Adding Fuel to the Bonfire of Patents

Genetic Tech. v. Merial (Fed. Cir. 2016)

Lincoln famously explained the role of the patent system of adding “the fuel of interest to the fire of genius.”  In GTG, the court simplified the phrase by finding that genetic testing patents only value may be literally as fuel.

The decision by Judge Dyk and joined by Chief Judge Prost and Judge Taranto affirms a lower court’s dismissal on-the-pleadings of GTG’s patent infringement claim.[1]  The holding is that the claimed method for analyzing DNA for linkage disequilibrium is ineligible for as effectively claiming a law of nature.  The basic idea stems from the inventors discovery that coding regions (exons) typically correlate with “linked” certain non-coding regions (introns).

The parties agreed that claim 1 of the GTG ‘179 patent was representative for purposes of the eligibility issues. The claim encompasses methods of detecting a particularly genetic allele using the two step process of (1) amplifying and then (2) analyzing the linked intron region.

In analyzing the claims here, the court highlighted the similarity of the claims here to those in both Mayo v. Prometheus[2] and Ariosa v. Sequenom.[3]

The similarity of claim 1 to the claims evaluated in Mayo and Ariosa requires the conclusion that claim 1 is directed to a law of nature. . . .  The claim is directed to a natural law—the principle that certain non-coding and coding sequences are in linkage disequilibrium with one another. We hold that claim 1 is directed to unpatentable subject matter at the first step of the Mayo/Alice test. . . .

Claims directed to laws of nature are ineligible for patent protection when, “(apart from the natural laws themselves) [they] involve well-understood, routine, conventional activity previously engaged in by researchers in the field.” Mayo.

We conclude that the additional elements of claim 1 are insufficient to provide the inventive concept necessary to render the claim patent-eligible.

GTG is an Australian company that had previously sued a few dozen companies for infringing the ‘179 patent. The claims have been reexamined (at Merial’s request) and patentability confirmed.

= = = = =

[1] The courts found that claims 1-25 and 33-36 of U.S. Patent No. 5,612,179 are ineligible under Section 101.

[2] Mayo Collaborative Serv. v. Prometheus Lab., Inc., 132 S.Ct. 1289 (2012)

[3] Ariosa Diagnostics, Inc. v. Sequenom, Inc., 726 F.3d 1296 (Fed. Cir. 2013); rehearing en banc denied by Ariosa Diagnostics, Inc. v. Sequenom, Inc., 809 F.3d 1282 (Fed. Cir., Dec. 02, 2015); on petition for writ of certiorari (No. 15-1182, filed March 21, 2016).

106 thoughts on “Adding Fuel to the Bonfire of Patents

  1. 13

    Based on my conversation with MM about the claim in the this case, it may be that generating a primer pair (for use in amplifying non coding DNA) corresponding to a target allele is new.

    “said primer pair defining a DNA sequence which is in genetic linkage with said genetic locus and contains a sufficient number of non-coding region sequence nucleotides to produce an amplified DNA sequence characteristic of said allele”

    That step of generating is not actually claimed though. But what is claimed using such a pair to amplify genetic DNA. If I understand it correctly, the primer will cause the amplification to “work” or work differently if the genetic material present matches the primer. That is what is use to signal the presence of the target DNA.

    (Correct me if I have this wrong.)

    Thus the way I would analyze this claim is that the generation or use specific primer pair is novel and eligible. It may not, however be non obvious given the state of the art.

    The analysis of the results, generically stated, cannot add patentable weight to the claim for either 101 or 103 purposes. If everything in the claim to the analysis step is either old or obvious, the the claim is unpatentable or ineligible.

    If my understanding here is correct, then Dyk is wrong because he found the use of the specific primer pair to amplify genetic DNA to be ineligible because it effectively claimed a law of nature.

    1. 13.1

      Ned,

      You are being far too cavalier with your statement of:

      If everything in the claim to the analysis step is either old or obvious, the the claim is unpatentable or ineligible.

      Items of a claim, put together as one must with a claim as a whole, can be entirely “old or obvious” and expresslyas such being a given for being “old or obvious,” do not change the calculus of eligiblity.

      Once again, you hunt for a piece of something “to be new,” some “Point of Novelty,” and for 101 purposes, such just is not needed under the law.

      You accused me of “strawmanning,” yet that point I raised fits exactly what you are trying to do.

      See link to patentlyo.com

    2. 13.2

      Ned: the generation [of] use specific primer pair is novel and eligible. It may not, however be non obvious given the state of the art.

      The resultant primer pairs (as generically described) would surely be anticipated by primer pairs in the prior art. As already noted, there was nothing novel or non-obvious about a PCR primer pair that primes the amplification of “non-coding DNA”.

      And the synthetic methods — the steps that physically transform the individual nucleic acids into primer pairs — are also old.

      What’s left is the logic used to design the primer pair. That’s a mental process (with or without automation by a computer proxy).

      Conclusion: still ineligible.

  2. 12

    Martin said:

    “Exploding a sample to assay it’s composition is a fairly old technique. Using a laser to explode things is also an old technique. Analyzing spectra is also an old technique, so that patent probably fails on 103 (esp. post KSR), but for 101 purposes, it’s clearly directed toward the use of machines to make a physical change and is easily statutory. What’s the point?

    The diagnostic correlation is information. Information is abstract. Should be open and shut, unless you want to allow patents on information, which reasonable people may accept as a policy decision if the forms and uses of such information were carefully limited to those that could be fairly adjudicated and not suppress other rights.”

    My point was that methods of measuring things are patentable and that patents to measuring things are not patents to the things, which is counter to the argument that MM was asserting regarding the present claim.

    In response to your asserting that diagnostic correlation is information and for some reason related methods are not patent eligible, I would point out that spectra based identification of planetary material is a diagnostic correlation and you have already indicated that THAT method passes 101.

    1. 12.1

      MM’s arguments are like the SC’s decisions: he (they) simply move the goalposts around so you can’t really tell what they’re saying.

      So, if information is “abstract”, how do cell phones send and receive data? Using something “abstract”? If that’s the case, then a very important aspect of cellular (or any RF) communication is measuring that (abstract) information, such as via power levels, information content, you name it. A new way of measuring such information should be patentable.

