Sequenom’s Patent

Sequenom’s patent claim in question:

1. A method for detecting a paternally inherited nucleic acid of fetal origin performed on a maternal serum or plasma sample from a pregnant female, which method comprises:

amplifying a paternally inherited nucleic acid from the serum or plasma sample and

detecting the presence of a paternally inherited nucleic acid of fetal origin in the sample.

The big idea here was to recognize that fetal DNA might be floating around in the mother’s blood and that the fetal DNA could be selectively amplified by focusing on the paternally inherited portion of its DNA (rather than the maternally inherited).

The claim itself has two simple steps: (1) amplifying paternally inherited DNA from a plasma sample from a pregnant female and then (2) detecting the presence of the DNA. The technology for amplifying and detecting was already well known at the time of the invention here.  Further, these two steps are the ones always almost used to detect particular DNA.

The invention here solves a very practical problem accessing fetal DNA without creating a major health risk for the unborn child.  Of course, the problems solved in Mayo and Alice were also very practical and that fact did not change the result.

I am hard-pressed to see how this claim overcomes Mayo/Alice.  The “big ideas” expressed in the invention are seeming laws of nature and the idea of amplifying paternal DNA just relies upon a natural correlation in the same way that the inventors relied upon the drug metabolite in Mayo.  The actual implementation of these ideas appear preemptive of the ideas and rely only upon well known and expected implementation steps.

To me, the push for en banc review is – at its heart – either a showpiece for the Supreme Court or a request to undermine the Supreme Court’s precedent.

206 thoughts on “Sequenom’s Patent

  1. 15

    Paul Cole: the correct approach at this stage is NOT to define a new test

    Well, that’s one “amici” that we needn’t bother paying any attention to.

    Anyone else want to step up and shout “I DONT LIKE THIS” without addressing the issues that are going to keep arising if we let people file “detect this natural phenomonen using old technology” claims? Just get in line behind Paul.

  2. 14

    The above analysis demonstrates an inability to count to three.

    The first of the three steps is to select as starting material maternal serum or plasma. It is that selection which sets the claimed method apart from the prior art, see US v Adams.

    In my amicus brief to the court, three precedent-setting questions of exceptional importance were identified:

    (1) Should the context in which a claimed method that involves a newly discovered natural phenomenon be disregarded for the second part of the test in Mayo, so that steps that are known but only in different contexts do not count towards eligibility?

    (2) How relevant to the natural phenomenon exclusion of § 101 is a new and beneficial result never attained before and evidencing inventive step under § 103?

    (3) Is the second part of the Mayo test applied in the breadth of the Panel Opinion incompatible with the obligations of the United States under Article 27 of TRIPS?

    The following reasons were provided for rehearing en banc:

    I. This decision is likely to be followed by the USPTO for its examination guidance and if wrongly decided may adversely affect many pharmaceutical and biotechnology applicants.

    II. The amplification product was misclassified as a natural phenomenon and not as a non-natural composition of matter contributing to eligibility as a manufacture under § 101.

    III. Contrary to Mayo the Panel Opinion provides precedent for establishing ineligibility by considering features merely individually and ignoring or giving insufficient weight to their “ordered combination”.

    IV. The Panel Opinion disregarded the acknowledged new and beneficial results of the ordered combination as evidence of invention and hence relevant to § 101 eligibility.

    V. When broadly interpreted the two-part test raises issues of compliance with TRIPS.

    The Panel Opinion treats the product of the amplification step as a natural phenomenon. On the face of the opinion, that is a quantifiable error of fact, being wrong by a factor of between 1000 and 1,000,000. However, the judges in the panel knew nothing about nucleotides and could not tell the difference between the 5′ end and the 3′ end of a sequence.

    1. 14.1

      Paul, you got me as I really don’t know what you are talking about.

      From my reading of the panel decision, the process itself is old as the hills. It is simply being used to identify paternal DNA in mother’s blood.

      Is this not a fair summary?

      1. 14.1.1

        No, it is an over-simplification for the reasons indicated.

        Nobody was doing anything with the maternal serum or plasma. It was medical waste. Now it has utility.

        As a practising patent attorney the words “as old as the hills” and especially “simply” worry me. They are not words that I would normally use because they are symptomatic of a superficial and over-general analysis.

        Cases are won or lost on tedious legal and factual detail. If you go through the opinion carefully, it does not stand up even taking the facts as found by the court.

        1. 14.1.1.1

          OK, a fetus is old even though a particular fetus is new. Using a fetus for stem cells puts the fetus to good use.

          Now assume the process of “using stem cells” is known. It is being applied here to fetuses, otherwise the process is unchanged. Is this a “new” process?

          I see the problem here. In the US, “new” is part of 101. In Europe, it is not. When the process itself is unchanged, it is not a new process. Adding a law of nature does not add anything legally new even if it was previously unknown.

          Thus, everything in the claim is legally old.

          “The rule that the discovery of a law of nature cannot be patented rests, not on the notion that natural phenomena are not processes, but rather on the more fundamental understanding that they are not the kind of “discoveries” that the statute was enacted to protect.15

          15. The underlying notion is that a scientific principle, such as that expressed in respondent’s algorithm, reveals a relationship that has always existed.

          “An example of such a discovery [of a scientific principle] was Newton’s formulation of the law of universal gravitation, relating the force of attraction between two bodies, F, to their masses, m and m′, and the square of the distance, d, between their centers, according to the equation F=mm′/d[2]. But this relationship always existed—even before Newton announced his celebrated law. Such `mere’ recognition of a theretofore existing phenomenon or relationship carries with it no rights to exclude others from its enjoyment. . . . Patentable subject matter must be new (novel); not merely heretofore unknown. There is a very compelling reason for this rule. The reason is founded upon the proposition that in granting patent rights, the public must not be deprived of any rights that it theretofore freely enjoyed.” P. Rosenberg, Patent Law Fundamentals, § 4, p. 13 (1975).

          Parker v. Flook at note 15.

            1. 14.1.1.1.1.1

              The “problem” Ned has is that he is still dissecting and using the sword of “Gist/Abstract.”

              In a nutshell:

              There is a clear difference from the looking at each element AND looking at the claim as a whole compared to what you (and Malcolm) are attempting with a “take the claim as a whole AND dissect it, then if one element is not to your liking, Gist away the rest of the elements, point to that one element, call it the “Point of Novelty” and attempt to apply 101 to that less than whole claim element.

              1. 14.1.1.1.1.1.1

                Or to be a bit more colorful,…

                Paul: you are not counting to 3 correctly.

                Ned: But I am. Let me show you:
                1, 3. done. See? I arrived at the ends of “3” and started with “1.” See, I can do it again: 1, 3.

                Paul: you missed something.

                Ned: I don’t see it.

              1. 14.1.1.1.1.2.1

                Surprisingly (or not), Ned has forgotten the power of the “Gist” sword (to move the goalposts)

      1. 14.2.1

        Of course I do. But US courts follow the Charming Betsy canon of interpretation and try to interpret US domestic law in a manner that does not conflict with the law of nations or with the treaty obligations of the US.

        My argument is that the principles in Mayo and Myriad CAN be interpreted in a manner that does not conflict with article 27 of TRIPS, and therefore SHOULD be interpreted in that way.

        In particular, if you look at the opinion of Justice Thomas in Myriad it was carefully written not to create such conflict, the point having arisen during oral argument, and problems have arisen not from the terms of the Supreme Court opinions but from over-broad interpretation by the USPTO and the Federal Circuit. I am not a lone voice: similar views were expressed last year by the ABA in submissions to the USPTO.

        1. 14.2.1.1

          “try to” without actual congressional enactment is a sure fail (and a rather weak amicus argument).

          Much better off would be to show where (if possible) such an enactment was contemplated and actually delivered by Congress. Short of that, some post TRIPS movement by Congress to those same “ends”…

          1. 14.2.1.1.1

            …in a finer detail, one cannot apply the Charming Betsy canon and remove the plain fact that such treaties are not self-enacting.

            If you apply that canon as liberally as is your want, then no treaty would ever need to be enacted separately in the US, and would eviscerate the larger rule.

            You need more than just a “it would be nice to comply.” You need additional support somewhere to say that the Charming Betsy should be invoked. That somewhere needs to reflect a post-treaty, consideration-of-the-treaty action of Congress.

        2. 14.2.1.2

          …and we have been over your Pollyanna “if only the courts would take the time and apply the words of the Supreme Court with greater care position” several times now.

          As they say, the proof is in the pudding, and what you want just is not happening.

          A different answer then is what is required. A different and more permanent answer…

          1. 14.2.1.2.1

            TRIPS in in my brief, as well as a link to the ABA’s views. So the CAFC judges will at least see the point. What they make of it is, of course, up to them.

            As a European all I can do is to try to influence opinion, and in this case also the Court. But I have no link to Congress.

            If there is anything else I can do to get your “different answer” you have only to let me know.

            1. 14.2.1.2.1.1

              asked and answered: include in your points the alternative (even if you cannot approach Congress) that Congress should be approached.

    2. 14.3

      Paul Cole: How relevant to the natural phenomenon exclusion of § 101 is a new and beneficial result never attained before and evidencing inventive step under § 103?

      That was addressed in Diehr, wasn’t it? i.e., The “novelty” of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the §101 categories of possibly patentable subject matter

      The issue as always, Paul, is: what does the claim protect? If the claim is protecting ineligible subject matter, you’ve got a 101 problem. More specifically, if the claim prevents someone from using conventional (in this case, public domain) technology from studying a natural phenomenon, you’ve got a 101 problem. The awesomeness of your discovery is utterly beside the point.

      The amplification product was misclassified as a natural phenomenon and not as a non-natural composition of matter contributing to eligibility as a manufacture under § 101

      After Myriad, it’s debatable whether a naturally occurring DNA sequence with no utility other than “detect me” is eligible for patenting merely because there’s a conventionl probe attached to the end of it.

      1. 14.3.1

        As we discussed earlier, MM, the process of isolating or detecting paternal DNA is irrelevant if the claim is patentable because of the discovered law of nature.

        Thus, if any or all methods of detecting paternal DNA are patentable, a claim of this scope is warranted:

        1. A process, comprising:

        taking a blood sample from a pregnant woman; and

        detecting the paternal DNA in said sample.

        The courts should approach the case with a claim as broad as could be claimed if the patentability depends upon the discovered law of nature.

        1. 14.3.1.1

          Your new “version” of the “Gist/Abstract” sword still has the logic of my big box of electrons, protons, and neutrons.

    3. 14.4

      cf. Sep-3-15 @ 4.20 am (Paul Cole)

      What utter nonsense! You sir, need to enrol in a course of basic molecular biology because it is clear that you don’t understand PCR – that last paragraph gives it away.

      If Sequenom does succeed, it’ll make US Patent law the laughing stock of the world. And, you will have assisted in this process.

  3. 13

    Question for anyone who has slogged through the briefs: were any of the “amici” brave enough to state a proposed eligibility test that hasn’t already been cast aside as useless (or worse)?

    Or is this just a repeat of the run-up to Prometheus where the patentee’s “amici” are concerned only about what they can’t own (and therefore “nobody” will ever provide), with all the other issues ignored or hand-waved away?

    The failure to acknowledge the glaring and inevitable problems that the granting of [oldstep]+[newthought] claims would create not just for the patent system but for everyone went a long way towards undercutting the credibility of Prometheus’ supporters. Did they learn from their mistake or are they just going to charge ahead again with the same vastly overblown sense of entitlement?

    The usual question for supporters of Sequenom’s patent: if someone discovers that a “new” naturally occurring (and ineligible) phenomenon falling within known class X is “detectable”, is it your position that the discoverer is entitled to claim “All processes for detecting X”? If that is your position, how do you distinguish such a claim from effective ownership of the ineligible phenomenon? If you don’t believe such a distinction can be made, exactly what sort of limitations do you believe must be put in place to prevent a discoverer from monopolizing the ineligible phenomenon? For instance, how do you distinguish a claim to “use old PCR technology to detect newly discovered naturally occurring DNA” from a claim to “using old telescope to detect newly discovered asteroid” or “using old dissection technique to separate organs from new species of frog”?

