undergo dangerous invasive procedures”. The reality is that amniocentisis is routine and not considered “dangerous” by anyone and, secondly, the reality is that if you are really scared there are non-invasive alternatives.

    In light of the facts, the “discovery” that is actually claimed is the furthest thing from a “great” discovery and anybody who worked with DNA in the relevant time period would recognize that it in two seconds. That’s because the claims cover the mere detection of fetal DNA in maternal plasma using a conventional technique (PCR) which exists for just that purpose (detecting small amounts of specific DNA sequences). From a scientific perspective, it’s just discovering a new asteroid with a telescope and then claiming “Detect this new asteroid with a telescope”. Sure, there might be “other ways” of detecting the asteroid but that’s beside the point. As far as people with telescopes are concerned, you’ve taken the asteroid and put a fence around it.

    Just so there’s no confusion: the claims at issue here do not tell you how to reliably detect fetal DNA from maternal serum. The kinds of details that would make the method work sufficiently accurately and reproducibly such that you could actually sell your service (or a kit) to a pregnant women who are going to rely on the results (e.g., ab0rting the f e tus) are completely absent from the claim. It’s the absence of those novel details that moves the claim into “owning a newly discovered natural phenomenon” territory and dooms it.

    As for the folks out there who believe that the claim is obvious, I don’t disagree with you about that. But claims fail under multiple prongs of the patent statute all the time. Nobody should be surprised by that. Prometheus’ claims were obvious, and so were Myriad’s. As usual, however, the “experts” who whine about ineligibility seem to lose all their expertise and legal training when it comes to protecting the public from obvious junk like Sequenom’s claim. That’s a disturbing trend we’ve been observing for years and it says quite a bit about the credibility of those patent-worshipping “experts”.

    Lastly, here’s another way of looking at the “greatness” of this alleged “discovery” that’s closer to biology than the asteroid example above. Let’s say someone in the prior art discloses a pink alligator in Florida and publishes some unique gene sequences from that alligator. I rush to the patent office and file a claim “Detect pink alligator by doing PCR on pink alligator p00p in Florida, wherein said PCR is specific for pink alligator DNA.” Bear in mind that using PCR to detect animals was known, doing PCR on animal p00p was known, and doing PCR in Florida was known.

    Is my patent claim a “great discovery”? Does the fact that people want to practice my claim make it “great”? Serious questions for all those serious thinkers out there.

  10. The claim is more limited and focused compared to the description in the PatentlyO article. Claim 1 is limited to detecting “paternally inherited nucleic acid” from “maternal serum or plasma sample from a pregnant female” (not just “blood”).

    Yes, PCR and assays were known. But had anyone detected a dad’s dna from a mom’s serum/plasma before?

    And was the patent specification correct when asserted the mom’s plasma/serum was normally thrown out as waste, while only the blood solids were tested in the past?

    As we all know, each claim term needs to be considered.

    If there is prior art, reject under 102/103.

    1. If there is prior art, reject under 102/103

      There is definitely prior art and all the blogosphere “experts” know about it but for some mysterious reason (so mysterious!) none of them appear to be appalled by the granting of this junky, obvious claim (which is also ineligible because it protects a natural phenomenon detection using conventional techniques).

      PCR and assays were known. But had anyone detected a dad’s dna from a mom’s serum/plasma before? PCR and assays were known.

      More than just “PCR and assays” were known. It had also recently become known that fetal cells and fetal cell debris were floating in the maternal blood stream. And it was known that PCR could be used to selectively detect vanishingly small amounts of specific DNA molecules from mixtures of DNA. And it was known for quite some time that fetal DNA comprises sequences derived from both the mother and the father.

      had anyone detected a dad’s dna from a mom’s serum/plasma before?

      Has anyone detected my dad’s DNA from my blood cells before? Nope. But guess what? “Detect sequences derived from MM’s dad in MM’s cells using PCR” isnt patentable, and that’s true even if I was “discovered” just this morning and the claim was filed that afternoon. That claim is both obvious, in light of the prior art, and it’s ineligible because it claims the use of a conventional tool to perform the detection task for which it was designed. You can’t monopolize a natural phenomenon that way.