      1. 12.1.1

        PB: if information is “abstract”

        Information is certainly abstract, at least as far as the patent system is concerned. It’s also ineligible for patenting. I’m not aware of any serious movement intending to change that basic and critical aspect of our patent system (at least not openly). However, the history books will show that the PTO (with the CAFC’s help) did all they could to undermine this foundational prohibition by allowing patentees to scriven around it.

        how do cell phones send and receive data

        Last time I checked, data is transmitted to and from cell phones using electromagnetic waves. Electromagnetic waves, of course, are also ineligible for patenting and there are no serious open efforts underway to change that (nor do I expect that to change, ever).

        1. 12.1.1.1

          LOL _ Malcolm is using the Big Box “logic” yet again…

          Guess what Malcolm, protons, neutrons, and electrons are also ineligible for patenting.

          But configurations of these things are eminently patent eligible.

          “Go figure, Folks”

          1. 12.1.1.1.1

            “anon” protons, neutrons, and electrons are also ineligible for patenting. But configurations of these things are eminently patent eligible.

            That depends on the claim, of course. But nobody is suggesting otherwise, at least as a per se matter. So it remains a mystery why you choose to beat this dead horse while insulting people who are a zillion times more intelligent and thoughtful than you will ever be.

            In any event, when you come back from outer space, be sure to spend some time in the decompression chamber.

            1. 12.1.1.1.1.1

              Except not – since you still don’t seem to grasp that the Big Box is a s l a p at YOUR “logic.”

              But try to continue to pretend otherwise – that’s the “Malcolm” thing to do (and that’s not a compliment).

        2. 12.1.1.2

          But, electromagnetic waves having impressed thereupon a certain modulation form is an article of manufacture. What if this physical article gives rise to remarkable new function and purpose yielding an incredible advantage like curing cancer. Still not patentable? By which statute?

          1. 12.1.1.2.1

            Joe,

            You and I might readily recognize the reality of what you say., but current controlling law (In re Nuitjen) inexplicably holds otherwise.

            Additional “ruminations” from the judicial branch have focused more on the “transient” nature, but as I look up into the clear night sky, I see such “transience” that has been more long-lasting than the entirety of the human race.

      2. 12.1.2

        Yes PB, it should be, if it uses a new device for that purpose. Just saying “measure the RF signal” using old measuring means is an abstract idea- because its claimed at the level of an idea.

        I have argued here that abstraction at eligibility should be a separate inquiry from abstraction at patentability. The former would be intrinsic to the purported invention (e.g. information, or a signal) and the latter the act of expression an invention as an idea rather than as some kind of novel structure.

    2. 12.2

      Les: My point was that methods of measuring things are patentable and that patents to measuring things are not patents to the things, which is counter to the argument that MM was asserting regarding the present claim.

      So here we are again when I have to ask: dishonest or ign0rant? You recognize that I made an argument regarding the present claim. But somehow you manage to twist my argument into something ridiculous that not only have I never said but something I’ve repudiated hundreds of times.

      Can you get a patent on a new method of measuring something? Of course you can, unless you write a flawed claim. <— please try to pound this into your brain

      Are "patents on measuring things" the same as "patents to the things"? No, they're not. And I never said otherwise.

      What I did say and what I'm happy to repeat is that you can't discover a new phenomenon (e.g., a "new" frog or a 'new" asteroid) and claim "A method comprising detecting [new frog]". Nor can you claim "A method comprising using [specific prior art detection method] to detect [new frog]".

      And the reason for that prohibition is that if you remove the prohibition then you create an easy, straightforward path for people (either acting in concert or individually, consciously or not) to monopolize access to the patent-ineligible object of the detection method(s).

      Note that this reasoning works in both directions, tanking both claims that start from the ineligible tangible natural phenomenon (e.g., the “new” frog or the “new” asteroid), or claims starting from prior art machines as applied to
      “new” abstractions (e.g., the “displayed [new movie]” or the “determine [new correlation]”).

      Lastly, I’ll just remind everyone that there is a huge — infinite! — amount of eligible subject matter out there waiting to be invented and claimed. This mess that is being cleaned up now was an historical aberration. The fact that a bunch of patent attorneys got deeply and emotionally attached to these junk claims is just another facet of that aberration that future historians and law professors are going to have fun writing about.

      1. 12.2.1

        MM: “You can’t own a naturally occurring phenomenon. And you (meaning both “you” personally, and anyone like you, or a group of independent actors like you) can’t effectively own that phenomenon by owning the rights to detect the phenomenon using prior art detection technology.”

        “Les: My point was that methods of measuring things are patentable and that patents to measuring things are not patents to the things, which is counter to the argument that MM was asserting regarding the present claim.”

        MM: “you manage to twist my argument into something ridiculous that not only have I never said but something I’ve repudiated hundreds of times.”

        Shrug…if you say so…

        1. 12.2.1.1

          Les: if you say so…

          I do say so, Les. And I also know why you have such a difficult time understanding this stuff.

          My advice is to vote for Trump and then try to get him to appoint Sarah Palin to the Supreme Court and, I dunno, maybe put Charlie Sheen as head of the PTO. Then pull some strings so the PTO finds eligibility in any claim as long as it contains the word “process” or “manufacture”.

          And then we’ll see what happens! Probably after a year or two we’ll all be sailing around to the Genetic Cleansing Institute in our thought-controlled rainbow-powered anti-gravity packs.

          1. 12.2.1.1.1

            The world can see what you said and how I characterized it and how you characterized that at 12.2.1 and judge the accuracy of the characterizations for itself.

            Since you’ve “repudiated” similar characterizations “hundreds of times,” I’m guessing there will be quite a few that will read your assertions the same way I do.

            1. 12.2.1.1.1.1

              The world can see what you said and how I characterized it

              It’s true. The world can see that you spun the bolded clause into something else entirely by misrepresenting not only what the bold clause actually said but also by ignoring the explanation immediately following that clause.

              This is why I continually refer to what you and your cohorts do as kindergarten level law. This is why you guys lose case after case and it’s why you guys are continuing to lose. Not everyone is as easily fooled as you are. And studies have proven that it’s difficult for people like you to figure that out.