    If you refuse to answer the questions, you really have no business complaining when the door is shut on you again (but of course you’ll complain anyway — you certainly did after the Supremes mopped the floor with your briefs after Prometheus and Mayo!). And I’m not suggesting that the distinctions can’t be made. On the contrary.

    Consider this to be friendly advice from a long-time close observer of the system and its players.

    1. 13.1

      Back to [oldstep] +[newthought]…?

      What a bunch of hooey.

      Mere aggregation of -[anything1] +[anything2] is what your beloved “pet” theory resolves to.

      That and nothing more.

      It is simply dissembling by you to make something more of it in an attempt to somehow infuse the mental steps doctrine back into patent law.

      Your so-called “close observer” is not so close when you continuously clench tight your eyes to what the law as written by Congress actually is.

    2. 13.2

      @ MM

      If you look at the rules of the court, the criterion for an en banc hearing is NOT that the Panel Opinion is wrong (even by my estimated factor of 1000 to 1,000,000) BUT INSTEAD is that there is a precedent-setting question of exceptional importance that needs to be considered. As in my posting above, I identified three such questions.

      Therefore the correct approach at this stage is NOT to define a new test but to define a set of questions that are relevant, that the court needs to consider en banc and which will (hopefully) interest the judges.

      What was claimed here was not a new discovery but a new test method of great practical importance, giving the new result of earlier detection of genetic abnormalities in a foetus and of a less invasive character. Selecting a new and inventive starting point is as much a feature of a test method as any other feature, especially when that selection leads to new results. Finding an asteroid is not a result of industrial and practical significance, nor is the new dissection technique.

      1. 13.2.1

        Selecting a new and inventive starting point is as much a feature of a test method as any other feature

        Not if you have a desired ends.

        Such is all too easily Gisted away, because our Supreme Court re-wrote patent law in its own image, and provided a weapon without limits.

        Look at some of the comments here and the wide dismissal (by some) of ANYTHING not coming from the Supreme Court.

        There can be NO inte11igent conversation on the matter without realizing the source of the error, and correcting that source of error.

        Otherwise, no matter what is done below, the Royal Nine can (and likely will) just hand waive it away as “scrivining.”

        The aim here then needs to be on a more permanent solution involving the constitutionally sanctioned power to Congress of jurisdiction stripping. Patent law appeals simply are not within the original jurisdiction of the Supreme Court, and thus are fully amenable to such a Congressional move.

  4. 12

    If the “invention” is the discovery of the fact that paternal DNA could be found in the serum of a mother, why should the discoverer of this fact be limited to any particular method for the detecting the presence of paternal DNA in the blood serum?

    1. 12.2

      Asked and answered Ned:

      It probably shouldn’t. But 101 limits us to processes, compositions of matter, apparatuses and manufactures, so the inventors settled for a process based on their discovery. Half a right is better than none I guess.

      1. 12.2.1

        Les, I agree with this. But consider:

        1. Process, comprising:

        drawing blood from a pregnant woman;

        isolating paternal DNA from the drawn blood.

        What’s wrong with this claim?

          1. 12.2.1.1.1

            I think isolated paternal DNA is a useful substance. If I invent a new steel alloy I can just claim the alloy without having to claim a car made out of the alloy, right?

            1. 12.2.1.1.1.1

              Fair enough. Substantial utility need only be disclosed, not claimed. I suppose that the hypothetical spec behind this claim could include a mention of the substantial utility for paternal DNA.

        1. 12.2.1.2

          I think it should being with the word “A” and the comma after “process” seems inappropriate. Also, I would suggest the absence of “and” after the first “;”.

          But those are more a matter of custom than substance.

          So, I’m good….

          What do YOU think is wrong with it?

        2. 12.2.1.3

          What’s wrong with this claim?

          I believe it’s anticipated or obvious. That’s why the limitation re “maternal serum or plasma sample” was put into Sequenom’s claim. The fact that fetal cells could be isolated and detected from maternal blood (by isolating the fetal cells, then isolating and detecting the DNA from the fetal cells) was in the prior art.

          I’m not saying that’s the only problem with your claim. But I’m pretty sure that it is a problem.

          1. 12.2.1.3.1

            MM, I think looking for paternal DNA in a pregnant woman’s blood is novel and non obvious.

            The point I am making here is that adding detail, all old and conventional, to the method of isolation adds nothing to the claim at all. The level of detail in the prior art isolation or detection methods is a red herring.

            1. 12.2.1.3.1.1

              I think looking for paternal DNA in a pregnant woman’s blood is novel and non obvious.

              Even after the art teaches you that fetal cells are in the pregnant woman’s blood?

              What if the art teaches you that snickers bars are found in a pregnant woman’s blood? Is it non-obvious to look for a peanut?

            2. 12.2.1.3.1.2

              The point I am making here is that adding detail, all old and conventional, to the method of isolation adds nothing to the claim at all. The level of detail in the prior art isolation or detection methods is a red herring.,

              I agree with you there.

              1. 12.2.1.3.1.2.1

                wrong metaphor gents….

                what you are looking for is that any such things (or “inconvenient” elements of a claim) can be “Gisted” away with the unlimited power of the “Gist/Abstract” sword.

        3. 12.2.1.4

          The real problem with the claim is devided infringement, assuming a doctor draws the blood and a reference lab isolates the DNA.

  5. 11

    Posted below and worth noting here on top, Malcolm once again runs smack into a wall with his eyes clenched tight and “not seeing” that the Supreme Court jurisprudence is a supreme mess.

    [Malcolm’s] “Total reconciliation” translates to the opposite of “Total ignorance.”

    All Diehr ever stood for was the proposition that you can’t look at a claim and identify some ineligible or eligible element and conclude from that the entire claim is therefore ineligible or eligible.

    Except for the fact that the “Point of Novelty” curse-aders (you included) are attempting to do exactly that and in so doing are attempting NOT to have Diehr apply.

    The Act of 1952 removed the judicial authority to set the definition of “invention” by common law rule – and concomitant with that action, removed “Point of Novelty” in the 101 sense as is the mantra of you and Ned.

    This was done by an act of Congress (not the singular and denigrated man named Rich).

    Breaking up what was the single paragraph into 101, 102, 112 and including 103 is the cornerstone – even today after the AIA – of understanding both 101 and the mess being made of that statutory law by the branch of the government NOT allocated authority to write patent law.

    Legislating from the bench MAY be all fine and good for those traditional areas outside of statutory law (and even with some overlap of those areas with statutory law – as that statutory law may invite).

    Clearly though, such is NOT all fine and good for patent law in areas that Congress has NOT allocated a sharing of their authority with explicit and delineated lines.

    But a BASIC understanding of the Rule of Law, and of the US constitution and of our protection of that constitution with the separation of powers MANDATES that the warning by Judge O’Malley against what you, Ned, and several others of a particular anti-patent mindset wish to achieve in CHANGING the law by edict from the bench instead of the rightful place of the halls of Congress.

    1. 11.1

      I wrote: All Diehr ever stood for was the proposition that you can’t look at a claim and identify some ineligible or eligible element and conclude from that the entire claim is therefore ineligible or eligible.

      That is the holding of Diehr. If there was any doubt about that, that doubt was dispelled by Prometheus v. Mayo and Alice, two 9-0 decisions that are never going to be overturned.

      “anon” responds: Except … you… are attempting to do exactly that

      No, I’m not attempting to do any such thing. And I’ve expressly said so probably a hundred times over the years. Moreover, everything that I have said and written here about 101 is perfectly consistent with my express statements regarding this issue. I’ve even provided you with endless examples illustrating how the rule works and why.

      Once again: the legal rule in Diehr is a good one (even if the result in Diehr was a mistake because the actual facts werent in front of the Supremes). The rule not only makes sense but its an essential rule for any sane patent system.

      1. 11.1.1

        Let me put it another way in case it still isn’t sinking in.

        Jimmy: “A rule that says you can’t ban marijuana smoking everywhere is a good rule.”

        Johnny: “Except you and your crusaders are doing exactly that when you ban marijuana sales in elementary schools.”

        I assume everyone can see the problem with Johnny’s “argument.”

        1. 11.1.1.1

          Your spin is transparent.

          And absolutely wrong.

          Shall we pull from the archives what you really feel about Diehr?

          What a chump.

      2. 11.1.2

        Isn’t this the (a?) holding in Diehr:

        “Our earlier opinions lend support to our present conclusion that a claim drawn to subject matter otherwise statutory does not become nonstatutory simply because it uses a mathematical formula, computer program, or digital computer.”

        I mean, they’re saying it’s their conclusion.

        1. 11.1.2.1

          PB: Isn’t this the (a?) holding in Diehr:

          “Our earlier opinions lend support to our present conclusion that a claim drawn to subject matter otherwise statutory does not become nonstatutory simply because it uses a mathematical formula, computer program, or digital computer.”

          Right. That’s still perfectly good law. But wait! Diehr says more:

          A mathematical formula, as such, is not accorded the protection of our patent laws, Gottschalk v. Benson, 409 U. S. 63 (1972), and this principle cannot be circumvented by attempting to limit the use of the formula to a particular technological environment. Parker v. Flook, 437 U. S. 584 (1978). Similarly, insignificant post-solution activity will not transform an unpatentable principle into a patentable process. Ibid.

          Also perfectly good law. Take it all together, throw in some common sense, and those words really do mean something. Here’s what they mean: an ineligible invention isn’t automatically rendered eligible by reciting non-inventive but otherwise eligible hoohaw like “computer:”

          There is a great story to be told here about two jurists who tackled the big issues. One of those jurists was a thoughtful forward thinking Supreme Court Justice who wrote a dissent in Diehr, joined by three other Justices (Stevens, preferring “an unequivocal holding that no program-related invention is a patentable process under §101 unless it makes a contribution to the art that is not dependent entirely on the utilization of a computer, and (2) an unequivocal explanation that the term “algorithm” as used in this case, as in Benson and Flook, is synonymous with the term “computer program.”).

          The other jurist is a guy whose reputation is presently swirling down the tubes because everyone can see he was drunk on patent kool-aid and couldn’t see past the nose on his face. That jurist’s name was Judge Rich. He’s the guy who worked hardest to promote the ridiculous and now completely debunked “argument” that comparing claims to the prior art is only proper consideration under 102 and 103. Well, he worked the hardest until “anon” and his cohorts showed up (how’s that work paying off, guys? LOL).

          1. 11.1.2.1.1

            Of course Malcolm you have that arse backwards as to which judge/Justice really did know the law (because he helped write it) and which Justice only too eagerly would mash a wax nose (even after warning about such).

            Not only that, you forget the update for that “Bilski 4” – let me spit it out for you: that dropped to 3.

            Not incoincidentally, the very same three that the presidential memoirs of none other than Bill Clinton labeled as “most dangerous” to legislate from the bench.

          2. 11.1.2.1.2

            As to your (2), you forgot the actual words used by Stevens in Benson:

            We do not so hold

            Oops.

            Don’t you get tired of your constant dissembling?

            1. 11.1.2.1.2.1

              Oops myself – I meant Steven’s role model and idol (Douglas).

              It’s hard to tell them apart…

    2. 11.2

      anon’s post reminds me to ask a question: What is the origin of the phrase ‘point of novelty’ in precedent or statute? I think Ned uses it once in a while, but where does it come from?

      1. 11.2.1

        Some background for you, Slashdot:

        link to en.wikipedia.org

        The point of the patent-eligibility doctrine concerning insignificant post-solution activity … is that adding such limitations to a claim does not involv[e] adding an “inventive concept” to the otherwise ineligible underlying idea. In the calculus of patent eligibility, it is adding a zero to a zero

        Likewise, in the typical “ineligibility at the point of novelty” claim that the system is so often presented with today, there is no synergy or unexpected results flowing from the additional recitation of “novel” ineligible elements to otherwise conventional technology. Once again: it is adding a zero to zero.

        Classic example 1: I claim a manufacture, wherein said manufacture is a piece of paper, wherein said piece of paper comprises instructions, wherein said instructions are [insert description of new, non-obvious instructions].

