Supreme Court denies Sequenom Petition: Alice and Mayo Remain

by Dennis Crouch

Patentees in the biotech and software industries had placed substantial hope on the pending Supreme Court case of Sequenom v. Ariosa: The hope being that the case would serve as a vehicle for the Court to step-back from the strong language of Alice and Mayo that has led to rejection and invalidation for many.  The Supreme Court has now denied certiorari in Sequenom – effectively ending that campaign.

283 thoughts on “Supreme Court denies Sequenom Petition: Alice and Mayo Remain

    1. 19.1

      MM, yes it is. It is an extremely valuable refutation of the position advanced by some here that Congress intended to change the law regarding 101 in some way when it reenacted the very same language that had previously existed. Further, it is a direct rebuff of any argument that 101 is in any way an overrule of Funk Bros.

      1. 19.1.1

        LOL – Ned – your “version” is exactly what is trounced in those materials.

        Time for you to desist from your unholy elevation of the Supreme Court above the Constitution.

      2. 19.1.2

        Note as well – nothing in the materials is different than what I have already told you about what happened in 1952. The very act of seeking to codify and remove from the courts the previously granted power of common law development – in direct retaliation of the Supreme Court going too far – is verified in this treasure trove.

        1. 19.1.2.1

          nothing in the materials is different than what I have already told you about what happened in 1952

          LOLOLOLOLOLOLOLOLOLOLOLOL

        2. 19.1.2.2

          “nothing in the materials is different than what I have already told you about what happened in 1952”

          Except all of it.

    2. 19.2

      I agree with Malcolm to thank Mr. Distant, and to invite furthr careful study.

      For example, the phrase often used by Ned (“just to codify the law”) is apparently NOT to codify what the anti-patent Supreme Court was doing to the law.

      See bottom page 2 of link to ipmall.info

      As true today, back then there were philosophical machinations afoot to diminish patents.

      Study well history, lest you need to repeat those old lessons.

    1. 17.1

      Honestly, I do not know why my picture shows up. Perhaps because I list my gmail address in the “e-mail” slot, and that is the picture associated with my gmail?

      1. 17.1.1

        Probably that. You probably had that pic up before he switched systems and now you’re still using the same gmail account. Either that, or else your pic is associated with your gmail on some other social media platform and it is lifting it from there.

        Where did you post that scottish bagpiper pic to? If you can recall.

        1. 17.1.1.1

          That is (or rather was) me, at the Springfield IL highland games back in 2004.

            1. 17.1.1.1.1.1

              Took my friend a long time, but on the other hand, most people can barely discern the difference between good bagpipe players and bad ones.

        2. 17.1.1.2

          I uploaded it to gmail in the “select profile picture” section right at the very top of the account settings.

          1. 17.1.1.2.1

            k it must be bringing in your profile pic directly from gmail. I wonder what platform d is using now?

    2. 17.2

      6, that pic is from gravatar, which apparently is connected via API to this site.

  1. 16

    Confused: What is ultimately at stake is the kind of world in which we want to live.

    Gee, what are the odds that “Confused” was out there expressing his deep concern when Prometheus was running around sueing people for thinking a new thought about previously gathered data?

    Pretty slim.

    Here’s the deal: nobody except a tiny tiny handful of patent attorneys and tiny group of ultra wealthy investors wants to live in a world where people “discover” stuff and then run to the PTO to get a patent on “look at my stuff.” Nobody ever wanted that. Congress surely didn’t want it or we’d have reams of such patents filed from the beginning.

    That’s what this case was about. Don’t like it? Propose a statutory fix that keeps the “detect this stuff” claims that everyone wants and eliminates the “detect this stuff” claims that nobody wants. And good luck with that.

    But whining about Mayo and Alice is p@thetic. Those cases aren’t going anywhere and if you don’t understand why then you’ve been living under a rock for the past twenty five years.