              1. 12.2.1.1.1.1.1

                Pendulums Swing and soon Judges that have been fooled or swayed by your sort of “thinking” will come to understand that:

                Stirring, shaking, mixing, heating are all old aspects of methods of reacting chemicals. That doesn’t mean a method involving the mixing and heating of old reactants that results in a new chemical is an abstract idea or that it is a claim of a law of nature or a natural phenomenon. Does it?

                1. “Depends on the claim.”

                  – and of course, the desired Ends of the particular judge or Justice involved…

                  (snort, chicken, guffaw)

                  ;-)

    3. 12.3

      No, I said blowing up samples to read their spectra was statutory. A method of using a new machine to measure something is statutory. A method using an old machine to measure a new increment of something amounts to a patent on information, so is non-statutory. Reading spectra by itself is non-statutory because its information (abstract) and a natural phenomena.

      If GTG invented PCR, they would be in tall cotton. If they use PCR to do what PCR does, and find out something interesting by doing that, there is no invention- there is discovery certainly, and discovery of a natural phenomena is non-statutory.

      This isn’t that hard.

      1. 12.3.1

        What you said was: “Analyzing spectra is also an old technique, so that patent probably fails on 103 (esp. post KSR), but for 101 purposes, it’s clearly directed toward the use of machines to make a physical change and is easily statutory. ”

        What “it” was the claimed method analyzing materials bound to an ice matrix, the business end of which was:
        performing a spectral analysis of the received thermal emissions to identify materials in the desorbed plume.

  3. 11

    Did the stock market collapse yet?

    After all, the “experts” told us the “sky has fallen”.

    I guess I’ll just wait for the Chinese to show up with their genetic rays which would have been invented in America if only we had handed out a few thousand more “PCR this” claims.

  4. 10

    So the usual suspects are saying: the claims were junk, over board, clearly reading on prior art etc etc. And the usual response – ok great marshal some evidence and 102/103/112 the claims – but stop this 101 – ipse dixit – to an entire class of discovery. There is no question this 101 ‘rule of law’ will silo and trade secret this class of discovery. Obviously, this helps the big and connected the most. So they will get bigger and silo more and more. Meh, maybe keeping DNA discoveries a secret, is good. To be sure, many of these discoveries will languish in their trade secret silo. Anyways, federal trade secret protection is on the way, so without a change of course, we are going to see the silo scheme play out.

    1. 10.1

      iwasthere: the usual response – ok great marshal some evidence and 102/103/112 the claims

      That’s actually not a “response” at all to a 101 argument.

      Do you actually need someone to explain that to you in 2016?

      1. 10.1.1

        I seem to recall the SC in Alice talking a lot about things being “old” in the art, which is outside the ambit of 101. Or at least was. Now, one has no idea whether “being old” in the art is 101 or 102.

        1. 10.1.1.1

          one has no idea whether “being old” in the art is 101 or 102.

          I think you mean to say that you have no idea.

          As for me, if I have a prior art reference describing a claimed invention, I’m going with 102. 101 is for those situations, e.g., where there are abstractions laid on top of prior art structure, or where a natural phenomenon is laid under a prior art detection method.

          You should try arguing that anticipatory prior art renders a claim inelgible under 101 (as opposed to unpatentable or anticipated under 102) and see what happens. You might want to use your own money rather than your client’s money in that case. Analytically, of course, there isn’t going to be any detectable difference. You match up the elements and the claim is dead.

    2. 10.2

      How would you keep this particular “invention” as a trade secret? For inventions involving software, sometimes that is possible. But for many of these inventions, it’s going to be difficult. This case, for instance. The advertising will likely be “We can now perform detection of a coding region allele of a multi-allelic genetic locus! We do this by amplifying genomic DNA with a primer pair that spans a non-coding region sequence. The primer pair defines a DNA sequence which is in genetic linkage with the genetic locus and contains a sufficient number of non-coding region sequence nucleotides to produce an amplified DNA sequence characteristic of the allele”.

      And unless you can do everything “in house”, it’s going to be difficult to keep this a trade secret. And what happens when people want to ensure you’re doing it correctly or getting results that are worth paying for? You’re going to have to tell them something.

      1. 10.2.1

        How would you keep this particular “invention” as a trade secret?

        You don’t let anyone know about it.

        And then pretty much immediately someone else is doing it anyway because PCR is an incredibly powerful and ubiquitous method and there are tons of smart scientists out there using it to analyze DNA because … it’s DNA. Which is exactly what happened in this case.

    3. 10.3

      How you gonna both make money and keep a newly discovered diagnostic correlation a secret? Nobody will pay for your snake oil if you don’t say what’s in it.

      I understand that you can’t make any money in this economy without a patent, but lets pretend hypothetically that you can…..

      1. 10.3.1

        Nobody will pay for your snake oil if you don’t say what’s in it.

        What’s in it is … snake oil! Diluted down to one part per billion in tap water.

        And if you have a “G” at position 34 in gene X there’s a 0.0004% chance that you’ll live 2.5 more hours longer if you drink it. Unless you have a “A” at position 893 in gene Y in which case there’s a 0.003% chance you’ll live 1.3 more hours, unless you have a “C” at position 321 in which case you shouldn’t eat bacon. But I can’t legally tell you about that last bit because the bacon correlation is patented by someone else.

        Oh and someone just patented another correlation today which might nullify most of this. But I can’t legally tell you about it.

        But back to the snake oil. It totally works! Plus it comes in this cool snake-shaped bottle. And if you buy it now you get two bottles of toad oil handcream, free. That’s a $14.95 value.

  5. 9

    If this is the “law of nature” (its not a law by the way, its just something that the inventor observed), but if this is the law of nature: —the principle that certain non-coding and coding sequences are in linkage disequilibrium with one another–, then how does this claim preempt it?

    1. A method for detection of at least one coding region allele of a multi-allelic genetic locus comprising:

    a) amplifying genomic DNA with a primer pair that spans a non-coding region sequence, said primer pair defining a DNA sequence which is in genetic linkage with said genetic locus and contains a sufficient number of non-coding region sequence nucleotides to produce an amplified DNA sequence characteristic of said allele; and

    b) analyzing the amplified DNA sequence to detect the allele.