      Researchers in the sciences know very well what will happen if the doors are opened to incredibly broad patents on “detecting new phenomenon using old tools”. The fact that lots of alleged patent lawyers on the Internets are confused says more about those patent lawyers than you could ever hope to learn otherwise.

      was the patent specification correct when asserted the mom’s plasma/serum was normally thrown out as waste

      “Until the asteroid was discovered, people ignored the space occupied by the asteroid!”

      So what.

  11. The Petition cites the equivalent Decision in Europe (T0146/07) to dismiss the attacks on validity. Mindful of the prohibition (Art 52(2)(a) of the EPC) of patents for “discoveries, I turned to the Decision, curious to see what claim was found to be not invalid. Here it is:

    1. A detection method performed on a maternal serum or plasma sample from a pregnant female, which method comprises detecting the presence of a nucleic acid of foetal origin in the sample, wherein said nucleic acid is a paternally inherited sequence which is not possessed by said pregnant female.

    WHAT! No separating step? No amplification step either? Discovery? Pre-emption anybody?

    Fun, isn’t it, how claims to the same (?) invention vary, from jurisdiction to jurisdiction. Mind you, the view at the EPO is that the Inventor who makes a new and inventive contribution to the useful arts ought to be in line for a patent on it, but only insofar as the scope of the claim is commensurate with the contribution to the art. As here, I would say.

    1. Fun, isn’t it, how claims to the same (?) invention vary, from jurisdiction to jurisdiction.

      What’s really mindblowing is when you consider that claim in view of the fact that the European patent system is incapable of error.

      1. Malcolm I do not assert that the EPO is incapable of error only that the EPC’s scheme of Substantive patent law is to be commended. Here, the Board noted the prior art method with maternal blood and considered whether it was obvious to do it instead with plasma or serum. The Opponent failed to satisfy the Board that it would have been. Now was that a failure of the EPC or of the Opponent?

        1. Now was that a failure of the EPC or of the Opponent?

          Both.

          Unless of course the EPC is precluded by law from understanding the relevant techn0logy. In that case it’s just the Opponent’s fault.

          For the record, I’ve not been impressed at all by the defendants/challengers in the US either. That was true as well of the defendants in every one of the “big” eligibility cases in the US. People make weak arguments or fail to make the best arguments for all kinds of reasons.

          That EPC claim is junk, regardless of how you slice it.

          1. “all sorts of reasons ” M M. Absolutely. Good point.

            Here for example the petitioner for revocation announced that he would not be attending the ‘oral proceedings ‘ at which the Board would decide the case. After having spent all that money he must have had a good business reason , methinks, to withdraw from the field of battle just before the climax.

            1. Max, if the hearing was going to be held in Brussels, I would think that any businessman might be reluctant to attend an oral argument.

              1. Ned the Hearing was appointed for Jan 20, 2011 in Munich, Bavaria, Germany, where all Board Hearings are held. Usually the business people do not attend. Usually it is outside (EPO) counsel doing the pleading, often accompanied by in house counsel, sometimes a technical expert.

                In this case, EPO counsel wrote to the Board some time before the Hearing, announcing that they would not be pleading, and nobody would be coming to the Hearing and that the request for Oral Proceedings was withdrawn.

                If you had just agreed a licence, that would be the logical thing to do. It enables the Board to issue without any Hearing a Decision to dismiss the Opponent’s appeal

                Surprise surprise. The Hearing in Munich was duly cancelled.

                As to Brussels, nobody knows where the next strike will come, from a criminal intent on a glorious exit. Not just in Brussels, that’s for sure.

    2. Not often you see validity upheld to a “method” that only has a single step to it. That’s what we call an invalid single-means claim. Lacks scope of enablement and description at least.

  12. I don’t appreciate the terrain; yet my understanding is the one that is in force as the law of the land, and yours is the protest of such.

    As usual, should I listen to you, or the Supreme Court and the Fed Circuit?

    As for Les’s questions, I don’t see how a new drug (composition of matter) or the Wright Brothers (machine) have any bearing on the 101 exception for natural phenomena.

    I predict no cert. Lexmark? I don’t know since they just took Apple v. Samsung, but they may be in the mood since Lexmark is another example of the CAFC trying to create a whole new form of property law around patents that exists nowhere else. Better shot than this, despite Mr. Goldstein’s eminence.