    1. 16.1

      Translation: “But look at the Ends, aren’t these wonderful Ends? – Who cares about the means with Ends like these…?”

      The tip off (the poker tell) is Malcolm once again depending on the ad hominem of “tiny tiny handful of patent attorneys and tiny group of ultra wealthy investors

      It is “cohorts” Oh Noes mindlessness.

  2. 15

    Another friendly reminder to the kool-aid drinking Chicken Littles running around screeching that we’re entering some kind of “dark age”: patents aren’t the only way to promote innovation, and they never were.

    And most discoveries aren’t patented. They’re shared.

    You guys really need to get out of the office and hang out with some people who think about things other than their next million.

    1. 15.1

      LOL – talk about your “false equivalencies”…

      (Plus the usual rampant anti-patent animus, no wonder why you exhibit such cognitive dissonance. Let me repeat my advice to you: get into a career in which you can believe in the work product you produce).

      1. 15.1.1

        anti-patent animus

        Stating an incontestable and fundamental fact of life is hardly expression of “anti-patent animus”.

        Patents are awesome and useful when the system if working properly.

        But they aren’t the only game in town. They never were. Now, it’s certainly the case that some people out there would love for patents to be the only game in town. Can you guess who those people are?

        Go ahead. Take a guess.

        1. 15.1.1.1

          Nice strawman.

          Does not hide your anti-patent animus though.

          Get into a different profession.

  3. 14

    Downthread we have a patent maximalist stating that nobody in the 18th century could have conceived of healthcare.

    Try to believe it, folks.

    Like I’ve said for many years: these people will do and say literally anything.

  4. 13

    Every commenter here misses the important business reality. Inventors decide to file based on the state of the law at the time of filing. They disclose in return for limited terms of protection. Their investors invest based on that. Any decision that moves the goalposts after filing is inherently unfair. Want to state a new rule? Establish a new test? Require new kinds of claiming? Great – apply those prospectively, but don’t rob people who played by the rules and can’t now take back their disclosures or amend their filings to comply with your new rules.

    Kids in the sandlot know that you’re not allowed to move the fence once the ball is in the air. Why can’t judges get that fact?

    1. 13.1

      Basically Lawrence, that would require the acknowledgement that what the Court is doing is actually re-writing statutory law (something that violates the separation of powers doctrine).

      Can’t have the emperor knowing they don’t have a stitch on, now can we?

      1. 13.1.1

        Keep whining, grandpa. 1952! 1952! Yes, we heard it already.

        Meanwhile the steamroller will continue to crush your ridiculous patent fantasies into dust.

        There’s no going back to State Street, ever. Give it up already because incessantly whining about the long gone good ol’ days of pure patent ins@nity just makes you sound even more like a bott0m-feeding tr0ll than you usually do.

        1. 13.1.1.1

          State street….?

          That’s not 1952 “grandpa.”

          As for whining, you are the tops for that (yet more of the typical short script AccuseOthersOfThatWhichMalcolmDoes… Go figure Folks)

          No Malcolm, what I am doing is calling for the proper application of law – yes, I do “get” that such gets in the way of what you want the law “to be,” but that’s just too bad for your “feelings.”

          1. 13.1.1.1.1

            State street….? That’s not 1952 “grandpa.”

            I never said it was. But it was surely the maximalist dream opinion interpreting the 1952 statute.

            And it’s officially a c0rpse. And we’re never, ever going back.

            Seriously, “anon”, discussing patent law with you and your c0horts is like discussing the Civil Rights Act with the Grand Wizard. You live in a warped bubble where your self-importance and your paranoia drip from every comment.

            We all know that you guys don’t like the direction that things are going. We get it. But it is the direction that things are going. We’re not going backwards, ever. Maybe try dealing with that and contributing something constructive for a change instead of ranting endlessly about the Supreme Court and “leftists” and “academics” and c0mmies and all your other silly bugbears.