    1. 9.1

      I explain the “pre-emption problem” here:

      link to patentlyo.com

      I’ve said this before and I’ll say it again: the “pre-emption problem” is not about the particular claim at issue, i.e., it’s not about whether that claim “pre-empts” all ways of using the natural law. Instead, there are two concerns. The first is whether the particular claim protects (or “pre-empts”) any ineligible subject matter when viewed through the lens of the prior art practitioner. The second is whether granting patents on a class of claims (of which the particular claim at issue is a specific example) would result in the ineligible subject matter (e.g., the “natural law”) being “locked up” by patents.

      Prometheus and Myriad and Alice are each incredibly focused on these issues, as well they shoud be. These concerns are thre reasons that you need to have more than “an abstraction plus conventional technology” in your claim to get through the gate.

      And we’ll see soon enough that “conventional” = prior art. There is no reasonable distinction to be made. Take that to the bank.

      1. 9.1.1

        Ok then, what is the ineligible subject matter?

        And try not to be as circular in your response to this question as you were in the previous.

        Also: When did this become the test:”The first is whether the particular claim protects (or “pre-empts”) any ineligible subject matter when viewed through the lens of the prior art practitioner.”

        1. 9.1.1.1

          Les: When did this become the test:”The first is whether the particular claim protects (or “pre-empts”) any ineligible subject matter when viewed through the lens of the prior art practitioner.”

          It’s called logic and common sense, Les. Those are important features of a sane legal framework.

          what is the ineligible subject matter?

          Linkage disequilibrium. You can’t own a naturally occurring phenomenon. And you (meaning both “you” personally, and anyone like you, or a group of independent actors like you) can’t effectively own that phenomenon by owning the rights to detect the phenomenon using prior art detection technology.

          It’s the same consideration that keeps you from using the patent system to monopolize a “new” asteroid or a “new” frog that you discovered in the rainforest. You can’t “protect” your discovery by claiming all or even one method of “detecting” the frog using prior art technology. That kind of claim is ineligible for the reasons I just gave you.

          1. 9.1.1.1.1

            “You can’t own a naturally occurring phenomenon.”

            And this claim does not claim a naturally occurring phenomenon. It covers ONE method for detecting an aspect of the phenomenon.

            “And you (meaning both “you” personally, and anyone like you, or a group of independent actors like you) can’t effectively own that phenomenon by owning the rights to detect the phenomenon using prior art detection technology”

            But a claim to a method of detecting planets around distant starts does not create effective ownership of all planets, only of the method of detecting them.

            Likewise this claim to A method of detecting this phenomenon does not create effective ownership of the phenomenon.

            It doesn’t even create an effective ownership of all methods of detecting the phenomenon. If this claim is valid, you are still free to detect the phenomenon using xrays or lazers or litmus paper and gum drops.

            Stirring, shaking, mixing, heating are all old aspects of methods of reacting chemicals. That doesn’t mean a method involving the mixing and heating of old reactants that results in a new chemical is an abstract idea or that it is a claim of a law of nature or a natural phenomenon. Does it?

            1. 9.1.1.1.1.1

              Les It covers ONE method for detecting an aspect of the phenomenon.

              Right. The method called PCR, which was in the prior art and which was created for the purpose of detecting DNA.

              I’m sorry if all this is too difficult for you to follow, Les, but it plainly is.

              Please do everyone a favor and find a job that you can understand.

              1. 9.1.1.1.1.1.1

                “Right. The method called PCR, which was in the prior art and which was created for the purpose of detecting DNA.

                I’m sorry if all this is too difficult for you to follow, Les, but it plainly is.”

                Ah. You are beginning to see that I am correct. You always become condescending when you see that I am correct.

                I understand all this quite well, including your contention that PCR is old. That’s why I pointed out that old techniques applied to new problems are patentable with this:

                Stirring, shaking, mixing, heating are all old aspects of methods of reacting chemicals. That doesn’t mean a method involving the mixing and heating of old reactants that results in a new chemical is an abstract idea or that it is a claim of a law of nature or a natural phenomenon. Does it?

                1. Les: old techniques applied to new problems are patentable

                  Depends on the claim.

                  Thanks for playing, Les! Here’s your colorful bouncy ball back. After your nappy nap you’ll get some graham crackers and milk.

                2. Funny how when cornered you reply with a “depends on the claim,”** whereeverywhere else you speak in absolutes and ultimatums.

                  “Go figure Folks”

                  **maybe (just maybe) you want to explain this dependence in a manner that does not attempt some other canard, like trying to make one optional claim format be some type of de facto ONLY legal claim format…

                  Maybe…

              2. 9.1.1.1.1.1.2

                Does this claim pre-empt the abstract idea that different stuff has different colors, or is that a natural law?

                1. A method for analyzing materials bound to an ice matrix on a surface of a planetary body, the method comprising:
                irradiating a selected area of the ice matrix on the surface of the planetary body with a laser beam that provides a surface fluence level sufficient to release materials from the ice matrix and form a desorbed plume of these materials in gas or vapor states;
                receiving thermal emissions from the desorbed plume; and
                performing a spectral analysis of the received thermal emissions to identify materials in the desorbed plume.

                link to patents.google.com

                1. Les: Does this claim pre-empt the abstract idea that different stuff has different colors, or is that a natural law?

                  It doesn’t really matter whether you refer to “stuff has different colors” as an abstraction or a natural law. “Stuff has different colors” is ineligible either way. So the question is whether there is other eligible subject matter in the claim.

                  Even you, Les, can appreciate that “Method comprising shining a flashlight on [new object] and determining whether [new object] has a color selected from [X, Y, and Z colors]” is a problematic claim from a 101 standpoint. Or maybe you’ve never heard of flashlights before becuase you were born yesterday. That’s also a very real possibility.

                  Have fun analyzing the claim, Les!