    1. First of all, I wasn’t commenting on natural pheonomena.

      The drug comment was about the only difference between the claim and the prior art being the work piece.

      The Wright Bros. comment was in response to Ransom’s comment that “The invention is indeed pure information. The claim contains conventional elements which are not pure information, but the invention is the statement “Fetal DNA floats in the Mother’s blood” which is a statement of natural fact.”

      But to your point:

      You don’t think flight is a manifestation of a law of nature? Bernoulli called. He wants your frequent flier miles back. Don’t they have pigeons where you live?…

      You don’t think a new drug is a an application of a natural phenomenon? The boys in the lab determine there is an inverse CORRELATION between the about of Crestor in your blood and the about of cholesterol in your blood….

      … and don’t talk to me about compositions of matter. The Fed. Cir. en banc has decreed that implementing a judicial exception in a machine doesn’t save it. So, implementing a judicial exception in a composition of matter doesn’t save it either.

      1. The Fed. Cir. en banc has decreed that implementing a judicial exception in a machine doesn’t save it? Where is that decree? In DDR Holdings maybe? Please cite.

        anon, the basis for the “abstract ideas” exception is utterly sound, and you utterly disagree with it. the basis for the Alice holding and its application to section 101 is shaky (at best) and I disagree with MM about that.

        Les, if this patent were on PCR + the law of nature, there would be zero doubt as to eligibility. Likewise the Wright Brothers wing warping had never been done before- unrelated to the facts here.

        All inventions are based on laws of nature, natural phenomena, and abstract ideas, as the Supreme Court and everyone else understands.

        But we can’t allow patents on everything or we couldn’t have a free society. Lines must be drawn.

          1. Are you being intentionally obtuse, or do I really have to point out that human technology often mirrors & amplifies similar capabilities that evolved by natural forces?

            Or is the point suggesting that natural phenomena could be considered prior art on some level, thus the judicial exception should be grounded on that basis, rather than a liberty basis that knowledge of the world belongs to no private party?

            1. “do I really have to point out that human technology often mirrors & amplifies similar capabilities that evolved by natural forces”

              Do I have to point out that that is exactly what the above discussed case does? They even use the word “amplify” in the description!

              “Sequenom’s patent claims two simple steps: (1) amplifying paternally inherited DNA from a plasma sample taken from a pregnant female and then (2) detecting the presence of the DNA. “

            2. Are you being intentionally obtuse

              The irony of course is that the very same question can be put to you, Mr. Snyder.

              You are still pursuing this being blinded by your desired end state and not recognizing the terrain (thus, you fail to see a broken scoreboard just because you like what you see there, without understanding why the scoreboard is broken.

        1. anon, the basis for the “abstract ideas” exception is utterly sound, and you utterly disagree with it.

          No.

          You are not listening.

          The ends do not justify the means.

          It really is that simple.

    2. The happenstance of a broken scoreboard aligning with a desired ends does NOT indicate ANY sense of understanding of the terrain.

      That you think this does only confirms how blind your remain.

      And here, I thought that you had been making progress in contrasting your view from Malcolm’s and noting the “insufficiency” of what the Court had done…

  13. In our prior discussions, I had not realized that it was the inventors who discovered cell-free fetal DNA in maternal plasma. I can see that the claim to restricting the isolation of the DNA of the plasma to paternal DNA would identify such DNA from other maternal DNA. Whether that step was innovative is a question better left to 102/103. But the claims do not seem to be to the discovery itself.

    It is interesting how one’s view of the cases changes when one has all the facts.

    1. “Whether that step was innovative is a question better left to 102/103.” That’s a quote that sums it all up for 101!

    2. I can see that the claim to restricting the isolation of the DNA of the plasma to paternal DNA would identify such DNA from other maternal DNA. Whether that step was innovative is a question better left to 102/103.

      Really? So every time technology interacts with something, changing the subject of the interactions reconfers patentability?

      So I have a flashlight. The flashlight gets patented, the patent runs. Then I discover a new cave and a new bat in the cave, and I shine the flashlight on them. Now the act of illuminating the cave and bat aren’t barred by 101 and surpass 102/103 because nobody knew of the bat and cave before?