        Everybody can see that the only novel element in the claim is the ineligible information (i.e., the instructions). You can’t protect information with patents. Allowing claims such as this would plainly lead to information being protected with patents because people would swarm the patent offices with “paper + information” claims. The system melts down. Therefore, the claim is ineligible.

        Classic example 2: I claim a diagnostic method, wherein said diagnostic comprises gathering data using old technology and thinking about it the data, wherein said thinking comprises thinking about [insert new, non-obvious correlation].

        This the Prometheus claim. Everybody can see that the only novel element in the claim is the ineligible information (i.e., the correlation). You can’t protect information with patents. Allowing claims such as this would plainly lead to information being protected with patents because people would swarm the patent offices with “paper + information” claims. The system melts down. Therefore, the claim is ineligible.

        Most people will immediately recognize that this isn’t a high-falootin’ legal analysis. It’s the application of common sense and reason to a simple logic problem.

        There are three possible explanations why certain people have trouble “getting it”. The first explanation is that some people were “brought up” in an era where they were taught that such claims could be obtained and enforced. The second reason is that by pretending it’s all so confusing and kicking up clouds of dust around the principle they can keep the game going for a little while longer and stuff some more cash in their pockets. The third reason is the usual one: plain old ignorance. Not everyone has the brains to keep up (including some attorneys, agents and judges). Sad but true.

        1. 11.2.1.2

          Maybe a magic hat band or a measuring cup can help you out there…

          (Or we can just go to your own volunteered admission against interests as to your knowing and understanding the law – even as you attempt to dissemble to the opposite.

          Or should I yet again post the link to the easy to understand set theory explanation over on the Hricik side of the blog that I invited you to be involved in a meaningful dialogue?

      2. 11.2.2

        In Parker v. Flook, 437 U.S. 584, 587 (1978) the Supreme Court affirmed the Patent Office’s determination that the “point of novelty” in a claim (the aspect that makes it new and inventive) must itself be subject-matter eligible in order for the claim to comply with §101. This represented a reversal of In re Musgrave, 431 F.2d 882, 889 (1970) (Rich, J.).

        Just a few years later, the Court in Diamond v. Diehr, 450 U.S. 175, 192 (1981) repented of this ill-considered standard and announced that instead of the “point of novelty” needing to be §101-eligible, it is enough if the “claim as a whole” is §101 eligible.

        In other words, the “point of novelty” test (at least with regards to §101) refers to the test that applied during the bad-old days of Flook, before Diehr restored us to Judge Rich’s right-thinking Musgrave standard.

        1. 11.2.2.1

          Wow thanks for the history. Srs.

          Happy to see I was wrong about my reading of Diehr. This reading makes more sense

        2. 11.2.2.2

          Just for the record, the Supreme Court in Flook never used the term “point of novelty” except for once when it quoted the Board while summarizing the case background. What the Supreme Court did say was the following:

          Our approach to respondent’s application is … not at all inconsistent with the view that a patent claim must be considered as a whole… [T]he discovery of [a phenomenon of nature or mathematical formula] cannot support a patent unless there is some other inventive concept in its application.

          Nothing in the Diehr decision suggested that the Supreme Court was “repenting” an “ill-considered” decision in Flook. On the contrary, the Diehr court cited Flook approvingly not once but twice:

          Our earlier opinions lend support to our present conclusion that a claim drawn to subject matter otherwise statutory does not become nonstatutory simply because it uses a mathematical formula, computer program, or digital computer…. [I]n Parker v. Flook, we stated that “a process is not unpatentable simply because it contains a law of nature or a mathematical algorithm.” 437 U.S. at 437 U. S. 590. …

          A mathematical formula, as such, is not accorded the protection of our patent laws, Gottschalk v. Benson, 409 U. S. 63 (1972), and this principle cannot be circumvented by attempting to limit the use of the formula to a particular technological environment. Parker v. Flook, 437 U. S. 584 (1978). Similarly, insignificant post-solution activity will not transform an unpatentable principle into a patentable process. Ibid.

          So we can now ask the question of Greg: are you merely ignorant, dishonest, or both?

          As for this statement of Greg’s: Diehr restored us to Judge Rich’s right-thinking Musgrave standard.

          … that is simply bizarre. Rich’s Musgrave decision is about as rotten as any corpse that a legal grave digger could possibly excavate and that was true even before Diehr was decided. Are you telling your clients that Musgrave is good law? Gosh, I hope not. Maybe you should have a call with your insurance provider.

          Here’s the “right thinking” Judge Rich at the height of his nutsanity: We cannot agree with the board that these claims … are directed to non-statutory processes merely because … all the steps therein can also be carried out in … the human mind

          Try to believe it. Judge Baldwin’s forward looking dissent in Musgrave is well worth a read (just a taste here: Justifying the decision finding claims drawn entirely to purely mental processes to be statutory, the majority states that “[a] step requiring the exercise of subjective judgment without restriction might be objectionable as rendering a claim indefinite.” It should not require much imagination to see the many problems sure to be involved in trying to decide whether a step requiring certain human judgment evaluations is definite or not.)

          1. 11.2.2.2.1

            Nothing in the Diehr decision suggested that the Supreme Court was “repenting” an “ill-considered” decision in Flook.

            Well, you got me there.

            So we can now ask the question of Greg: are you merely ignorant, dishonest, or both?

            There is a fourth possibility. Perhaps it will strike you if you re-read the cited post.

            1. 11.2.2.2.1.1

              There is a fourth possibility. Perhaps it will strike you if you re-read

              Just spit it out, Greg. You’re a big boy or at least you play one on the patent blogs. Use your fingers and start typing.

              1. 11.2.2.2.1.1.1

                You seem to get very particular when you want, but STILL miss by mile.

                For an immediate example, the Court directly discussed the relation of Diehr and Flook in Bilski (you know the case, the one you predicted that Diehr would be expressly overturned).

                Let me “spit it out for you”:

                Diehr cabined Flook.

                Greg was absolutely correct in the merit of what he was saying – just off a case.

                1. Bilski (you know the case

                  ROTFLMAO

                  Yes I’m very familiar with it. That was a totally awesome case for you and the rest of the Patent Everything crowd because it only cut your legs off at the knees instead of crushing your head like an apple in a cider press. Oh what a happy day it must have been for you.

                  Greg was absolutely correct in the merit of what he was saying

                  Except that Musgrave was not “restored” by Diehr, nor was there any “repenting” of the “ill considered” Flook decision by the majority in Diehr.

                  Now, as for what the CAFC and the PTO chose to do with Diehr that’s another story. We pretty much know how that story ended, don’t we? I seem to recall you and your fellow “No Claim Dissection Ever!” crew going completely crazee here for years when your bizarre views about Diehr were getting ready for the coffin. Remember that, “anon”? Remember the 10,000 s0ckpuppets you and your cohorts used here over the course of a couple years to derail any discussion of the issues?

                  I certainly remember that.

                2. How is your battle of transperancies going with Dr. Noonan?

                  It appears that there is only one ec(h)osystem that permits your (nine years and running) C R P when it comes to patents.

                  Gee, I wonder why that is?

                3. How is your battle of transperancies going with Dr. Noonan?

                  Noonan is obviously a transparent shill for his clients. That battle was won even before it started.

                  Thanks for asking though.

          2. 11.2.2.2.2

            “Nothing in the Diehr decision suggested that the Supreme Court was ‘repenting; an “ill-considered” decision in Flook.”

            Except maybe, just maybe, Justice Steven’s dissent pointing out that the ruling was entirely incompatible with Flook. But what would Justice Stevens know about Flook?

            1. 11.2.2.2.2.1

              JL: “Nothing in the Diehr decision suggested that the Supreme Court was ‘repenting; an “ill-considered” decision in Flook.”

              Except maybe, just maybe, Justice Steven’s dissent

              Usually when people discuss what the Supreme Court said they aren’t referring to the dissent. I know I wasn’t.

              More importantly, Stevens believed that Flook was “misapplied” in Diehr, not that Flook was overturned.

              Not only did Stevens recognize that the majority’s decision was poorly written, and he also astutely recognized that it would be exploited to the detriment of the patent system and the promotion of progress (“[critics have identified] two concerns to which federal judges have a duty to respond. First, the cases considering the patentability of program-related inventions do not establish rules that enable a conscientious patent lawyer to determine with a fair degree of accuracy which, if any, program-related inventions will be patentable. Second, the inclusion of the ambiguous concept of an “algorithm” within the “law of nature” category of unpatentable subject matter has given rise to the concern that almost any process might be so described, and therefore held unpatentable. In my judgment, today’s decision will aggravate the first concern and will not adequately allay the second. “)

              Stevens also understood the facts (“since devices for constantly measuring actual temperatures — on a back porch, for example — have been familiar articles for quite some time, I find it difficult to believe that a patent application filed in 1975 was premised on the notion that a “process of constantly measuring the actual temperature” had just been discovered.”).

              Justice Stevens knew what was up. And it’s easy to see that. That’s why guys like “anon” and his cohorts are always trashing him and doing backflips to resurrect Judge Rich’s rotting corpse instead. Of course that’s not ever going to happen. Fun to watch, though. ;)

              1. 11.2.2.2.2.1.1

                More importantly, Stevens believed that Flook was “misapplied” in Diehr, not that Flook was overturned.

                Ha ha haha haha.

                Good one – you funny.

                Maybe you want to ask him how he felt losing his majority position in Bilski?

                How did your “guaranteed result” of that case come out again?

          3. 11.2.2.2.3

            A couple of thoughts about Musgrave:

            1) I definitely do not think it is good law now. I stand by my earlier assertion that Justice Stevens gave us the point-of-novelty test in Flook, but that Justice Rehnquist helped the Diehr court to see how misguided was this way of reading section 101.

            2) However, while Diehr restored as-a-whole sanity for ~3 decades, the bad old itch for point-of-novelty took hold of Justice Breyer, who restored this test in Mayo. Therefore, whether or not Diehr gave us back Musgrave is beside the point. Those days are gone now. Back to claim dissection…

            3) Incidentally, Judge Baldwin did not dissent in Musgrave. He concurred. For whatever little it is worth, I think Judge Baldwin’s concurrence is better than Judge Rich’s Musgrave opinion, although I definitely think that Judge Rich reached the statutorily correct holding (pity that the otherwise sensible Justice Breyer did not follow Judge Rich’s wise guidance).

            1. 11.2.2.2.3.1

              Except for the fact Greg that the Supremes scr3wed themselves with Mayo by claiming that the decision was not intended to change ANY precedent, least of all Diehr, which was said to be most on point.

              Plain fact of the matter (except for those exceptionally deluded) is that the Court’s decisions cannot be squared.

              Only those clenching tight their eyes claim they cannot see this.

              1. 11.2.2.2.3.1.1

                Mayo… claim[s] that the decision was not intended to change ANY precedent…

                Sure. And Diehr claimed that it did not overturn Flook. And CJ Rehnquist’s original Casey opinion claimed that it did not overturn Roe. Justices play coy like this all the time, but it is cold comfort to those who prefer the earlier precedent. Lower court judges know what is going on and rule accordingly (see, e.g., the panel opinion in Ariosa v. Sequenom).

                [T]he Court’s decisions cannot be squared.

                I agree. Diehr cannot be cogently reconciled with Mayo/Alice. The regrettable conclusion is that claim dissection—while statutorily wrong—is nevertheless the law of the U.S., at least until Congress gets to work and fixes the hash that the SCotUS is making of the patent system.

                1. Not so Greg – Diehr said no such thing, and later cases (as I have shown) confirm my views.

                  The Mayo thing was explicit.

                  Funny how the Court gets so @ngry at patent attorneys being “scriviners” when they should be paying better attention to their own scrivining efforts.

                2. I think that you are rather pointlessly splitting hairs here, Anon.

                  Fair enough, Diehr is not formally over-ruled. Still and all, it is not possible to reconcile Diehr with Mayo/Alice. When a lower tribunal meets a claim that would survive under Diehr but fail under Mayo/Alice, which standard do you think that tribunal will apply? In Ariosa, the only person to cite Diehr was Judge Linn in his concurrence, and even he thought that Mayo trumped his ability to sustain this claim under Diehr.