                  [fyi, the Earth is a “planetary body” the last time I checked — LOL]

                2. 1. A method for analyzing materials bound to an ice matrix on a surface of a planetary body, the method comprising:
                  irradiating a selected area of the ice matrix on the surface of the planetary body with a laser beam that provides a surface fluence level sufficient to release materials from the ice matrix and form a desorbed plume of these materials in gas or vapor states;
                  receiving thermal emissions from the desorbed plume; and
                  performing a spectral analysis of the received thermal emissions to identify materials in the desorbed plume.

                  link to patents.google.com

                3. MM: “[fyi, the Earth is a “planetary body” the last time I checked — LOL]”

                  I do not know why you are laughing or you noted that Earth is a planetary body. In case you think I drafted that claim, I will point out once again, that it is from US Patent No. 7271387B2

            2. 9.1.1.1.1.2

              Les: a claim to a method of detecting planets around distant starts does not create effective ownership of all planets, only of the method of detecting them.

              Lookie! A patent maximalist is advocating for the eligibility of claims to “use a telescope to look at this new planet in galaxy 332.H4”.

              Nobody could have predicted.

              You see, Les: it’s folks like you that broke the system.

              And it’s folks like me that are going to do everything they can to fix the system and make sure that you dont’ break it ever again.

              The best part, of course, is that there are more and more folks like me out there all the time. Try to guess why, Les. Try really hard.

              1. 9.1.1.1.1.2.1

                ks like me that are going to do everything they can to fix the system and make sure that you dont’ break it ever again.

                The patient (may he rest in peace) is cured.

                So what if he is no longer living?

                Great job Malcolm – that’s like you guarding your field of rye by burning it down.

                What an arse.

              2. 9.1.1.1.1.2.2

                “Lookie! A patent maximalist is advocating for the eligibility of claims to “use a telescope to look at this new planet in galaxy 332.H4”.

                Nobody could have predicted.”

                Your drifting from the point aren’t you. You tend to do that when you sense that you are loosing the argument.

                Actually, If there were a method to find planets in other galaxies, I’m sure that would be patentable.

                What I had in mind was a new method of planet hunting such as the one that involves the recently revived Kepler telescope, the method looks for new planets by: launching a telescope into outerspace, observing a plurality (thousands) of stars (in the local galaxy) simultaneously with that telescope over a period of time, recording the brightness of each of the stars of the plurality over the period of time and analyzing the recorded data to identify dips in the intensity, wherein dips in starlight intensity having a predetermined character identify planets in orbit around the star exhibiting the dip in intensity.

                Not everything is worth of an eye roll.

                1. Les Your drifting from the point

                  Not at all. I directly addressed a point that you made, Les. I even quoted your point.

                  What I had in mind was a new method of planet hunting

                  Oh, of course. I forgot to read your mind! LOL

                  Keep the laughs coming, Les.

                2. Yes, you quoted something out of context and ignored the context. You do that a lot.

                  You do keep ignoring this though, don’t you:

                  Stirring, shaking, mixing, heating are all old aspects of methods of reacting chemicals. That doesn’t mean a method involving the mixing and heating of old reactants that results in a new chemical is an abstract idea or that it is a claim of a law of nature or a natural phenomenon. Does it?

                3. Exploding a sample to assay it’s composition is a fairly old technique. Using a laser to explode things is also an old technique. Analyzing spectra is also an old technique, so that patent probably fails on 103 (esp. post KSR), but for 101 purposes, it’s clearly directed toward the use of machines to make a physical change and is easily statutory. What’s the point?

                  The diagnostic correlation is information. Information is abstract. Should be open and shut, unless you want to allow patents on information, which reasonable people may accept as a policy decision if the forms and uses of such information were carefully limited to those that could be fairly adjudicated and not suppress other rights.

                4. Les: That doesn’t mean a method involving the mixing and heating of old reactants that results in a new chemical is an abstract idea or that it is a claim of a law of nature or a natural phenomenon. Does it?

                  Depends on the claim.

                  Nice strawman, though. I’m shocked — shocked! — that we’d find you beating up on one after all you’re other silliness was discarded.

                  Time for your nappy nap, Les.

                5. There it is.

                  “It depends on the claim” is MM’s concession speech.

                  And the baby talk is MM taking his ball and going home.

                6. Les,

                  That is just Malcolm being Malcolm – happy Decade of Decadence (great “ecosystem” Prof).

              3. 9.1.1.1.1.2.3

                See what he does, Les? First, he deni grates you, by calling you a “patent maximalist” (I guess in contrast to his being a patent nihilist). And then he makes a bunch of nonsense statements that aren’t arguments. So, he always “wins”, at least in his own mind.

                1. Actually if you follow the thread of comments beginning with Les’ comment at 9 you’ll see that I gave Les the benefit of the doubt, which Les squandered.

                  You’re a big crybaby, PB. Please grow up.

                2. ” then he makes a bunch of nonsense statements that aren’t arguments. So, he always “wins”, at least in his own mind.”

                  Yeah, his posts read a lot like Office Actions in that regard.

  6. 8

    The analogy here to book burning is – and should be – a little scary.

    Those who were on the side wanting to burn books were no less convinced of the “righteousness” of their actions. In their minds, they were protecting those fields of rye.

    So too here, with those who are anti-patent.

    1. 8.1

      The analogy here to book burning is – and should be – a little scary.

      I didn’t see that analogy.

      It’s kinda funny that you did, though.

      Super scary stuff!

      It’s so terrifying I can hardly sleep at night. Somewhere in the US some incredibly rich guy’s patent portfolio is getting devalued. The horror … the horror …

      How in the world will any genetic research get done without that rich guy and his patents on genetic information? It’s just impossible to imagine any solution.

      So I guess we’ll all just sit here and be terrified. Oh my god! A kid just died! Probably because we didn’t hand out 100,000 patents on “do PCR on this.”

      LOLOLOLOL

      You guys really are a piece of work.

      1. 8.1.1

        Again with your misdirection of “incredibly rich guy” as you attempt to denigrate the form of invention MOST accessible to the non-rich.

        You never seem able to explain away that dichotomy…

        But away, the “class w@rfare” meme IS on your short script and everyone needs to watch out for G-g-grifters, right?

        “Go figure Folks”

        1. 8.1.1.1

          You never seem able to explain away that dichotomy…

          Actually I’ve addressed your silliness many dozens of times, “anon”. But you’re a dishonest hack so you pretend that it never happened.

          the form of invention MOST accessible to the non-rich

          The form of invention most accessible to the “non-rich” are methods of discovering where the money for the next rent check or the next meal or the next medical bill is coming from.