      The end result is that the person who discovers the bat and the cave can own the cave and the bat because all of the conventional technological uses can be captured by them – you can’t take a conventional photograph or put it under a conventional microscope, etc. The person who discovers the cave owns the cave for 20 years. True?

      That’s what you’re arguing for here – you have known medical tests, and the inventors discovered a new “cave” for you to shine the tests upon.

      There’s nothing wrong with this outcome at all. Not all research is patentable research, nor is every fact that is learned the basis of eligibility. It makes no more sense to say you should be able to repatent the known test than it does to say you should be able to repatent the printing press every time a novel newsworthy story is transcribed.

      1. ^^^ the “logic” of my Big Box of protons, neutrons, and electrons on display.

        Sadly, this from an examiner… (and he remains glibly c1ue1ess as to his line of thinking)

      2. Random, what is prohibited is patenting the law of nature itself.

        In Mayo, everything was old including the administration of a particular drug and the blood test. The only thing new was the interpretation of the data.

        In the present case, the test itself was new because no one even knew before that maternal plasma contained fetal DNA.

        This is like the discussion we had here a few weeks back about whether discovery of a problem could lend patentability the claim solution if the solution was obvious once the problem was known. I think in the end I was convinced that if the problem was unknown, the discovery itself could be the basis of a patent even if the solution to the problem was obvious once the problem was known.

        In the flashlight example, assume that one was using a flashlight to determine amount of dark energy a room when did not even know that one could use a flashlight to measure dark energy or that dark energy was in a room?

        1. In the present case, the test itself was new because no one even knew before that maternal plasma contained fetal DNA.

          That’s true of all natural phenomena people try to patent – Nobody knew Fact X about the universe, therefore it is new.

          It’s the same procedure, there’s nothing new about it at all except you found a new natural phenomenon to apply it to. Lets go as basic as possible: At some point, man discovered a method that if you squatted first you wouldn’t get sh*t all over you. One day, man will walk on Mars. If you let that man patent squatting to sh*t on Mars you mind as well just sign Mars over to him for 20 years, because it’s clear he’s just CIPs away from controlling every interaction you can have with the planet. You can’t use 103 to do it, because man never walked on Mars before, but the protection for being the first to Mars is a patent for your particular manner of getting to Mars, not a patent on the planet itself. Therefore the conclusion HAS TO BE that 101 prevents the repatenting of an old procedure to a new subject when the subject is naturally occurring OR the conclusion is that the first organization to walk on Mars can effectively patent Mars. We know the latter is not the law, and therefore the former is the law.

          Again 101 is working perfectly here: There was an unprotectable discovery of a natural fact, and the remains of the claim were to perform conventional acts with respect to it. A claim directed to “Do conventional acts to my newly discovered unprotectable subject” has to be ineligible because otherwise it will always be allowable (regardless of what the act or subject is), and it’s clearly not meant to be allowable. Columbus could not have patented America, that was simply not the intent of the patent clause.

          I think in the end I was convinced that if the problem was unknown, the discovery itself could be the basis of a patent even if the solution to the problem was obvious once the problem was known.

          That’s a 103 issue, not a 101 issue, and is irrelevant for this discussion. I agree the art didn’t know about fetal DNA in the mother’s bloodstream, so clearly any claim that contains that is going to be non-obvious. You don’t even need to apply the “unknown problem” line of thinking – it’s just straight non-obvious.

            1. Brush up on your 103, please.

              Yes lets – does obviousness require that the prior art be enabled to achieve the claimed method? Could the method be achieved prior to someone enabling travel to Mars?

              1. Your example is stillborn.

                Let’s see if you can figure out why.

                But here’s a hint: you yourself presuppose that a person CAN get to Mars before he filed his “whatever on Mars” (false) parade of horribles.

                1. But here’s a hint: you yourself presuppose that a person CAN get to Mars before he filed his “whatever on Mars” (false) parade of horribles.

                  Yep, the first person to land on Mars can repatent all of the methods interacting with Earth but “on Mars” according to the logic of the pros here. That’s the logic in play – you can’t claim Mars itself, but you can repatent conventional methods that interact with an enabled trip to get there.

            1. Random, prior to the invention, it was a simple fact that no one tested maternal plasma for paternal DNA.

              And since the courts have held since Morse that novelty automatically confers eligibility I wonder why this case is such a big deal, right?