            It’s possible to write better patent statutes, you know? The question is why on earth any reasonable person would want people like you anywhere near the room where those statutes are written.

            1. 13.1.1.1.1.1

              I am talking about 1952 and you tried to insert words into my mouth.

              Not the first time that you have tried this type of dissembling.

              Maybe instead you want to focus on the law…?

              As it is.
              Written by the branch of the government authorized by the Constitution to write that law.
              And one that simply does not accord with your “feelings.”

              And sure, that branch may write a better law – but that is rather moving the goalposts from what I am pointing out, now isn’t it?

              (That’s a rhetorical question, by the way)

            2. 13.1.1.1.1.2

              Progress is rarely linear. We are stepping backward here and there. CAFC is undermining Alice, which is eminently in need of modification, but of course in about the least productive way. I cannot see how Bascom and Enfish can be squared.

              I do find it interesting that Newman has realized that some kind of construction or preliminary finding of patentability is essential to reasonable litigation and judicial economy.

              1. 13.1.1.1.1.2.1

                some kind of construction or preliminary finding of patentability is essential to reasonable litigation and judicial economy.

                There is “some kind of construction” and there is a “preliminary finding of patentability” in many (most? nearly all?) cases with gaping eligibility issues.

                In those cases, there is typically no dispute about what’s in the prior art and there is typically no genuine dispute about the claim scope (“apply this ineligible rule to this data, on a computer”).

                1. MM there is nothing like a formalized Markman step to construe the bounds of a patentability challenge.

                  Maybe there should have been one added immediately post-KSR, but Newman is clearly calling for something just like that.

                2. I’m waiting for the official thread to talk more about the Bascom case. But the idea of first looking at the patentability of combined technological elements recited in a claim and then reaching a conclusion regarding eligibility is not a new one. It’s totally appropriate in many circumstances. Of course, in many circumstances the analysis of those combined tech elements takes about three seconds.

    2. 13.2

      don’t rob people who played by the rules

      The fact is that for a long time pretty much nobody was playing by any rules.

      The system turned into a free-for-all and what we’re seeing now are the necessary corrections that many of us saw coming years ago. And we told you about it in real time.

      Where you were? Let me guess: trying to “monetize” some pile of junk that you didn’t deserve.

      And by the way: there’s more to come. A lot more.

        1. 13.2.1.1

          LH: So much venom, and ad hominem attack.

          It was you who started up with people being “robbed”, Lawrence.

          Nobody was “robbed” by this decision. Rather, what belonged to the public was returned to the public.

          That’s cause for celebration.

          The idea that we are all supposed to shed a tear for “investors” who gambled on an out-of-control patent system and a ridiculously broad patent claim is an idea that only a patent attorney could cook up. And yes I’ve seen it before. I can hardly wait for Kevin N00nan’s “what about the children?!” rant which is surely coming if it hasn’t been published already.

          1. 13.2.1.1.1

            what belonged to the public was returned to the public.

            How dare anyone try to obtain a patent on anything that has protons, neutrons and electrons.

            Protons, neutrons and electrons belong to the public, to the commons.

            Let’s all get on our knees with Jane and hope and prey that this righteousness of the commons comes to be understood by those “cohorts” seeking to take protons, neutrons and electrons out of the commons through the devious attempt at scrivening mere configurations of these protons, neutrons and electrons.

            (simply applying the basic “logic” of Malcolm’s position to its own logical ends)

    3. 13.3

      Because if investors made choices based on unconstitutional or immoral law, they don’t get a free pass to act in unconstitutional or immoral ways once the law is corrected.

      1. 13.3.1

        Did Congress do that (and do you recognize the limits of the judiciary when it comes to statutory law – especially statutory law that is explicitly allocated only to the legislative branch in our Constitution? Or is that terrain simply too inconvenient for you?

        1. 13.3.1.1

          anon your belief that the Supreme Court may not modify a statue is simply bizarre.