                  At this point, to say that Diehr is not “over-ruled” is simply to say that it is limited to its own particular facts. Great! Next time I meet a claim about controlling rubber molds using the Arrhenius equation, I will know that it is not invalid on §101 grounds. By this point, however, that does not do me much good for any claim that any client actually wants to get.

                  The important point is that Diehr said that we have to look at the claim “as a whole,” while Flook told us to separate out the “point of novelty” and look at it on its own. Mayo rests on an approach that separates out the “point of novelty,” which is a de facto reversal of the part of Diehr that really mattered, regardless of an errant remark in Mayo that the Court does not consider itself to be “depart[ing] from case law precedent” (132 S. Ct. at 1302).

                3. It is definitely NOT splitting hairs and it is the very opposite of pointless.

                  The disparity needs to be hammered home with a take-no-prisoners Churhchill approach rather than a “patent pieces for our time” Chamberlain, “gee, maybe if I just “take it,” the law will magically heal itself” mindset.

                  Stomp.
                  On.
                  The.
                  Gas.
                  Pedal.

            2. 11.2.2.2.3.2

              Greg DeLassus, I definitely do not think it is good law now. I stand by my earlier assertion that Justice Stevens gave us the point-of-novelty test in Flook, but that Justice Rehnquist helped the Diehr court to see how misguided was this way of reading section 101.

              Think of Flook like this: If the novel subject matter is not eligible, then invention must be in eligible. The only hole in this thought is that the ineligible can functionally modify the eligible subject matter so as to produce a new or improved result, there may be invention in the claim as a whole. Think printed matter in this.

              The printed matter doctrine originated in this case: Hotel Security. Let me give you the headnote from Hotel Security:

              A system of transacting business, disconnected from the means for carrying out the system is not, within the most liberal Interpretation of the term, an “art,” and, unless the means used are novel and disdose invention,
              such system is not patentable.

              Stevens in Bilski tried to restore Hotel Security. Breyer joined with Stevens in that dissent. Thus his opinion in Mayo.

              Flook (Hotel Security) is now the law.

              1. 11.2.2.2.3.2.1

                Actually, Flook stood more for the proposition that invention must be in eligible subject matter,

                “The process itself, not merely the mathematical algorithm, must be new and useful. Indeed, the novelty of the mathematical algorithm is not a determining factor at all. Whether the algorithm was in fact known or unknown at the time of the claimed invention, as one of the “basic tools of scientific and technological work,” see Gottschalk v. Benson, 592*592 409 U. S., at 67, it is treated as though it were a familiar part of the prior art.” (emphasis added)

                As I said, the main failure here is to not recognize that that the algorithm could modify the process to produce a “new” and useful result.

                1. I agree with you that Flook is definitely the law now. I do not like this, but I cannot disagree. I do think, however, that you out to mention that your Diehr quote comes from the dissent, not the majority.

                2. I agree with you that Flook is definitely the law now. I do not like this

                  Other than the direct effect it might have on your pocketbook and your unsupportable view that “nobody is going to invent super cool stuff anymore”, why do you “not like the law now”? Can you explain your feelings?

              2. 11.2.2.2.3.2.2

                Actually Ned, you continue to be wrong about the entire printed matter discussion.

                As has been pointed out, your attempt to elevate Hotel Security is both NOT proper law (as was told directly to you by Prof. Crouch) and explicated for you in stellar detail by David Stein (besides the HS case itself references earlier cases – as I pointed out to you).

                All we get from you is the fingers in the ears Merry Go Round of your propaganda monologue.

              3. 11.2.2.2.3.2.3

                Flook (Hotel Security) is now the law.

                Only Ned attempts to take a diminishing minority view and “make it the law.”

                Ned – WAKE UP: 3, the new 4, is STILL not 5.

            3. 11.2.2.2.3.3

              Greg: Back to claim dissection…

              This idea that Diehr prohibited “claim dissection” existed only in the minds of some clueless people, Greg. Somehow you drank the kool-aid. That’s your problem. You can cling to your revisionist history blanket if you like but you’ll never reconcile your belief with the language in Diehr itself (that I already pointd out to you) and subsequent cases in which claims were “dissected” (i.e., compared to the prior art to determine what was new).

              Once again: the Diehr majority was crystal clear that — at least in some instances — the answer to the eligibility question requires a comparison of claim elements to the prior art. The belief that Diehr prohibited claim dissection was a myth propogated by the lowest forms of innovators and their shallow-minded attorneys.

              This was all debated for years before you came here, Greg. Your side lost that debate in spectacular fashion. Just give it up already.

              whether or not Diehr gave us back Musgrave is beside the point

              LOL. Nice try. It’s not “beside the point” of the fact that you are completely wrong about the relationship between Deihr and Musgrave. The Supremes in Diehr didn’t come close to establishing Rich’s fantasy world as law. I already explained that to you.

              1. 11.2.2.2.3.3.1

                In determining the eligibility of respondents’ claimed process for patent protection under § 101, their claims must be considered as a whole. It is inappropriate to dissect the claims into old and new elements and then to ignore the presence of the old elements in the analysis. This is particularly true in a process claim because a new combination of steps in a process may be patentable even though all the constituents of the combination were well known and in common use before the combination was made. The “novelty” of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the § 101 categories of possibly patentable subject matter. [emphases added]

                Diamond v. Diehr, 450 U.S. 175, 188 (1981)

                1. Huh? How do you figure. The quoted portion is the test by which the Court reached its holding.

                  That is why Justice Stevens dissented. Justice Stevens takes us through the outcome one would reach if one applied the Flook test (and he should know, being the author of the Flook test). Justice Stevens concludes that if the Flook test were applied, the Diehr claim would fail §101.

                  This means that the Flook test was not good law, post-Diehr. The test I quoted was necessary to reach the Diehr holding. It is, therefore, not at all dictum.

                2. The long-observed difficulty with communicating with the Dierhbots is that they are so wrapped up in their mythology they never stop to take a moment and think about what they are saying and what it really means.

                  When others try to help them understand the immediate logical and severely problematic ramifications of their own statements, they simply dissemble or recite the same old scripts that have gotten them nowhere.

                  And when that fails we soon get to Plan Y (“But 101 says processes are eligible!”) and then Plan Z (“The Supreme Court has no business interpreting the statute!”). Man, it’s tiresome. Of course, hoping that their opponents get tired is really all they’ve got at this point.

                  Sadly for them, that isn’t going to happen. Maybe we give them a silver star for effort? Nah.

                3. The long-observed difficulty with communicating with the anti-Dierhists is that they are so wrapped up in their mythology they never stop to take a moment and think about what they are saying and what it really means.

                  There – fixed it for you.

                4. Greg, no, the claim was held eligible because the claim was to a conventional process, e.g., that passed the MOT.

                  This part,

                  The “novelty” of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the § 101 categories of possibly patentable subject matter.

                  is close to, but materially different from this from Flook:

                  The process itself, not merely the mathematical algorithm, must be new and useful. Indeed, the novelty of the mathematical algorithm is not a determining factor at all..

                  Diehr did not really describe where the invention had to be. The whole thing old? That is not consistent with 101 that requires new or improved.

                  Flook said the process itself had to be new and useful. That, my friend, is consistent with the statute. This thinking HAS prevailed.

                  Invention, if there is invention, has to be in the otherwise eligible subject matter.

                5. Ned,

                  You keep on inserting MoT as if it were a rule of law.

                  It is not.

                  Your argument is weaker for this – not stronger.

                6. Invention, if there is invention, has to be in the otherwise eligible subject matter.

                  for reasons abundantly stated and extremely clear, this “throw away” line from you should be simply thrown away.

                  Invention is the claim as a whole. There is no such thing in the 101 sense of a parsed, dissected, and viewed only on its own “claim element” that is to be judged as passing 101.

                  Every time you repeat your fallacy Ned, your remove a piece of your credibility.

              2. 11.2.2.2.3.3.2

                Hm, let’s try that again:

                In determining the eligibility of respondents’ claimed process for patent protection under § 101, their claims must be considered as a whole. It is inappropriate to dissect the claims into old and new elements and then to ignore the presence of the old elements in the analysis. This is particularly true in a process claim because a new combination of steps in a process may be patentable even though all the constituents of the combination were well known and in common use before the combination was made. The “novelty” of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the § 101 categories of possibly patentable subject matter. [emphases added]

                Diamond v. Diehr, 450 U.S. 175, 188 (1981)

                1. Greg quotes the Supremos: It is inappropriate to dissect the claims into old and new elements and then to ignore the presence of the old elements in the analysis.

                  Right. But try to wrap your head around the fact that nobody is suggesting that “the presence of old elements” be “ignored.” Flook didn’t suggest that either, which is why the majority in Diehr didn’t go out of its way to trash Flook. It went out of its way to praise Flook (and Benson) and specifically noted that certain otherwise elements could be characterized as “insignificant post-solution activity”.

                  The “novelty” of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the § 101 categories of possibly patentable subject matter.

                  Right. And the only way to square that statement with the rest of Diehr is to appreciate that claims with novel elements can still be ineligible. If there was any doubt about that (and there was never any doubt in most people’s minds) it was put to bed by the Supreme Court in Mayo.

                2. [T]he majority in Diehr… specifically noted that certain otherwise elements could be characterized as “insignificant post-solution activity”.

                  Agreed. To my mind, the characterization “insignificant” does not really speak to the novelty of a limitation, so I do not know why you bother to mention this in a discussion of dissecting novel elements from old elements. In any event, I agree that Diehr does not prohibit dissecting out the “insignificant” elements when assessing §101 eligibility.

                  [T]he only way to square that statement with the rest of Diehr is to appreciate that claims with novel elements can still be ineligible.

                  Sure. Who doubts it? If I discover a new species of Amazonian frog, and try to claim it, I will fail §101. The claim will include nothing but novel elements (“a frog, characterized in that it is biologically derived from the sample deposited with the American Type Culture Collection as sample XYZ123”) and it will still be §101 ineligible.

                  If there was any doubt about that… it was put to bed by the Supreme Court in Mayo.

                  It is pretty clear to me that Mayo over-ruled Diehr, or at least limited Diehr to its own facts. While you are correct that Diehr allows one to dissect “insignificant” limitations from the claim when assessing §101, Diehr explicitly prohibits one from dissecting out the old elements.

                  What else, however, is Mayo doing when it discards “routine, conventional activity, previously engaged in by those in the field,” (132 S. Ct. at 1299) limitations from the §101 analysis? Mayo throws out the test articulated in Diehr and reinstates the Flook test.

                  Contrary to your repeated assertions, I am not having a hard time understanding this. I can see as clearly as anyone else what the law is in view of Mayo/Alice. Unlike you, I am not happy about it. But I agree that this is the law for the foreseeable future.

                3. While you are correct that Diehr allows one to dissect “insignificant” limitations from the claim when assessing §101, Diehr explicitly prohibits one from dissecting out the old elements.

                  Er … we already went through that part of the discussion, Greg, and I patiently explained to you that what Diehr “explicitly prohibits” is “dissecting” and “ignoring”. That’s a huge difference.

                  But either you’re not intelligent enough to recognize that difference, or you are a dishonest hack. Or both. I’ve been around a long time so it’s not like I haven’t seen the game you’re playing a zillion times.

                  Please tell everyone how you determine which elements are “insignificant” and which ones aren’t without “dissecting” the claim, Greg. That might help to kickstart your brain.

                  Then let’s modify your wonderfully simple frog hypothetical. Let’s say that instead of claiming your ineligible new frog, you claim a method of “observing an aspect of the new frog” and a dependent claim reciting “obtaining a blood sample from the new frog”. Immediately after Diehr is decided, I challenge your claim. We go to the Supreme Court. Let everyone know if you think you win the case and tell everyone why. Then we continue to some other hypotheticals.

                  And yes I’ve taken many others down this path before. You’ll certainly learn something about subjet matter eligibility, how it works and why. And then you’ll disappear and pretend it never happened.

                4. I patiently explained to you that what Diehr “explicitly prohibits” is “dissecting” and “ignoring”. That’s a huge difference.

                  Yes, but Mayo does not just dissect. Mayo also ignores, just like Diehr says you are not supposed to do. Once a claim limitation is determined to be “routine or conventional” it drops out of the analysis. That is why it is fairly plain that Mayo effectively over-ruled Diehr.