              1. Random, the basis for the exclusion of laws of nature and natural phenomena from patenting is that these things are not new. When the process being claimed is literally new, and produces an new, useful and physical result, it is eligible.

                The problem with Morse claim 8 was that it claimed a new phenomena of nature without any details: just do it. As such, it really was not a claim to a process at all.

                Here the process is specific: take maternal plasma and test for paternal DNA. That DNA is fetal DNA, and it can be used to determine genetic diseases, etc.

                1. Ned,

                  You misstep (again) with your statement of “basis for the exclusion of laws of nature and natural phenomena from patenting is that these things are not new.

                  The exclusions are NOT time-based, as the universe is NOT static.

                  We’ve gone over this – review my Myriad writings.

                  1. anon, do I have to quote chapter and verse to you once again?

                    The exclusion of laws of nature and natural phenomena is statutory and always has been. The court in Myriad held that a product of nature is not a new composition. Flook held that laws of nature were not new and that that was the legal basis for excluding math.

                    You are wedded to the belief system of Rich who trashed 101. Well 101 is not trashed, anon. Not at all.

                  2. Your chapters and verses are steeped in error and Ned-IMHO type of law.

                    You again refuse to even acknowledge the simple fact that the universe is not static.

                    As I suggested review my Myriad writings.

                    And I am “wed” to what Congress did – not your rather silly game of scape goating Rich.

                2. Neither the process, nor the subject, nor the interaction between the two are new Ned. The process is the same, the subject was preexistent but unknown, and the application of the process to the outside-the-womb fetal DNA is the exact same as the inside the womb fetal DNA. The process is not new, nor is there a new result. The process is simply applied to a different naturally existing thing. Its like suggesting you invented sex because you slept with a virgin (Look I applied it to a new naturally occuring subject, inventor am I). Doing the same thing to a new subject for the same result isn’t new. The only eligibility could have come from the subject, and the subject itself is ineligible in this case.

        2. Ned: the test itself was new because no one even knew before that maternal plasma contained fetal DNA.

          That logic would apply to the detection of every previously unknown (aka “new”) natural phenomenon using conventional detection methods.

          Are they all patentable?

          assume that one was using a flashlight to determine amount of dark energy a room when did not even know that one could use a flashlight to measure dark energy

          You are aware, I hope, that this is a completely different set of facts from the facts in this case where the whole point of PCR is detecting vanishingly small amounts of specific DNA sequences in a mixture.

          when did not even know … that dark energy was in a room

          And that aspect of the “unknown” is exactly what RG was getting at when he talked about the bat cave. You can’t protect your discovery of a natural phenomenon (“dark energy”) in a room by reciting “use conventional detection tools for detecting dark energy in a room”.

          1. MM, this is not the observed star case. People have always used telescopes to observe stars. Allowing a claim on observed stars would make infringers of people used telescopes for their common and ordinary purpose.

            In Mayo, all the physical steps were old including the administration of the drug and the blood test. Allowing a claim to the interpretation of the conventional blood test would make infringers of everyone who used the conventional test.

            Here, no one had ever tested maternal plasma for any DNA let alone paternal DNA The test itself was new.

      3. Really? So every time technology interacts with something, changing the subject of the interactions reconfers patentability?

        Well there’s a strawman for you. I’m pretty sure that’s not what anybody is arguing.

        1. DanH “every time technology interacts with something, changing the subject of the interactions reconfers patentability?”

          Well there’s a strawman for you. I’m pretty sure that’s not what anybody is arguing.

          So what are the defenders of this incredibly broad patent arguing? That the mere “detection” of some sorts of natural phenomenon using conventional techniques created for exactly that purpose are patentable and subject to control by private entities because … “women’s health”?

          What’s the argument? What classes of new previously unknown naturally occuring stuff can be protected from “detection” using conventional detection tools? All of it? Or just stuff relating to fe tuses and women because …. $$$$$?

        2. Well there’s a strawman for you. I’m pretty sure that’s not what anybody is arguing.

          Everyone is arguing that changing the subject of the interaction *to a newly discovered subject* reconfers patentability.

      4. “The person who discovers the cave owns the cave for 20 years. True?”

        Ever hear the phrase “stake a claim?” Sometimes, it doesn’t even have to be a cave. It can be out in the great wide open.