          Ironic (or maybe just hypocritical) that you are so concerned with the legal terrain, yet somehow elide the bedrock fact that Congress can write what it will, while the Judiciary determines what the law means.

          1. 13.3.1.1.1

            They may not rewrite the statutory law.

            There is absolutely nothing bizarre about that.

            (Interpretation is very much distinguished from re-writing)

            Unclench your eyes and note the difference between statutory law and common law.

            1. 13.3.1.1.1.1

              Yea, tell us all how “interpreting” is not the same as “rewriting” anon.

              I’m aware of the canons of statutory interpretation ((or at least the existence of such) and I understand the prime directive to do the least violence to the statue- but when it ain’t gonna fly, it’s gonna get rewritten to some degree- or interpreted if you wish, but the result is exactly the same.

              Like I sez; bizarre.

              1. 13.3.1.1.1.1.1

                get rewritten to some degree- or interpreted if you wish

                Actually exactly opposite the point I was providing.

                Unclench those eyes son.

          2. 13.3.1.1.2

            Following on from this with some comments about 1951 and 1952 legislative history and what “Congress” intended. So whose intent is relevant to “legislative intent”? Surely not Rich and Federico, as they were not elected legislators? Actual elected legislators who were sufficiently involved to have informed opinions of what they were about were South Carolina Representative Joseph R. Bryson, who chaired the subcommittee of the House Committee of the Judiciary, and other members of that subcommittee, including Mr WIllis, Mr Rogers and Mr Crumpacker.

            Photocopies of pages of the Congressional Record are to be found linked to this webpage:

            link to ipmall.info

            So what did “Congress” intend?

            To begin with here are some remarks of Mr. Rogers, commenting on Giles Rich’s discussion of contributory infringement on June 15, afternoon session:

            MR ROGERS: “Before going to that, may I make inquiry concerning section (c) of 231?.

            “Do I understand that that is just an attempt to clarify what the judicial decisions have said constituted contributory infringement?”

            […]

            “This committee was given some information to the effect that this bill was merely a restatement of statutory law plus common accepted interpretations of Supreme Court or higher court decisions, that in its nature, the entire bill should not be a controversial one…”

            But probably more interesting, particularly in view of “natural phenomena” is the discussion between Mr Willis (Representative) and I.J. Fellner (witness) on the morning of June 15, 1951. Fellner had noted that a second sentence in what became 101 was dropped from a draft of the previous year. The sentence that was dropped read as follows:

            “An invention in the nature of a discovery as embodied in a new and useful art, machine, manufacture or composition of matter, or new and useful improvements thereof may be patented.”

            Fellner wanted this statement reinstated, because he was very concerned about the Funk Brothers decision. He therefore wanted this sentence reinstated in 101 to “clarify” that section in a manner that would overrule the definition of Funk Brothers. Mr Willis (a member of the subcommittee) drew his attention to the draft of section 100(b), stating that the term “invention” includes discoveries, and asked whether this was not enough. Mr Bryson (the Chairman of the Subcommittee) stated that “There is no intention to change the law as it is currently written”. Fellner countered by saying that reinstating the wording from the earlier draft would “be making unequivocal that which might now be merely inferrible”.

            Mr Willis: “You would prefer, or rather advocate an amendment to carry out what you have in mind?”

            Mr Fellner: “That is actually what I am trying to do.”

            Mr Willis: “But I do not think that is what this particular bill is intended to accomplish.”

            The discussion then covers the fact that “invents or discovers” was in the pre-1952 statute, and that this was interpreted as in the Funk Brothers opinion. And Mr. Crumpacker makes the following remark:

            “If the Supreme Court has interpreted the words as you indicate, I do not see how including that language in the paragraph would cause them to make a different interpretation.”