                  Let’s say that instead of claiming your ineligible new frog, you claim a method of “observing an aspect of the new frog” and a dependent claim reciting “obtaining a blood sample from the new frog”. Immediately after Diehr is decided, I challenge your claim. We go to the Supreme Court. Let everyone know if you think you win the case and tell everyone why.

                  I think that the challenger would win that case. Observing an aspect of the frog has no substantial utility, and the same goes for the blood sample dependent claim. Both claims fail §101, but not for your preferred reason (judicial exceptions). Rather, they fail the utility requirement.

                5. Quick question for you, Greg: when you write your answers, do you ever stop, re-read what you wrote, and think for a moment about what the likely response is going to be? I’d suggest you learn to do that because you really are a waste of time.

                  Mayo does not just dissect. Mayo also ignores, just like Diehr says you are not supposed to do. Once a claim limitation is determined to be “routine or conventional” it drops out of the analysis.

                  Last time I checked, “determining” is not “ignoring”. And concluding that a limitation is insufficient to concur eligibility doesn’t mean that the limitation has “dropped out of the analysis.” It means that the claim has failed the test.

                  Observing an aspect of the frog has no substantial utility, and the same goes for the blood sample dependent claim.Both claims fail §101, but not for your preferred reason (judicial exceptions). Rather, they fail the utility requirement.

                  I fully expect the utility prong of 101 to be juiced up in short order, Greg, so I’m glad to have you on board. But I’m disappointed to see you already dodging the larger issue (disappointed, but not really surprised!).

                  Let’s just make the simple and realistic addition to the hypothetical that the observed aspect of the new frog has a substantial use, e.g., it’s useful for diagnosing the probability that a nearby population of children will die from leukemia. Same questions as before. Remember: the frog is ineligible subject matter. You can’t patents to own the frog. What happens at the Supreme Court in the immediate wake of the Diehr decision when I challenge your claim, and why?

      3. 11.2.3

        First case, and lot more that followed:

        LE ROY ET AL. v. TATHAM ET AL., 55 U.S. 156, 14 L. Ed. 367 (1852). link to scholar.google.com

        “A patent is not good for an effect, or the result of a certain process, as that would prohibit all other persons from making the same thing by any means whatsoever. This, by creating monopolies, would discourage arts and manufactures, against the avowed policy of the patent laws.

        A new property discovered in matter, when practically applied, in the construction of a useful article of commerce or manufacture, is patentable; but the process through which the new property is developed and applied, must be stated, with such precision as to enable an ordinary mechanic to construct and apply the necessary process. ”

        The cases recognized that one could surround a claim to a result with the routine and conventional. Thus, the aphorism “functional” at the point of novelty was created to describe the general proposition that one could not claim a result or an effect.

        See, e.g., Gen. Electric Co. v. Wabash Co., 304 U.S. 364, 58 S. Ct. 899, 82 L. Ed. 1402 (1938). link to scholar.google.com

        “But the vice of a functional claim exists not only when a claim is “wholly” functional, if that is ever true, but also when the inventor is painstaking when he recites what has already been seen, and then uses conveniently functional language at the exact point of novelty.”

        Also, Perkins Glue link to scholar.google.com:

        “But an inventor may not describe a particular starch glue which will perform the function of animal glue and then claim all starch glues which have those functions, or even all starch glues made with three parts of water and alkali, since starch glues may be made with three parts of water and alkali that do not have those properties.

        “One attempting to use or avoid the use of Perkins’ discovery as so claimed and described functionally could do so only after elaborate experimentation. Respondents say that laboratory tests would be insufficient and that “the best and probably the only satisfactory test is to try it out on a large scale in a furniture or veneering gluing factory.” A claim so broad, if allowed, would operate to enable the inventor who has discovered that a defined type of starch answers the required purpose to exclude others from all other types of starch and so foreclose efforts to discover other and better types. The patent monopoly would thus be extended beyond the discovery and would discourage rather than promote invention.

        “That the patentee may not by claiming a patent on the result or function of a machine extend his patent to devices or mechanisms not described in the patent is well understood. O’Reilly v. Morse, 15 How. 62, 112, 113….

        “Respondent argues that this principle, applicable to machine patents, is inapplicable to a patent for the composition of matter which is always a result of a process and concededly is patentable as such, but the attempt to broaden product claims by describing the product exclusively in terms of its use or function is subject to the same vice as is the attempt to describe a patentable device or machine in terms of its function. As a description of the invention it is insufficient and if allowed would extend the monopoly beyond the invention.”

          1. 11.2.3.1.1

            PB: Do you have anything in this century?

            There’s plenty of contemporary examples of “point of novelty” analyses being used to tank claims or decide other legal issues (e.g., inventorship, inequitable conduct) even when that specific terminology (i.e, “point of novelty”) is not used. That’s because sane and reasonable people cannot help but consider claimed inventions from that perspective in many typical patent contexts.

            If you can’t understand why this is the case, PB, then you really shouldn’t be in the biz. You’re inevitably harming your clients and the system.

            Let’s set aside for the momet the most obvious 21st century examples: Prometheus and Alice and all the CAFC cases and all the district court and PTAB decisions correctly (and thankfully) following those decisions.

            Here are some additional specific examples for you to chew on: Eli Lilly, 376 F.3d at 1362 (Fed. Cir. 1998) (“All that is required of a joint inventor is that he or she (1) contribute in some significant manner to the conception or reduction to practice of the invention, (2) make a contribution to the claimed invention that is not insignificant in quality, when that contribution is measured against the dimension of the full invention, and (3) do more than merely explain to the real inventors well-known concepts and/or the current state of the art.”); Ethicon, 135 F.3d at 1460 (“One who simply provides the inventor with well-known principles or explains the state of the art . . . does not qualify as a joint inventor.”); eSpeed, Inc. v. BrokerTec USA, L.L.C., 480 F.3d 1129, 1136–37 (Fed. Cir. 2007) (finding undisclosed declarations material because they were related to the point of novelty of the application); Pharmacia Corp. v. Par Pharm., Inc., 417 F.3d 1369, 1373 (Fed. Cir. 2005) (“[T]hese misleading declarations go to the very point of novelty.”).

            [with a tip of the hat to Master Demon Asmodeus Lemley]

            1. 11.2.3.1.1.2

              You do realize that I

              I was responding to Slashdot/PB, “anon.”

              Maybe it’s time for you to get those meds checked.

              1. 11.2.3.1.1.2.1

                But somehow the “get your meds checked” line of C R P is Ok with you…?

                Who runs this Ec(h)osystem…?

        1. 11.2.3.2

          Ned’s citation of Wabash gets at a point to which I was alluding when I specified the Section 101 context above. There are several legal tests that are called “the point of novelty” test that each have little or nothing to do with the other “point of novelty” tests. Wabash, for example, deals with the problem of claims that are functional at the point of novelty, which is more of a 112 problem than a 101 problem.

          1. 11.2.3.2.1

            Wabash, for example, deals with the problem of claims that are functional at the point of novelty, which is more of a 112 problem than a 101 problem.

            Depends on how you wish to frame it.

            “Functionalities” aren’t eligible subject matter. Nobody disputes that.

            Can you make a “new” “functionality” eligible merely by throwing in some old conventional junk that isn’t otherwise inventive?

            You might want to consider spending some time formulating a coherent and persuasive answer to that question.

            1. 11.2.3.2.1.1

              Asked and answered – many times now, Malcolm.

              (Try not to disappear into your Vinnie Barbarino meme).

              The Claim as a Whole doctrine already takes care of the mere aggregation type of claim – including those that may – and those that may not – have individual elements that sound in mental steps.

              Step away from your inte11ectually dishonest spin and join the grown-ups.

              If you dare.

              1. 11.2.3.2.1.1.1

                The Claim as a Whole doctrine

                Please share with everyone your understanding of exactly how this awesome “doctrine” works.

                I think the details matter. You, on the other hand, treat this “doctrine” like some sort of magical slogan that makes your arguments for you. And you’ve been doing that for years. Guess what? It ain’t working. But you knew that already.

                1. “Please share…”

                  Again – asked and answered.

                  Maybe you should pay attention instead of always turning so quickly to your short script of ad hominem…

                2. Please share…”

                  Again – asked and answered.

                  Oh lookie the cowardly cretin is back to his old games.

                  Are you fingers too tired, Billy? Your mouth is full of cheetohs or something? C’mon. Pull up your big boy pants and spit it out for everyone. Tell everyone exactly how your “Claims as Whole” “doctrine” works. It’s super important to you, after all. Educate everyone.

  6. 10

    Dennis: The invention here solves a very practical problem …. Of course, the problems solved in Mayo and Alice were also very practical and that fact did not change the result.

    This is a key point and an important feature (not a bug!) of a well-functioning patent system. The purpose of the system is to promote certain kinds of advancements in the useful arts (i.e., technology) by granting exclusive rights to inventors who claim those certain kinds of advancements. Facts about the natural world are not among those “advancements” (for that matter, neither are facts about the man-made world), regardless of their “practicality.”

    But everyone knows that it is possible to write a claim that would — if granted and found enforceable — protect ineligible subject matter (e.g., a fact) without describing a technological advance and without expressly claiming “a fact” per se.

    The three most obvious ways of drafting such a claim (there are surely others) are the following:

    (1) describing something new that could, “in fact”, be built while using functional language at the point of novelty;

    (2) describing a method comprising prior art data gathering steps and thinking about a “new fact” related to the data gathered (or to be gathered) (this issue was addressed in Prometheus); and

    (3) describing the use of prior art technology to detect a newly disclosed natural phenomenon (Myriad’s broad method claims, properly tanked by the CAFC).

    This case is flavor number 3.

    1. 10.1

      Note that scope of the claimed invention is the critical feature here (i.e., per the discussion above).

      Dennis correctly observes that it’s not the “practical importance” of the underlying discovery that decides (or should decide) the eligibility of patent claims (although the “practical importance” has mattered in the past when the utility of the claimed invention is deemed to be more experimental than practical — see, e.g., Incyte’s famously tanked claims to ESTs).

      Justice Breyer, at least, appears to have acknowledged this aspect of the system during the Prometheus arguments when he posed the question as to whether the discoverer of a correlation between fingernail length and [insert hugely important disease here] could broadly claim the method of looking at the length of one’s fingernail and thinking about the correlation. The answer is: absolutely not. And the reason why is not that “the patent system doesn’t care about curing disease”. The reason why is that opening the patent system up to such claims ruins the patent system. It ruins the patent system because it allows facts to be monopolized without a limiting technological contribution to the art. The Federal Circuit tried this experiment already (the nullified State Street Bank decision) and the results are widely perceived to have been a massive disaster that we’re just beginning to clean up now (with the expected huge resistance from the stakeholders and their attorneys who’ve made millions while the system melted down).

      1. 10.1.1

        MM, if the only thing new in a claim is a discovery, and that discovery is not applied to produce a new or improved result within the meaning of the MOT, then the claim is not directed to a palatable invention, but to the discovery itself.

        Just because someone calls a claim an invention does not make it so. Just because the claim contains novel subject matter does not make it patentable invention. A product of nature is a composition, but it is discovered, not invented. A law of nature is discovered, not invented. Something more than the law of nature in the claim has to be inventive.

        When the novelty in the claim is the unapplied discovery, the claim is not to anything that one can remotely be called an invention.

        1. 10.1.1.1

          Still trying to “hawk” MoT, Ned, something even the Royal Nine state as not required?

          Same old same old…

          1. 10.1.1.1.1

            something even the Royal Nine state as not required

            By their own admission, the Supreme Court has never been presented with a carefully articulated description of the test, nor has it been presented with a set of claims and facts sufficient to allow it to reach a decision that requiring such a test to be satisfied.

            We do know that even the relatively naive Supreme Court in Bilski believed that the lack of any machine or physical transformation in a claim is an incredibly important clue that the claim is ineligible. So they were 90% of the way there.

            And we also know that subsequently the increasingly patent-educated Supreme Court has held that certain claims which did recite certain kinds of machines were ineligible. In addition, certain claims that did include physical transformations were deemed to be ineligible.