        Maybe see :Treasure of the Sierra Madre (Think: Patents? We do ne no stinkin Patents!)

        Oh, and then there was Columbus and Queen Isabella….

        1. Oh, and then there was Columbus and Queen Isabella….

          Yes, you prove my point. That was not the power granted under the patent clause. So I discover a cave network under the city of New York. If you think the federal government controls who owns that cave network instead of the state of New York, you’re mistaken.

          1. I proved your point? What point? That using a flashlight to explore a cave is not eligible under 101? Of course it would have been. It’s not patentable under 103, not 101. PLEEEEEEEASE stop confusing the two.

            1. In case you think I’m wrong about that, contemplate this claims for a method of exploring/mapping:

              8. A method for mapping the ocean bottom comprising the steps of having two sonar survey ships, each equipped with means for transmitting and intercepting underwater sonic pulses off the ocean floor, travel some distance apart along approximately parallel course, having each of said ships transmit, at specified time intervals, sonic pulses to be scattered off the ocean floor in such a direction that portions of said scattered pulses are intercepted by its companion ship, having said ships kept to courses sufficiently close to each other to be able to intercept portions of said scattered sonic pulses, providing each of said ships with a data transmission and reception communication system, providing positioning data to said ships allowing each of said ships to determine its global location and its relative position with respect to its companion ship, providing each of said ships with the times of transmission of said pulses, having each of said ships determine the times it intercepts portions of said pulses, having each of said ships determine the angles of arrival of portions of said scattered sonic pulses it intercepts, having at least one of said ships record the angles of arrival, position and time data of the received portions of said pulses, having at least one of said ships process and analyze the intercepted pulses to determine the depths of the ocean at the locations of the pulse reflections, and having at least one of said ships record this analyzed data.

              link to patents.google.com

              1. First I love that you continue to use claims rather than cases when you try to prove a point, as if the existence of claims which may or may not be valid means anything. The patentee in Alice had claims too, until they didn’t.

                Second I don’t know what your thinking is here. Are you trying to say “Here’s an exploration method”? Sure, novel methods of exploration are eligible. The question is whether the old method becomes re-patentable when you find new things to explore. If they find water on Mars, do you think you could take Claim 8 and add “wherein the method is performed in the newly discovered water on the planet Mars” and have an *eligible* claim when the exact same method has been applied to a different natural occurrence here on Earth? What eligible discovery would that be premised on? Seems like the only distinction from the prior art is ineligble subject matter. How can the method be “new or improved” when the only distinction is an ineligible distinction? Doesn’t that mean we’re giving a patent solely for something we can’t give a patent on?

                1. The claim I posted is not limited to earth. So, no. Claiming its use on Mars would not be allowed, under 102/103. NOT 101.

                  Are you saying patents to methods of making drugs are invalid since they use the same mixing, heating, cooling etc steps and the same reaction vessels and mixing equipment that has always been used and the only thing that is different is the starting ingredients, temperatures and the end result?

                  1. The claim I posted is not limited to earth. So, no. Claiming its use on Mars would not be allowed, under 102/103. NOT 101.

                    Um that’s not how 102/103 works. More limited claims are allowable over references that are silent on the missing limitation. Now you can use knowledge of skill in the art or another reference to teach the missing limitation, if there is reason to believe it applies, which may be the case here, but you’d have to overcome the obvious fact that the prior art wasn’t enabled to reach mars, and therefore the prior art was not enabled to perform the method on mars.

                    Are you saying patents to methods of making drugs are invalid since they use the same mixing, heating, cooling etc steps and the same reaction vessels and mixing equipment that has always been used and the only thing that is different is the starting ingredients, temperatures and the end result?

                    Nope, because combination is combination and subject is subject. The argument I am making is more akin to “you can’t repatent the chemical reaction that occurs when a bullet fires because you are claiming aiming the gun at a new target.” You’re talking about making new reactions. I’m talking about the exact same reaction that previously occurred. The technological aspect didn’t change – the chemical reaction doesn’t care what the gun is aiming at, nor does the fetal dna test care whether the dna came from the mother’s blood or not, the exact same conventional process is occurring. When the sole distinction in the claim is ineligible subject matter, the claim fails 101. Does that mean that some chemical claims are invalid? Sure. Does that mean that most chemical claims are invalid? Nope, because in most chemical claims you are swapping A for a similar or more effective B, not A for A.