          Shall we open the gates to patents on such methods? Because “more accessible”?

          Of course after the patent is granted suddenly the method isn’t quite as “accessible”, is it?

          I know it’s hard for kindergartners like you to follow this stuff, “anon”, just like it’s hard for kindergarners like you to admit basic facts about the class of people who screech most loudly in defense of the worst patent every granted in the history of the country. It isn’t poor people who are doing that screeching. But you knew that already.

          1. 8.1.1.1.1

            You have “addressed” it ONLY in an inte11ectually dishonest manner and NEVER on the substantive merits.

            And we both know that.

  7. 7

    To: the MM blog.
    Subj: Abstract Ideas
    BT
    Unclas
    No definition of “abstract” exists.
    This is not law.
    This is tautology.
    BT
    NNNN

  8. 6

    The problem isn’t “genetic testing patents.” The problem is the way these claims are written.

    The claim reads like:

    > A method of detecting a condition in a DNA sample by:

    > exposing the DNA sample to a substance that’s sensitive to the condition; and

    > analyzing the DNA sample exposed with the substance to detect the condition.

    As with many of these cases – it’s difficult to extrapolate broad rules about a class of patents, from decisions that mainly look at the worst examples of that class of patents.

    1. 6.1

      Agreed. These steps, within a more detailed method, would likely pass muster under 101. As written, they basically say “notice a natural correlation, and know that it means something.” There is no “doing something about it” in the claims.

      1. 6.1.1

        Is that because the “doing something about it” would involve a multi-actor claim?

        Also, part of the problem with all of this is the ever-shifting interpretation of 101 by the courts. If you knew what goalpost you had to kick your claim through, you could meet it (or perhaps not file). Since they keep moving the goalposts (sideways, farther, closer, to a different planet,…), the claim you wrote then (or write today) won’t meet the new goalposts.

      2. 6.1.2

        DS: These steps, within a more detailed method, would likely pass muster under 101.

        Right. The same is true of Sequenom’s claims.

        The additional “details” would include, e.g., new compositions of matter described in distinct structural terms, or physical transformations of matter that were previously unknown/undescribed or achieved using means previously believed to be unworkable.

        DS: it’s difficult to extrapolate broad rules about a class of patents, from decisions that mainly look at the worst examples of that class of patents.

        This, too, is correct. It’s the closer cases that are going to result in clearer rules. But it’s the patentees that are going need to articulate those rules and explain to the court (or Court) why those rules are the correct ones. It’s pretty clear which rules are incorrect (i.e., “it was a new discovery!”; “a computer is not abstract!”) but patentees are continuing to argue those incorrect rules before the CAFC (and getting nowhere).

        1. 6.1.2.1

          …and yet again Malcolm chooses to make an issue of insisting on one optional claim format as somehow being the ONLY de facto legal claim format…

          Come on Malcolm – please stop this vap1d nonsense. You simply cannot make something optional be not optional.

          1. 6.1.2.1.1

            You simply cannot make something optional be not optional.

            Do whatever you like, “anon”! You are a super serious person. Your articule and persuasive writing is like a beacon in the night for all to follow. Plus Kevin Noonan thinks you’re really cool!

            LOLOLOLOLOLOLOLOLOL

  9. 5

    What follows is one way to appreciate the serious problems created by this claim (and claims like it).

    Here’s the basic facts: PCR is in the public domain. PCR is a technique for detecting DNA. In a nutshell, the technique is that you pick a sequence which you want to detect (or “read”) and you use DNA polymerase and short oligonucleotides (primers) flanking that sequence to “amplify”/”read”/”detect” the sequence between the primers.

    Now let’s say that, for whatever reason, I want to study variations in non-coding sequences in a particular region of a chromosome in a very very interesting and potentially important segment of the human chromosome. Given those facts, can I use PCR to study those sequences without liability? Of course I can! Nobody owns the human chromosome. Now let’s say that five years later I read a paper (freshly published) that teaches that some sequence variations in those non-coding regions are “linked” to mutations in an important gene (an “allele”) elsewhere on the chromosome. All of a sudden I’m “detecting” (indirectly) that “coding allele” when I sequence my non-coding region. All of a sudden I’m infringing this patent … and I haven’t done anything differently! Nobody has! It’s a bit of a problem. And, no, it doesn’t get better for me (or 99.999% of researchers out there) if the PTO “divides” the giant piece of pie protected by GTG’s claim into a zillion smaller pieces reciting, e.g., specific alleles that can be detected by this approach.

    1. 5.1

      This is nothing more than the Big Box of protons, neutrons and electrons “logic.”

      “B-b-but I should be able to configure anything from protons, neutrons and electrons are these are all old and not patent eligible.”

      Love the misdirection as well with the emphasis on “I can study.”

      Guess what Malcolm / that is nothing more than the allowed experimental use exception and applies to ALL claims of ALL art units.

      You want to actually do more than “just study,” you are goin to run into a problem – as you should.

      1. 5.1.1

        “anon”” This is nothing more than the Big Box of protons, neutrons and electrons “logic.”

        LOL At least you put “logic” in quotes this time. LOL!

        You want to actually do more than “just study,”

        Right. I want to be able to share the results with the people who asked me to perform the study. Pretty sure the First Amendment has me covered there.

        One more time in case you missed it the first time: nobody owns the human chromosome. PCR is in the public domain. I’m free to look at any part of my chromosome or anyone else’s chromosome (with their permission) using PCR, whenever I want. And yes I can charge people for that service and earn a living that way if choose to do so.

        It doesn’t really matter whether you like this reality or not, “anon.” If you don’t like it, by all means come after me with your “use PCR to detect this naturally occuring DNA” patent. Then you’ll be paying my attorney fees and (knowing you) some additional sanctions as well.

        1. 5.1.1.1

          yes I can charge people for that service and earn a living that way if choose to do so.

          … I almost forgot: I’ll first have to search the patent database to make sure that my website doesn’t infringe.

          LOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOL

          Kiss your world goodbye, grifters.

        2. 5.1.1.2

          can charge people for that service and earn a living that way if choose to do so.