            Seems to me that the Supreme Court is getting close to converging on a more definitive statement. I’m pretty sure that statement is going to go way beyond Bilski. And that’s going to be an awesome day for the US patent system, even if it causes you and your rich cohorts to fill another ocean full of your crocodile tears.

            1. 10.1.1.1.1.1

              “relatively naive…90% of the way there”

              You really funny.

              That was 9-0 rejection of what you (and Ned) wanted. I take it you are still struggling with the difference between a law and a clue….

              1. 10.1.1.1.1.1.1

                That was 9-0 rejection of what you (and Ned) wanted.

                Can you remind everyone what you wanted “anon”?

                LOLOLOLOLOLOLOLOLOLOLOL

    2. 10.2

      True Believers in the “patent=progress” mythology often appear to have a really hard time following the above line of reasoning even when it’s broken down in bite size pieces. They have an equally hard time recognizing that the vast majority of non-elite, non-patent owning folks don’t typically have this difficulty.

      Lastly, I’ll note one mistake in the quoted passage at the top my comment at 10: the claims at issue in Prometheus v. Mayo did not “solve a problem.” That mistaken belief was partly responsible for the Federal Circuit’s incorrect holding. You could practice the steps recited in Prometheus’ claims on a patient every minute of the day for a week and all you would end up with is a bunch of data and a patient with severe blood loss.

    3. 10.3

      seems #1 is true of many software patents, #2 of business method patents, and #3 biotech… in other words, where all the action has been in the patent system for 20 years or more. Who knows if it can ever be unwound….

  7. 9

    There’s no easy way out of this mess. The Supreme Court precedents themselves can barely be reconciled. But if we were to take a purposive approach to part one of the Mayo analysis, then we might find the claims here patentable whereas the claims in Mayo were not.

    In this case, the purpose of the claimed method is not at all abstract. The purpose of the claimed method is to amplify cffDNA and determine its presence in a sample. That’s quite tangible. In Mayo the purpose was to prescribe a particular dose of some medicine.

    The strategy of looking to the underlying purpose for some language in order to resolve ambiguities in the language itself is a well established. It might just help us out of the 101 mess.

    This “purposive approach” is not my idea. I would attribute it to the late Judge Pfaelzer, who applied it in two Central District of California cases that were decided late last year: CalTech v. Hughes Comms. and Enfish. She was applying it to software claims, but I think the same approach would work well to preserve the validity of many biotech claims that are threatened by the ambiguity inherent in the Mayo analysis.

    1. 9.1

      What basis in the law does this approach have? Why should the purpose of a claim matter?

      101 has always been about effect not purpose. The question courts have asked is what are the effects of giving this person the right to exclude others from making/using/selling the invention.

      1. 9.1.1

        There is no explicit basis for this approach in either the Supreme Court or Federal Circuit law. Rather, it is implicit in how the 101 analysis was applied to the facts in Mayo, Bilski, and Alice. Given how the claims were framed in Alice, for example, it is clear that the Supreme Court was more concerned with the purpose of of the claimed method — i.e., mitigating settlement risk — than with the details of the process itself, which included other less abstract steps. The Supreme Court arguably took the same approach in Bilski and Mayo, first characterizing the claims in terms of their intended purpose (hedging risk and applying a natural law, respectively).

        Arguably, this approach also helps reconcile Diehr with Mayo, as the majority in Diehr seems to have been persuaded that the purpose of the claimed invention was sufficiently non-abstract to qualify under 101, despite how it incorporated abstract limitations.

        I do not believe this approach is going to resolve every issue, but given how many claims now threatened by Mayo would seem to be directed to non-abstract purposes, I would think it would help at least by getting those claims off the 101 hook without wading into the “inventive concept” quagmire. (Although Judge Pfaelzer had some interesting suggestions for that part of the Mayo test too).

        1. 9.1.1.1

          This is a policy problem not a legal one. It seems that courts have used 101 to invalidate patents that shouldn’t have issued for policy purposes.

          In biotech it was concern over chilling R&D. In business methods it was concern about hindering commerce.

          We should be more honest about this in my opinion.

          1. 9.1.1.1.1

            …or rather, it WAS a policy problem, not a legal one. Now it’s both.

            And I think I agree with you about “honesty,” although I wouldn’t quite put it that way. I don’t think it’s lack of honesty so much as Burkean conservatism or simply fear of making a mistake. I can imagine that I might sleep better at night if I were a judge and gave my reasoning in terms of the minimal facts and doctrine sufficient to reach my decision in a case, both of which are mutable, than if I were to give or even add my reasoning in terms of far reaching policy considerations and theory. I think of judges like Judge Posner as being simultaneously the most brave, candid, clear, and dangerous kind of judge (in the Bickel sense, he seems to be very nice in person). It would be really cool to see him sit by designation on one of these 101 cases…

            1. 9.1.1.1.1.1

              Can’t argue with any of that. The question is how to achieve the right policy without overruling Diehr.

              Whoever can pe

              1. 9.1.1.1.1.1.1

                Policy is not a matter for the judiciary when it comes to statutory law.
                Patent law has been expressly designated to be the domain of Congress by our constitution.

                This is more than just an “honesty” point – this is a Rule of Law point.

                (even Ned Heller posted a link to an article written by Judge O’Malley warning against the trend to invite judges to write law for which they have no business writing.

              2. 9.1.1.1.1.1.2

                The question is how to achieve the right policy without overruling Diehr.

                The “policy” that you can’t simply identify an ineligible (or eligible) element in a claim and end the eligibility analysis at that point is a perfectly reasonable “policy” that is consistent with Diehr.

                1. In a nutshell:

                  There is a clear difference from the looking at each element AND looking at the claim as a whole compared to what you (and Ned) are attempting with a “take the claim as a whole AND dissect it, then if one element is not to your liking, Gist away the rest of the elements, point to that one element, call it the “Point of Novelty” and attempt to apply 101 to that less than whole claim element.

    2. 9.2

      Mayo is also pretty clear. As is Alice.

      Merely applying a formula in a generic manner does not make a claim patent eligible. You need “something more”

      What that “something more” is–is really the issue.

      The only example we have is Diehr. However, is the level of specificity of the claims in Diehr necessary or will a more generic application suffice?

      1. 9.2.1

        is the level of specificity of the claims in Diehr necessary or will a more generic application suffice

        More generic than the claims in Diehr???

        Pretty sure that Diehr’s claims would be IPR’d out of existence as obvious in two seconds today. They should have been invalidated as obvious back then.

        1. 9.2.1.1

          Well you are preaching to the choir about Diehr.

          Still the law though for whatever that’s worth.

          1. 9.2.1.1.1

            Still the law though for whatever that’s worth.

            Exactly what is “still the law”?

            Dierh is just the name of the case, you realize.

            And there is no doubt that the law as set forth in Prometheus and Alice permits (indeed, mandates in the typical case) the comparison of separate claim elements to the prior art for the purposes of determining the eligibility of the claim.

        2. 9.2.1.2

          I agree MM. I think Diehr has not been convincingly reconciled with Mayo or Alice yet. Judge Pfaelzer’s is a reasonable approach given that Diehr was never expressly overruled.

          1. 9.2.1.2.1

            I think Diehr has not been convincingly reconciled with Mayo or Alice yet.

            I don’t see any contradiction. All Diehr ever stood for was the proposition that you can’t look at a claim and identify some ineligible or eligible element and conclude from that the entire claim is therefore ineligible or eligible.

            Total reconciliation. I don’t know what Pfaelzer’s appraoch was but I do know that it doesn’t matter because there is no “contradiction” and, frankly, there never was except in the minds of some very confused people (including juges) who hadn’t thought at all the issues.

            1. 9.2.1.2.1.2

              Your “Total reconciliation” translates to the opposite of “Total ignorance.”

              All Diehr ever stood for was the proposition that you can’t look at a claim and identify some ineligible or eligible element and conclude from that the entire claim is therefore ineligible or eligible.

              Except for the fact that the “Point of Novelty” curse-aders (you included) are attempting to do exactly that and in so doing are attempting NOT to have Diehr apply.

              The Act of 1952 removed the judicial authority to set the definition of “invention” by common law rule – and concomitant with that action, removed “Point of Novelty” in the 101 sense as is the mantra of you and Ned.

              This was done by an act of Congress (not the singular and denigrated man named Rich).

              Breaking up what was the single paragraph into 101, 102, 112 and including 103 is the cornerstone – even today after the AIA – of understanding both 101 and the mess being made of that statutory law by the branch of the government NOT allocated authority to write patent law.

              Legislating from the bench MAY be all fine and good for those traditional areas outside of statutory law (and even with some overlap of those areas with statutory law – as that statutory law may invite).

              Clearly though, such is NOT all fine and good for patent law in areas that Congress has NOT allocated a sharing of their authority with explicit and delineated lines.

              But a BASIC understanding of the Rule of Law, and of the US constitution and of our protection of that constitution with the separation of powers MANDATES that the warning by Judge O’Malley against what you, Ned, and several others of a particular anti-patent mindset wish to achieve in CHANGING the law by edict from the bench instead of the rightful place of the halls of Congress.

        3. 9.2.1.3

          Why is that? Everything is easy to invalidate in hindsight. I personally don’t see that the claims in Diehr were “generic” in the slightest.

          1. 9.2.1.3.1

            I think Diehr is an example of what Mayo had to say about the process steps in the claim: if these had not been conventional, we would be having a different conversation.

            Dierhr did employ a computer running a program that executed a preexisting mathematical for the same purpose it had formerly been used, to calculate the time to open the mold. What was new in the claim was not this. What was new in the claim was the use of thermocouples to continuously monitor the temperature in the mold to supply to the programmed computer to continuously update the time to open the mold. That was new.

    3. 9.3

      Michael Martin, “Mess,” “barely be reconciled,” “the purpose of the claimed method is not at all abstract.”

      Michael, it plain as day that you simply do not get it. Why this can be is not certain, but plainly you ignore Malcolm and me, when we alone here have been consistently right on 101 over the years.

      Pay attention to Malcolm if you really want to understand the law. Malcolm uses MM for short.

      1. 9.3.2

        Malcolm and me, we alone

        Shudder the thought.

        Celebrating a constitutional crisis and violation of separation of powers is not a good thing, Ned. And that’s on a good day for you.

        With patent “friends” like these, who needs enemies?

    4. 9.4

      The purpose of the claimed method is to amplify cffDNA and determine its presence in a sample. That’s quite tangible.

      Whatever the merits are of this “purposive” test, it can’t work in the manner you described. “Amplifying cffDNA” can not be the “purpose.” “Amplifying cffDNA” is the method itself.

      The purpose of the method is to determine whether cffDNA is present or absent in a sample. While that purpose may be described as “tangible” (no reasonable person will dispute that the sample or the cffDNA is an intangible abstraction) there has to be more to this “purposive” analysis that the analysis you seem to be suggesting here.

      Here’s just one reason why (this is the first reason that came to my mind): this cffDNA detection method we’re discussing is now part of the prior art (and has been for years). Let’s assume for the sake of argument that the method is eligible because of its “tangible purpose”. Now I claim the identical method except that I add a prior step of thinking some non-obvious thought about the patient prior to performing the eligible prior art steps. The “purpose” of the claimed method is unchanged. But the claim I described can’t possibly be eligible unless you want to drive another truck through the patent system.

      The focus has to remain always on the nature of the subject matter that the claim protects. Perhaps where you wish to be heading is a test that looks only at the tangible transformation (i.e., the physical transformation of matter) that occurs during the execution of the recited steps and then asks whether that tangible transformation is innovative (and therefore eligible) or merely an old data gathering technique directly towards an old target with a new name (and therefore ineligible).

      1. 9.4.1

        I wrote: (no reasonable person will dispute that the sample or the cffDNA is an intangible abstraction)

        and obviously I meant to say that “no reasonable person will argue that the sample or the DNA is an intangible abstraction”

        1. 9.4.1.1

          usly I meant to say that “no reasonable person will argue that the sample or the DNA is an intangible abstraction”

          The claims in Alice were NOT an “intangible abstraction” either.