                  2. I’m talking about the exact same reaction that previously occurred.

                    That’s a 102 argument.

                    Stop conflating and confusing yourself.

                  3. “Um that’s not how 102/103 works. More limited claims are allowable over references that are silent on the missing limitation.”

                    It would have been obvious to swap Mars for Earth. 103ed.

                    I wasn’t talking about chemical claims. I was talking about METHODS of making chemicals.

                    All the VERBS associated with the recited STEPS are the same/old… heating, mixing, stirring cooling, filtering etc. The only thing different is the work pieces, all of which are old. The chemical reactions are not claimed, what is claimed in measuring A, measuring B, combining A and B, heating the combination… etc. A and B are old, the steps are old. The results of the reactions are products of nature (it is perfectly natural that if you mix A and B thusly they will react to make C), the reaction itself is a law of nature…..

                    So, if shining light in “unknown” cave is not eligible, reacting an “unknown” combination of reactants is not eligible.

            2. I proved your point?

              Yeah, when you start arguing that patent eligibility is broad enough to encompass staking a claim to land I have won my point, because no court is going to agree with that.

              That using a flashlight to explore a cave is not eligible under 101? Of course it would have been. It’s not patentable under 103, not 101.

              How can it be obvious to explore a cave that the art didn’t know existed prior to your disclosure? Simple substitution (which is what you are relying upon – swapping the subject of the flashlight use) requires prior knowledge of both of the substitution elements, and the art didn’t know of the element being substituted to. How was the art enabled to perform tests on a new bat species when it never had possession of the bat before?

              1. Are you saying patents to methods of making drugs are invalid since they use the same mixing, heating, cooling etc steps and the same reaction vessels and mixing equipment that has always been used and the only thing that is different is the starting ingredients, temperatures and the end result?

      5. Yes Random, sometimes the work piece is very important.

        The difference between the claimed method for making Crestor is likely very similar to the claimed method for making Lipitor. Mix chemicals, heat mixture, precipitate out chemical. What makes them distinct is the initial ingredients and the end result.

    3. ” But the claims do not seem to be to the discovery itself. ”

      No Ned. That would be claiming a product of nature. Instead, the claims are directed to an APPLICATION of the discovery, i.e., something that can be done now that we have this NEW information.

  14. Reading back over the actual language of 101 today, I note that the language is very broad:

    “Whoever invents or discovers ***any*** (emphasis added) new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof…”

    I’m still not quite sure how the judiciary arrived at the controlling logic in Mayo or Alice from this language.

    1. Also of interest, reading over AIA Sect. 102, the statute says nothing about a “disclosure” in sub-section ‘a’, but then proceeds to define what is not a “disclosure” in sub-section ‘b’ for prior art purposes. Sub-section ‘a’ only discusses “described in” a printed publication. A plain reading of this sub-section is unclear with respect to whether a public presentation of the invention is prior art. Who re-drafted this stuff?

      1. A plain reading of this sub-section is unclear with respect to whether a public presentation of the invention is prior art. Who re-drafted this stuff?

        Under the recent Teva case a public presentation absent it being used in public is not prior art, because public presentation is only public knowledge and there is no more knowledge prong in the statute. Which is, of course, why that case is wrong.

        1. Random, which case was that?

          The “otherwise made available to the public” does seem to suggest more than simple oral communication. So I would agree with you that the drafters may not have want to retain public knowledge as a bar the patentability.

    2. bootstraps and a heavy dose of ignoring what Congress did in 1952 (and why Congress did what they did in 1952, vis a vis the decision to break a single paragraph into separate sections of law and use obviousness instead of “invention,” gist of invention,” or any of dozens of other “judicial constructs” that the courts had toyed with instead of using the previously permitted t001 of common law evolution).

    3. I agree with you. Somehow we went from “anything under the sun” can be patented to much less than that (although what that exactly is can’t be determined from the current caselaw).