          LOL – look who the G-g-g-grifter is, after all.

          What a Doosh.

          1. 5.1.1.2.1

            “anon” look who the G-g-g-grifter is

            LOL

            Right. The guy who creates a business using public domain tools and inofrmation and who actually provides a service to customers is “a grifter”.

            But the attorney who sits around concocting schemes to sue those guys … that’s just good old American enterprise!

            Funny stuff, “anon.” Keep the laughs coming.

            1. 5.1.1.2.1.1

              As you use that term, yes Malcolm, you are the grifter here.

              What was that about not liking “this reality”…?

  10. 4

    DC: GTG is an Australian company that had previously sued a few dozen companies for infringing the ‘179 patent.

    Only “a few dozen”? LOL

    1. A method for detection of at least one coding region allele of a multi-allelic genetic locus comprising:

    a) amplifying genomic DNA with a primer pair that spans a non-coding region sequence, said primer pair defining a DNA sequence which is in genetic linkage with said genetic locus and contains a sufficient number of non-coding region sequence nucleotides to produce an amplified DNA sequence characteristic of said allele; and

    b) analyzing the amplified DNA sequence to detect the allele.

    Dennis writes: The claim encompasses methods of detecting a particularly genetic allele using the two step process of (1) amplifying and then (2) analyzing the linked intron region.

    Did someone say “introns”? Lest anyone be confused, we should point out that the claim does not use the term “introns.” It uses the term “noncoding sequence” which is a far broader (yet still generic) class of DNA sequences.

    DC: The holding is that the claimed method for analyzing DNA for linkage disequilibrium is ineligible

    More accurately, the claimed method covers any PCR-based detection of a non-coding sequence where that non-coding sequence has the abstract property (i.e., a property that is irrelevant to the polymerases and primers used in PCR) of being in linkage disequilibrium with some coding sequence elsewhere.

    The case is very much analogous to the PCR-based method claim at issue in Ariosa v. Sequenom, although the prior art is even worse for GTG (I know — hard to believe).

    GTG’s claims are (were) among the most deserving recipients of a tanking for many years now (certainly they were near the top of the list along with Myriad). Good riddance.

    Is this the end of “personalized medicine”? Of course not. Is it the end of “diagnostic methods”? Nope.

    But you’ll definitely hear the patent industry shrills screeching otherwise. It’s really all they know how to do. Too bad those shills weren’t willing to have a rational discussion when Prometheus was asserting its impossibly ridiculous “think about this correlation” junk. Those shills might have some credibility left in that event. But, sadly, that’s not the hand they chose to play.

    1. 4.1

      MM:

      Two Steps:

      1. Amplify sample with a DNA “primer pair that spans a non-coding region sequence, said primer pair defining a DNA sequence which is in genetic linkage with said genetic locus.”

      2. Analyze.

      Now step 2 is not eligible, and adds nothing.

      Regarding step 1, I assume amplifying DNA with a primer pair is old. But was it old to use a primer pair with the specific kind of structure claimed, albeit, functionally defined? You say the primer pair has a new “property,” but the structure 0f the primer pair I believe is defined in terms of its function.

      As I said before, this looks like a functional claiming problem. But put that to one side, is this step new? Now, in another post in another thread, you made the argument that it was obvious.

      1. 4.1.1

        Ned – on that other thread you applied the same “logic” that you appear to want to apply again here.

        My pointing out the fallacy of that “logic” applies here as well.

      2. 4.1.2

        Ned: was it old to use a primer pair with the specific kind of structure claimed, albeit, functionally defined?

        There is no “specific structure” associated with the properties (“noncoding”) that are recited in the claim. Likewise, there are no specific structures implicated by the property of being genetically “linked” to another sequence elsewhere.

        It’s as if the claim recited using primers that span a “propietary sequence.” I’m pretty sure most patent attorneys would recognize the severe problems presented by that sort of claim (and I’m also sure that a tiny subset of patent attorneys would cheerlead endlessly for it).

        1. 4.1.2.1

          MM, help me just a bit more here.

          We have a target allele. It has a specific structure, I assume. From this, can one construct the primer pair of the claim? Can one recognize this primer pair structurally knowing the allele?

  11. 3

    It won’t be long until these types of inventions will be held as trade secrets and hamper scientific & technical advancements.

    1. 3.1

      K: these types of inventions

      Exacty which “type” are you referring to?

      hamper scientific & technical advancements

      Except that people who never read this patent and knew nothing about it were making the exact same “discovery” at the same time (if not earlier).

      The inventor, Malcolm Simons, circa : “I believe … that Genetic Technologies is overreaching the scope of my invention, and charging licensing fees on techniques that I knew at the time were prior art.”

      See link to lifescientist.com.au for more on this seedy story.

      The bottom line, folks, is that using a generic prior art technique for its intended purpose (detection of DNA sequences) does not create re-patentability for that use just because you “discover” a “new” sequence or some abstraction/natural phenomenon (e.g., a “correlation”). Allowing those kinds of claims turns the patent system into a farce, which is what the system had become.

      What part of “clean up this incredible mess” do you people not understand?

      1. 3.1.1

        I would agree if the patentee merely applied generic techniques/functions to preempt all meaningful applications of a law of nature.

        1. 3.1.1.1

          I would agree if the patentee merely applied generic techniques/functions to preempt all meaningful applications of a law of nature.

          So where do you stand on GTG’s claims and Sequenom’s claims?

          The techniques recited in both cases are generic: use PCR and appropriate primers to detect a sequence.

          Are you okay with those claims because there are other public domain methods available for detection? So you’d only object if the patentee remembered to claim all of the public domain or otherwise conventional techniques separately (such that each claim did not pre-empt “all meaningful applications of a law of nature”)? Or would that also be okay with you?

          I assume you can see where I’m going with this. I know at least that the Supreme Court and most of the CAFC knows what’s up.