          Or have you forgotten that both sides of that case (hence the Couet as well) agreed that the “machine” category was met?

          Gotta love that (unlimited) “Gist/Abstract” sword – comes really handy when one one wants to Gist away the facts of a case.

          1. 9.4.1.1.1

            The claims in Alice were NOT an “intangible abstraction” either.

            The claims in Alice were ineligible. Maybe you can tell everyone why.

            Or better yet: just decant the grasshoppers from your underwear and take a bath because, for the purposes of our discussion, I’m quite certain that neither I nor Michael give a hoot about “what both sides agreed to” in Alice.

            1. 9.4.1.1.1.1

              Of course you don’t care…

              Why start caring about facts now? You haven’t for nine years and running.

  8. 8

    Greg De Lassus: I see that Judge Bryson’s conclusion about Claim 21 (the diagnostic method claim I had in mind) was a concurring opinion, not an opinion for the court. Therefore, it is not binding precedent as I had said

    Actually what you originally wrote, Greg, was this: [T]he Supreme Court said that precisely the sort of thing covered by Sequenom’s patent (applying one’s knowledge of the existence of a natural product) is indeed patent eligible”

    That statement was a quintessential example of the kind of hacktackular “analysis” that we’ve all gotten used to seeing from defenders of the worst patents ever. All the Supreme Court said was that Myriad was in a prime position to come up with something patent-worthy. Instead Myriad wasted millions of dollars and untold years of time pursuing a pipe dream for the benefit of their “investors” and their corporate leaders (<— really compassionate and thoughtful people, I'm sure).

    People who have been paying even modest attention to Myriad's behavior will remember that Myriad had asserted method claims broadly covering the "detection" — using conventional means — of the ineligible sequences Myriad "discovered" (more accurately, Myriad discovered a correlation between the existence of certain sequences in a genome and the likelihood of breast cancer). Those claims were properly and reasonably tanked by the Federal Circuit following the straightforward application of the Supreme Court's decisions in Prometheus v. Mayo and Myriad.

    See write up here: link to patentlyo.com

    The facts in that case are difficult to distinguish from the facts here. Myriad “discovered” some super important DNA sequences and then it tried to prevent people from looking at the sequences using conventional means. The Federal Circuit wrote:

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

    Or to detect the presence of fetal DNA in a fluid where fetal DNA naturally occurs.

    You are surely familiar with that case, Greg, because you commented extensively in the thread (my favorite quote: “Peer review … is the worst system of advancing human knowledge, except for all the others”). Yet somehow you completely forgot the holding?

    1. 8.1

      I did not forget the holding of Ambry. Your response is a non sequitur. I noted that the Supreme Court had indicated that methods of using natural sequences are still §101 eligible. You respond by noting that the Federal Circuit has (mis)applied the Myriad and Mayo holdings to reach a contrary conclusion.

      These points are hardly contradictory to each other. It is entirely possible for a circuit court to do something that contradicts Supreme Court dictum.

      1. 8.1.1

        Greg: I noted that the Supreme Court had indicated that methods of using natural sequences are still §101 eligible.

        At best, that is an inaccurate re-statement of a passage that you have already admitted is nothing more than dicta. You already walked it back downthread after someone pointed out the error to you. Now you’re doubling down?

        It is entirely possible for a circuit court to do something that contradicts Supreme Court dictum.

        No doubt. But the Federal Circuit hasn’t “contradicted” the dictum we’re discussing because the dictum in question is about as vague as dictum can be. All the dictum says is that Myriad was in a great position to claim something patent-worthy — and maybe they did — but those potentially patent-worthy claims weren’t before the Supreme Court.

        You respond by noting that the Federal Circuit has (mis)applied the Myriad and Mayo holdings to reach a contrary conclusion.

        No, I responded by pointing out that the Federal Circuit has looked at PCR method claims very similar to the claims at issue here and reached a result that is the opposite of your misleading characterization of the Supreme Court’s dicta. For some reason you ignored that result. Now you seem to suggest that you knew all about that result but you disagree with it for some reason that I don’t recall you articulating in any detail.

        Just so we’re all on the same page, do you or do you not believe that if I discover the existence of a naturally occuring phenomenon (e.g., a new species of frog; a new correlation between a DNA sequence and some other event; a new type of cell; or a new asteroid) , I should be entitled to claim the use of all known methods to observe or study the phenomenon? If not, where do you suggest we draw the line and why do you make the distinctions that you do? Obviously you’ve thought about this a great deal …

        1. 8.1.1.1

          These posts have time/date stamps, so anyone who cares to can go back and see that I have not “walked back” anything in response to anyone else “calling” me on anything on this thread or the other.

          1. 8.1.1.1.1

            That’s just Malcolm being Malcolm – always mischaracterizing what others post, mischaracterizing the law, mischaracterizing facts, on and on and on and…

          2. 8.1.1.1.2

            Greg: anyone who cares to can go back and see that I have not “walked back” anything in response to anyone else “calling” me on anything on this thread.

            You really are a piece of work, Greg.

            Here’s you downthread: [T]he Supreme Court said that precisely the sort of thing covered by Sequenom’s patent (applying one’s knowledge of the existence of a natural product) is indeed patent eligible.

            Here’s “topce” responding to your comment: I wouldn’t go as far as to say that they said the method claims (which were not before the Court) were patent eligible

            Here’s your response: Fair enough.

            So you walked it back. But wait! That’s not all. You then continued to discuss some CAFC case as if it was a majority opinion … but you had to walk that back, too.

            Well played, Greg. LOL

            1. 8.1.1.1.2.1

              The only thing that I see in your over-long vignette that could be plausibly styled as “walking it back” is when I corrected myself about Judge Bryson’s opinion. I had mis-remembered his opinion as the majority, but it was really a concurrence. I corrected that point without anyone “calling” me on it.

              Anyone who wishes can look at the time/date stamps and see whether there was an intervening post by someone else between my mistake and my correction. There was not.

              1. 8.1.1.1.2.1.1

                he only thing that I see in your over-long vignette that could be plausibly styled as “walking it back” is when I corrected myself about Judge Bryson’s opinion.

                Then you’re even denser than you first seemed because when someone says “you went too far” and you reply “fair enough” that’s plausibly “walking it back.”

                Keep digging, Greg!

  9. 7

    I don’t see how this Renya opinion is compatible in any way with the awful Chen opinion in DDR Holdings. (In DDR, the patentee discovered the fundamental fact that HTML files and style sheets might have encoded colors and patented reading those colors and copying them using techniques that have been known and established in 6000 years of prior art.) Maybe the CAFC should reconsider them both.

      1. 7.1.1

        Owen is a slashdot/techdirt lemming who thinks Malcolm is the wisest patent attorney in the world.

        I think you can figure the rest out.

  10. 6

    Dennis: The big idea here was to recognize that fetal DNA might be floating around in the mother’s blood and that the fetal DNA could be selectively amplified by focusing on the paternally inherited portion of its DNA (rather than the maternally inherited).

    The idea that fetal DNA could be selectively detected (over maternal sequences) by targeting paternal sequences was old when this application was filed.

    With respect to the alleged insight that “fetal DNA might be floating around in the mother’s blood”, that, too, could not have been terribly surprising to anyone who had been paying attention to the art. Unless I’m mistaken, it was already known that fetal cells (comprising fetal DNA) were in maternal blood. Anybody who knew anything about PCR would understand that where there are cells with DNA, there are broken cells (some cells will inevitably break when you isolate the serum from the cells). And where there are broken cells with DNA, there is PCR-detectable DNA. The real question is: exactly what procedures do you need to use with respect to the isolation and filtration of the maternal serum and exactly what primers do you need to use to obtain a reliable and useful detection of fetal DNA? And (for patentability purposes) when those procedures and reagents are recited with specificity in the claim, are those procedures new and non-obvious given what was known about maternal/paternal DNA?

    I can already hear the whining: “but that claim is so narrow it would be worthless to my client!”

    If that’s true, then don’t bother filing the patent. Dedicate the information to the public if that’s your belief. Or keep your conditions secret and let other parties figure them out independently (which will surely happen pretty much immediately) and you can compete in the marketplace with those other parties on terms like pretty much every business does (without the incessant whining).

    By the way, the best way to ensure that women everywhere in this country have access to this kind of test is to vote for the Democratic Party candidate whenever you have that option. Also, remember to vote for the candidate who want to expand funding for scientific research and public education. All that assumes that you are actually “concerned” about progress in technology and not just progress in expanding the patent system to the point where everyone needs to buy insurance to cover their inevitable trip to East Texas. Just sayin’.

    1. 6.1

      “The real question is: exactly what procedures do you need to use with respect to the isolation and filtration of the maternal serum and exactly what primers do you need to use to obtain a reliable and useful detection of fetal DNA? And (for patentability purposes) when those procedures and reagents are recited with specificity in the claim, are those procedures new and non-obvious given what was known about maternal/paternal DNA?”

      It seems like some of the other claims are narrower but not claim 1. If this were a novel/nonobvious method of diagnosis (a big if), then this patent is valid.

      Have you looked at the other claims. Are they narrow enough in your opinion. I am not a bio guy .

      1. 6.1.1

        At some point there must be a level of specificity that gets past 101 (right?). How far the claims here are away from that point is what I am curious about.

        1. 6.1.1.1

          topce, the process part of the claim itself must be new or improved, or the “information” must be applied in a new and useful way to produce an new or unexpected result.

          You really need to understand that “invention” must be in something that is otherwise eligible subject matter. One cannot simply surround the unpatentable discovery with conventional this or conventional that.

          1. 6.1.1.1.1

            Right but conventional is not the same thing as novel. Conventional means ‘widely known’ where as novel means not known by anyone. There is room between these two poles.

  11. 5

    Dennis: “The invention here…”

    What invention. The only thing new is the discovery of the present of paternal DNA in mother’s blood serum.

    That is NOT an invention by any stretch of the ordinary use of that word. There is nothing new at all here in terms of a machine, a process, a manufacture or a composition. Everything in that arena is OLD.

    The perversion of words that runs amok in the dissenting opinion, in the briefs and here does not portend well for the Federal Circuit if it bites, accepts en banc and reverses. The Supreme Court is likely to toss the Federal Circuit into the ashcan of history one way or another.

  12. 4

    “I am hard-pressed to see how this claim overcomes Mayo/Alice. The “big ideas” expressed in the invention are seeming laws of nature and the idea of amplifying paternal DNA just relies upon a natural correlation in the same way that the inventors relied upon the drug metabolite in Mayo. The actual implementation of these ideas appear preemptive of the ideas and rely only upon well known and expected implementation steps.

    To me, the push for en banc review is – at its heart – either a showpiece for the Supreme Court or a request to undermine the Supreme Court’s precedent.”

    Undermine? Or to get the Supremes to see the error of their ways and to overturn Mayo/Alice?

    How else to bad rulings every get corrected?

    Remember DISCOVERIES are patentable.

    There is nothing TO discover but laws and products of nature.

    Accordingly, any ruling that says laws and products of nature are not patentable is absurd on its face.

      1. 4.1.1

        I have to agree with this. I could plausibly imagine Congress reversing the SCotUS on this point, but I cannot see the SCotUS reversing itself, even after Breyer, Thomas, and Kennedy all retire.

    1. 4.2

      Les, Rich consistently advanced the idea that a programmed computer without more was enough for 101 eligibility. This idea found full fruit in State Street Bank, a case that found a programmed computer that calculated the improved price to be eligible because of the machine. That lead to an era of patenting everything and anything under the sun simply by reciting a computer in the claim. Then along came Alice and reminded everyone that the invention itself must be in otherwise eligible subject matter — the machine, manufacture, a conventional process that, e.g., passes the MOT, or a composition.

      What we have here is the same effort; the effort to patent discoveries of facts by reciting conventional processes to detect their presence. There is no improvement in the conventional process, a requirement of 101.

      This effort is as if Judge Rich was always right and the Supreme Court was always wrong. It is misguided, wrongheaded, and it must be stopped in its tracks.

      1. 4.2.2

        Ned –

        1. There is no computer here.

        2. This is a new process, not an improvement.

        3. The processes is an improvement (if you need one) over the old different process that required the mothers womb to be jabbed with a huge needle that could hit the fetus and in any event creates several wounds that can be pathways to infection.