      1. PatentBob, Federico basically quoted Curtis in that the intent of the patent statute was to allow the patenting of any manufacture made by man. The English statute (1624) allows patents on new manufactures. This was interpreted to extend to methods of making manufactures. That was incorporated into the original 101 (1790) with “Art.” “Manufacture” was further defined to expressly include “machines” and “compositions.” But otherwise, nothing has changed in the statute since 1793.

        1. Your (over) reliance on Curtis should be recognized as a bad habit Ned.

          (Just saying in gen eral – not necessarily here in particular)

          1. However, here you do make the same mistake of thinking that “method” is a sub-category of the hard goods categories.

            U.S. jurisprudence is distinct from the English tradition on this point, Ned.

  15. I don’t think they will grant cert. They have spoken firmly on the subject and there seems no way to square eligibility without major changes to the three judicial exceptions.

    Of course, this invention (the method) is pure information, and they have not yet dealt with what to do with inventions comprised of information.

    If they do grant cert, it could go very badly for one side or the other….

      1. pure information…?

        The invention is indeed pure information. The claim contains conventional elements which are not pure information, but the invention is the statement “Fetal DNA floats in the Mother’s blood” which is a statement of natural fact.

        1. You cannot BE “pure” and then turn around in the next sentence and say that you have more than just “pure.”

          The invention is in the claim as a whole. Eligibility is not a parsed, single element test.

          1. The invention is in the claim as a whole. Eligibility is not a parsed, single element test.

            Eligibility is also not subject to the scrivener’s skill. I considered the claim as a whole, and it doesn’t get saved by recitation of conventional acts the art already knew. The invention is the statement that Fetal DNA floats in the Mother’s blood. The claim could add an entire DNA testing textbook and span 500 pages, the invention would still be the statement that Fetal DNA floats in the Mother’s blood.

            1. I considered the claim as a whole,

              No. You did not.

              You say that you did, then you jump right back to NOT considering the claim as a whole.

              Once again: You cannot BE “pure” and then turn around in the next sentence and say that you have more than just “pure.”

        2. And what the Wright Bros. claimed was the statement: “Birds do it, Bees do it, even educated flees do it, lets warp a wing.”

    1. Many have written very persuasively as to how this case could be distinguished from Mayo (not that I like Mayo either, but that’s not going anywhere). After all, even the very anti-patent Federal Circuit was ostensibly lamenting the fact that they felt obliged to rule this way and they apparently wished Mayo had been drafter more narrowly.

      1. …how soon do people forget the brow-beating that the CAFC has received at the hands of the Supreme Court.

        that psychological thought experiment of simians in a cage, with a fire hose and hanging bananas comes to mind….

    2. I’ve been reading this blog for a long time, and your comment “this invention (the method) is pure information” is unquestionably the s*t*u*p*i*d*e*s*t thing I’ve read here. Ever. Sheesh, even the CAFC judges who upheld the patent ineligibility of this invention acknowledged that it was a major breakthrough, making clear that they felt constrained by Mayo.

      Oh, and in case you’ve forgotten, SCOTUS is only bound by its earlier decisions when it feels like it. It can say, “We were wrong”, although usually it tries the more nuanced “Here’s why this case is different”. SCOTUS can most certainly walk back its Mayo/Myriad/Alice decision, for bio or altogether, if it wants to.

      1. You ain’t read enough here then Atari Man.

        What part of the invention is not pure information? The invention is the discovery that fetal DNA can be found in maternal plasma. All of the other steps are entirely obvious and non-novel to a PHOSITA.

        Sure SCOTUS can walk back anything it wants to, but why would it want to? They know there will be no political solution to the problems in the system any time soon, so they operate the policy levers that they can within the limits of reasonable statutory interpretation. Considering the larger political issues facing the court, why would they burn an iota of political capital on something like this, at this time?

        This case is representative of any number of diagnostic correlation type inventions, and policy wise, they think the INFORMATION that those correlations are comprised of belongs in the public domain. I tend to agree, s*t*u*p*i*d me.

        1. This is NOT within ANY sense of reasonableness of the statutory confines of “interpretation.”

          Your lack of appreciation of the terrain is showing.

  16. A welcome development. This would appear to be good case in this regard.

    However given the recent propensity of SCOTUS to avoid reading patent statutes (e.g. reading “discovery” out of 35 USC 101), and their historical slow speed of correcting past mistakes, my confidence level in the outcome is not overly high.

Comments are closed.