          1. 3.1.1.1.1

            So, would you find the below claim unpatentable since it uses generic techniques/functions applied to a law of nature but does not preempt all meaningful applications of a law of nature?:

            “providing said computer with a database for said press, including at least, natural logarithm conversion data (ln), the activation energy constant (C) unique to each batch of said compound being molded, and a constant (x) dependent upon the geometry of the particular mold of the press,”

            “initiating an interval timer in said computer upon the closure of the press for monitoring the elapsed time of said closure,”

            “constantly determining the temperature (Z) of the mold at a location closely adjacent to the mold cavity in the press during molding,”

            “constantly providing the computer with the temperature (Z),”

            “repetitively calculating in the computer, at frequent intervals during each cure, the Arrhenius equation for reaction time during the cure, which is ln v = CZ + x, where v is the total required cure time,”

            “repetitively comparing in the computer at said frequent intervals during the cure each said calculation of the total required cure time calculated with the Arrhenius equation and said elapsed time, and”

            “opening the press automatically when a said comparison indicates equivalence.”

            1. 3.1.1.1.1.1

              K,

              Malcolm is on record here as stating that the Diehr decision was wrong.

              Your point about not pre-empting will not be handled in an inte11ectually honest straight forward manner by Malcolm.

            2. 3.1.1.1.1.2

              I was pretty sure there wasn’t much thinking behind your comments, K.

              Thanks for proving that. Anytime you want to grow up and answer the questions I asked you at 3.1.1.1, feel free to do so.

              1. 3.1.1.1.1.2.1

                First, your substitution of a personal attack for a substantive response is certainly not very grown up.

                Second, Diamond v Diehr is a rhetorical response to your question to which you declined to respond.

                Third, in a more direct response to your question, Alice and Mayo while playing lip service to preemption imply that applying a generic function/technique, whether it is the only one or not, to a well-known method consisting of an abstract idea, law of nature, or natural phenomenon is ‘not enough’ to provide patent eligibility. Diehr is distinguished because the claim actually includes opening a mold (which is just consequential post-solution activity, right?). So, under Alice and Mayo, GTG appears to be unpatentable. But, 102 and 103 are still better approaches. Additionally, Alice’s poor use of language has resulted in the absurd application of Alice by the USPTO and the courts of: determining if a claim is directed to an abstract idea and then if generic functions/techniques are used, then the claim is unpatentable regardless of whether the body of the elements are well-known & abstract, a law of nature, or a natural phenomenon.

                1. K Diamond v Diehr is a rhetorical response to your question

                  Read the thread. I asked you a straighforward question about your own opinion. Your “response” was a joke.

                  Diehr is distinguished because the claim actually includes opening a mold

                  I think the Supreme Court has recognized more going on in Dierh’s claims than “opening a mold” (whether or not that recognition is factually grounded is another question).

                  under Alice and Mayo, GTG appears to be unpatentable. But, 102 and 103 are still better approaches.

                  Why are they “better”? What makes them “better”?

                  Alice’s poor use of language has resulted in the absurd application of Alice by the USPTO

                  What’s “absurd” about it?

                  I’m sure the PTO has made mistakes but they make mistakes in their application of every one of the statutes.

                  What’s “absurd” about finding a claim ineligible when, e.g., it’s directed to an abstraction (e.g., negotiating a contract) and the “body of the elements” recite conventional computer technology (e.g., input, receive, store, “determine”, output)?

                  The fact is that most reasonable people find it absurd that such claims were ever granted in the first place. Much of the changes happened when very few people were paying attention and pointing out the absurdity.

                  That’s no longer the case. And it’s never going to be the case again.

                2. More going on in Diehr….

                  Yep / you have that Point of Novelty that software has been added to the old equipment.

                  Oops (for Malcolm)

                  ;-)

                3. My response “was a joke?” What’s absurd about the PTO’s application of Alice? You clearly either did not read my full response, did not comprehend it, or have no idea what is happening in the PTO or the real world. You characterize misapplications of Alice by the PTO as a “mistake.” No sir. It’s not a mistake, it’s policy that will come to an end.

    1. 2.1

      Be careful with what you wish for, Mr. Snyder.

      The historical reference here to keep in mind is Sir Thomas More, and the desire to have the judicial branch have too much power (because here, the Ends are ones you agree with) will leave you empty and powerless when that devil turns towards you when all the laws are flattened.

  12. 1

    Greetings Dennis

    I have to wonder, did the printers over at the CAFC forget to include the first page of 35 USC in their volume of the law, where it clearly states in § 100:

    “….(a) The term “invention” means invention or discovery”

    Can someone do us a favor and re-insert the page back into their library so they will stop making basic legal errors on what is “eligible” for patenteability, and what is not? It seems everyone forgot there is a definitional preamble to the code.

    1. 1.1

      It seems everyone forgot there is a definitional preamble to the code.

      So says the genius who “discovered” that you could use the Internet to communicate information about movie rentals.

      LOL

      1. 1.1.1

        ah yes poor Moon man, jealous of anyone again who has achieved anything in this field lol

        remind us all again of any notable patent you prosecuted, enforced or invented?

        chirp chirp

        1. 1.1.1.1

          MM just attacks people to drive them away, so he can use this as his personal soundboard. I just ignore him/her/it. (In fact, I assume someone like Google could just make up an AI module that would do just as well as MM. Maybe MM is an AI module?)

          1. 1.1.1.1.1

            His lack of actual engagement and no discussion on points of merit does suggest that he would not pass the Turing test.

            (And another phrase is added to the [secret] George Carlin list…)

    2. 1.2

      Is there good precedent for what “discover” actually means?

      The most logical definition seems to be “finding something unexpected”, i.e. it encompasses serendipity, as opposed to pure invention, which connotes purpose, in order to allow for an “accidental invention” to be eligible for patent protection.

      All the claims where people try to hide behind ‘discovery’ seem to be “use old technology on X, where X is a subclass of A, and old technology was developed to be used on A”.

      If you can’t patent X itself, you can’t patent the previous type of claim. And you can’t patent X itself because X is a natural phenomenon.

      1. 1.2.2

        Coollogo states in part “The most logical definition seems to be “finding something unexpected”, i.e. it encompasses serendipity

        Be aware of – and beware of – the natural logic that flows from your own “pure invention” views, lest you be swallowed up in the polarity of Flash of Genius (which Congress explicitly rejected) and “pure” serendipity (which does not allow well for the teaching/learning that comes from the basic foundation of patent law: Quid Pro Quo)

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