          1. 4.2.2.1.1

            Which legal argument is that, Ned?

            Do you know what is older than the hills?

            Electrons.
            Protons.
            Neutrons.

          2. 4.2.2.1.2

            Ned –

            Apparently, you are mistaken. No one had ever amplified FETAL DNA in MOTHERS blood before.

            Try not to reduce everything down to a gist Ned. Or, perhaps consider moonlighting at TV Guide. It might be a better match.

            1. 4.2.2.1.2.1

              Les, I’ll ask you the same question I asked Greg.

              If the “invention” is the discovery of the fact that paternal DNA could be found in the serum of a mother, why should the discoverer of this fact be limited to any particular method for the detecting the presence of paternal DNA in the blood serum?

              1. 4.2.2.1.2.1.1

                It probably shouldn’t. But 101 limits us to processes, compositions of matter, apparatuses and manufactures, so the inventors settled for a process based on their discovery. Half a right is better than none I guess.

  13. 3

    The patent in mayo covered

    “optimizing therapeutic efficacy for treatment of an immune-mediated gastrointestinal disorder, ”

    I’m not sure you can say that this is the same. Claim 1 in mayo appeared to claim the means by which the discovery was made–i.e.–we know how to discover an optimal dose now, lets patent how we figured that out. So in mayo the patent covered the method of discovery.

    Myriad of course, covered the gene itself , which was a product of nature. The Court did not get to the question of whether a method of using this gene in a form of gene therapy could be patentable.

    Here, we have some sort of middle ground between the two. The claims that cover ‘prenatal diagnosis’ utilize the discovery of a correlation in nature, and do more than merely implement the means of discovery.

    Claim 25 (and some others) require that there be an actual pregnant mother and a physician performing a test in order to infringe. The discovery was the correlation like in mayo but the claims (except for claim 1 and 6 and some others) don’t cover that, they cover a method where the correlation is used to perform an actual diagnosis.

    Is this Diamond v. Diehr all over again?

    1. 3.1

      The [Myriad] Court did not get to the question of whether a method of using this gene in a form of gene therapy could be patentable.

      Au contraire. The Court did indeed, address this subject (albeit only in dictum, 133 S. Ct. at 2120):

      [T]his case does not involve patents on new applications of knowledge about the BRCA1 and BRCA2 genes. Judge Bryson aptly noted that, “[a]s the first party with knowledge of the [BRCA1 and BRCA2] sequences, Myriad was in an excellent position to claim applications of that knowledge. Many of its unchallenged claims are limited to such applications.”

      In other words, the Supreme Court said that precisely the sort of thing covered by Sequenom’s patent (applying one’s knowledge of the existence of a natural product) is indeed patent eligible. By reaching for Mayo instead of Myriad, the CAFC used the wrong precedent to reach the wrong conclusion in Sequenom.

        1. 3.1.1.1

          I wouldn’t go as far as to say that they said the method claims (which were not before the Court) were patent eligible though. More that they were hinting that their method claims were “on the right track” so to speak.

          1. 3.1.1.1.1

            Fair enough. Let me put it this way. PostMayo Judge Bryson wrote an opinion for the CAFC affirming the §101-eligibility of method claims that used natural DNA sequences to diagnose disease (remember, although the method claims never went before the Supreme Court, they were at issue in the case below and they were never invalidated, although somewhere along the line Myriad ceased to assert them). Justice Thomas, writing for the Supreme Court, quoted Judge Bryson’s holding on this point approvingly. The Supreme Court’s Myriad opinion only partially reversed the CAFC (133 S. Ct. at 2120 “the judgment of the Federal Circuit is affirmed in part and reversed in part”). Therefore, it follows that Judge Bryson’s holding regarding the method claims was not reversed. It remains good law.

            Even if method claims involving the use of natural products are not §101-eligible per a holding of the SCotUS, they are still §101-eligible because Judge Bryson’s panel opinion below stands as binding precedent. Only the CAFC en banc has the authority to over-rule Judge Bryson’s 2012 opinion. Therefore, contra Dennis’ point, the CAFC really needs to take Ariosa en banc, to clarify what is the law on this point. This question is not nearly so neatly settled by Mayo as the original post would suggest.

            1. 3.1.1.1.1.2

              My apologies. As I look at the opinion again, I see that Judge Bryson’s conclusion about Claim 21 (the diagnostic method claim I had in mind) was a concurring opinion, not an opinion for the court. Therefore, it is not binding precedent as I had said above. Still and all, the fact that the SCotUS cited this concurrence approvingly suggests that the law in more complicated than the Mayo-settled-this crowd would have us believe. I still think that en banc clarification from the CAFC (or the SCotUS) is necessary on this point to clarify the current status of the law on methods of using knowledge about natural products and phenomena.

  14. 2

    Sorry, Dennis, but it really sounds like you’ve drunk the Kool-Aid here. It’s a method of using a tool (PCR) to transform a composition of matter (cell-free fetal DNA) to obtain a useful result — precisely the type of invention the patent laws are intended to protect.

    The Alice claims never solved a particular problem. Rather, the implementation purportedly covered by the Alice claims were far more complex than what was claimed. And Mayo simply stated an observation (the wherein clause) appended to an old process.

    1. 2.1

      I’m coming around to this conclusion as well w/r/t claim 25 for example.

      Not sure about claim 1 though.

    2. 2.2

      Learned Hand had a really cool name, but judging from this post, he also had a bad habit of reading limitations from the spec into the claims.

      1. 2.2.1

        This is getting frustrating because it seems like everyone is jumping to conclusions before reading the actual claims.

    3. 2.3

      Mr. Hand, where does one drawn the line?

      I discover X. I claim using conventional methods for determining the presence of X. How is this an inventive application? How the conventional method improved? The improvement itself must be in something otherwise patentable — see Diehr.

      The argument here is the same argument that Rich presented, that a programmed computer is a new machine. The machine is old. The program is new, but not eligible. The program does not improve the machine, qua machine. Rather the computer executes the program just the way a computer is supposed to execute a program. Granting patents on the programmed computer, without more, effectively patents the program.

      Rich fully intended to erase 101 from patentability considerations, moving “invention” to 102/103. He said so often. He was ultimately overturned in Alice — but his views were always inconsistent with Benson. It is just that so many interests were involved in patenting software that the effort was made for 40+ years to limit Benson to its facts. Something similar is going on now with Alice, with the PTO trying to limit Alice to its facts. Such an effort is very much in the Rich mold of passive-aggressive resistance.

      There is no excuse for the argument being presented here by Mr. Hand. It is dishonest as they come.

      1. 2.3.1

        …and the parade of Ned’s B$ is trotted out once more…

        Ned – the dishonesty is all yours.

        Y
        A
        W
        N

      2. 2.3.2

        “The argument here is the same argument that Rich presented, that a programmed computer is a new machine. The machine is old.”

        Not, its new.

        “The program is new, but not eligible. ” The program is a component of the new machine. Like a new gear in a transmission, like a new seal in a syringe or O-Ring in a solid rocket booster.

        “The program does not improve the machine, qua machine.”

        Clearly, you haven’t upgraded to Windows 10! I can live stream from my Xbox One to my Lap Top now. … I’m not sure why I would want to… but I can, and that’s an Improvement to my laptop!

        “Rather the computer executes the program just the way a computer is supposed to execute a program.” Rather? Yes, rather than the old program, the computer executes the NEW program.

        “Granting patents on the programmed computer, without more, effectively patents the program.”

        Not really, but, so what if it did?

        1. 2.3.2.1

          Les, you are entitled to your opinion. But Bernhart was laughable on it science. We have been through this before.

          Anywho,the Supreme Court has the final word here. In its view, a programmed computer is not patentable subject matter without more. They may not have categorically excluded this in Benson. But they did in Alice.

          Note also the condemnation of State Street Bank.

          1. 2.3.2.1.1

            CLEARLY, that’s not meant to be the word of the judiciary, Ned.

            I see you still need that lesson on the difference between statutory law and common law.

            …and a healthy dose of inte11ectual honesty.

            1. 2.3.2.1.1.1

              It is very much worth pointing out that NO ONE (of the anti-software patent crowd) has been willing to join that dialogue on the merits.

              Most people don’t have the patience to deal with mental cases like you, “anon.”

              You haven’t figured that out yet?

          2. 2.3.2.1.2

            What is laughable on its science is the refusal to recognize that software is a machine component and manufacture in its own right.

            Software is not the execution of software.
            Software is not the idea of software.

            Software IS equivalent to hardware and is equivalent to firmware.

            Printed Matter has long been recognized as having patentable weight. That is, recognized if you are not attempting to obfuscate the understanding of printed matter, of trying to pretend that there is NOT more than one type (or set) of printed matter. I provided a very easy to understand set theory explanation of this on the Hricik side of the blog and (repeatedly) invited discussion of that explanation from both Ned and Malcolm directly – and anyone else that refuses to understand the exceptions to the judicial doctrine of printed matter.

            It is very much worth pointing out that NO ONE (of the anti-software patent crowd) has been willing to join that dialogue on the merits.

            NO ONE

            The fact of the matter is that printed matter IS a manufacture by the hand of man.

            The next step in the analysis is to see if the proper utility is reflected in that printed matter. NO ONE – including Ned (witness his dichotomy from the Patently-O thread: “GuestPost: API’s Patent or Copyright“) can doubt that software has that proper utility as a gen eral matter. No one, that is, who does NOT have an ulterior motive and separate agenda, based on philosophical rather than legal reasoning.

            The Merry Go Round continues until the inte11ectual honesty is mustered to admit to these foundational facts. When will you step up to the plate, Ned?

    4. 2.4

      I think the claims in Mayo fail simply because the “wherein” clause, which included the natural phenomena, did not alter or change nor narrow the preceding method steps recited. Thus the steps themselves were conventional. This is different from the claims in the present case which recite steps that have never been performed in combination.

    5. 2.5

      So, Learned, without amplification, the claim would be directed to looking for paternally inherited nucleic acid, and that’s not patentable.
      But, with amplification, the claim is directed to looking real hard for paternally inherited nucleic acid, and that is patentable.
      Seems right to me.
      Here is my patent for detecting weeds in my garden:
      amplifying weeds in a patch of my garden and
      detecting the presence of weeds in the patch of my garden.
      I amplify my weeds through the WTF method, and that makes my method patentable? I am filing today!

  15. 1

    Claim 1 does not tell the whole story. Claim 25 is what should be discussed. (also perhaps 24 & 21)

    Claim 25 A method for performing a prenatal diagnosis on a maternal blood sample, which method comprises…….

    Here, even though the body of the claim is the same, the preamble limits the scope to a prenatal diagnosis on a maternal blood sample.

    To infringe claim 25 , one would actually need to be diagnosing somebody with something. Any risk of “preemption” here would be limited. Claim 1 could be applied to any sort of lab analysis.

    1. 1.1

      I think the bodies of the claims are “different”.

      Claim 1:

      1. A method for detecting a paternally inherited nucleic acid of fetal origin performed on a maternal serum or plasma sample from a pregnant female, which method comprises

      amplifying a paternally inherited nucleic acid from the serum or plasma sample and

      detecting the presence of a paternally inherited nucleic acid of fetal origin in the sample.

      Claim 25:

      25. A method for performing a prenatal diagnosis on a maternal blood sample, which method comprises

      obtaining a non-cellular fraction of the blood sample

      amplifying a paternally inherited nucleic acid from the non-cellular fraction

      and performing nucleic acid analysis on the amplified nucleic acid to detect paternally inherited fetal nucleic acid.

      I personally think the preambles are useless. (Or, put another way, the person who wrote this should have put the preamble into the text of the claim or at least the text of a dependent claim.) You can simply ignore the preamble and it brings nothing (other than antecedent basis for “blood sample” in claim 25 for instance) to analysis of the claims.

      1. 1.1.1

        Preambles have patentable weight when they recite structure that can be read into the body of the claims. So yea I agree.

        The antecedent basis the preamble brings could be material because where is the “sample” in question coming from?

        (rhetorical question)

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