            An internet search on “Fellner Bryson Willis patent” brings up stuff, including the following article by Eric Weibel, also discussing this exchange between Fellner and the members of the subcommittee progressing the bill:

            link to examiner.com

            Note also that there was a statement to the Senate made by Senator McCarran when the House Bill passed the Senate.

      2. 13.3.2

        Right, only the Supreme Court gets to ignore the Constitution

        …To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.

        1. 13.3.2.1

          Come Les, you know your statement is just not true…

          …it is not ONLY the Supreme Court – as we see plenty here, those supposed attorneys whose philosophies and desired ends are met also “get” to ignore the Constitution and such things as separation of powers to celebrate broken scoreboards (but shhhh – we shouldn’t draw attention to broken scoreboards)

          ;-)

        2. 13.3.2.2

          yea well the Constitution also considered black people 3/5ths of a person, and that wasn’t going to fly either.

            1. 13.3.2.2.1.1

              yea, it did.

              All other people than free (white) persons and non-taxed Indians.

              Article 1, Section 2, Clause 3

              1. 13.3.2.2.1.1.1

                Have another glance. You are once again reading words into laws that just are not there.

                1. Funny thing is, he is importing the words that the Court imported (making the very mistake that I am pointing out and proving my case for me)

                2. Les the argument that the 3/5 clause did not refer specifically to black slavery is junk sophism. Grow up.

                  Legislative history (deprecated on this thread) inescapably proves that it was.

                  This point would be well explored in relation to Prof. Radin’s paper about traditionalist and holistic theories of plain meaning.

                3. Point is, you are reading words into the law that are not there.

                  It does not say slaves were 3/5 of a person. It said for figuring out how much of the pie a state gets here are the weights to be applied. Furthermore 3/5 was not applied based on skin color, it was applied based on status. A freed slave would have been weighted by 1 according to the formula.

                4. And by the way, are you arguing that the entire Constitution should be ignored because of the “3/5 clause”?

                5. Little known but white people were also slaves.

                  Further, the context here was a State’s rights thing; and in those states known as Free States, there was no “3/5’s” in play.

                  It is this type of “sound byte, I slept at a Holiday Inn last night” treatment of law that p00r Mr. Snyder so aptly proves my points with.

                  Time and again.

                6. This seems like some rather pointless quibbling. Imagine that instead of

                  yea well the Constitution also considered black people 3/5ths of a person, and that wasn’t going to fly either.

                  Mr. Snyder had written

                  yea well the Constitution also considered the overwhelming majority of black people 3/5ths of a person, and that wasn’t going to fly either.

                  The rhetorical force of the point he was making would be only trivially diminished, while your objections would be eviscerated of all force.

                  In other words, your niggling objections are technically correct, but they really miss the forest for the trees. The 30 June, 9:42 a.m. response seems like an intelligent response, but everything else said in contradiction of Martin Snyder’s point is just inane evasion.

                7. Greg –

                  I respectfully submit that all of the problems with Patent Law come from one person or another “interpreting” the law further and further from what the law says.

                  The constitution says nothing about race or skin color. 35 USC 101 says nothing about abstract ideas, math, in the human mind, pencil, paper, building blocks, laws of nature, products of nature or preemption. Nevertheless, one court found one of these in 101 and another stretched that to find another and a subsequent court twisted those to find a third and so on.

                  Call it quibbling if you like….I think its important.

                8. The constitution says nothing about race or skin color.

                  I suppose that if I were inclined to inane quibbling, I would note the XV amendment. Once again, however, this would rather miss the real thrust of the argument on the table, so I will not belabor that point.

                  I respectfully submit that all of the problems with Patent Law come from one person or another “interpreting” the law further and further from what the law says.

                  I largely agree. If you mean to say, however, that this observation is somehow analogous to an alleged “misreading” of Art. 1, §2, cl. 3, well, that seems a stretch to me.

                  The whole constitutional, pseudo-historical argument here seems like quite an unprofitable detour from the actual point about §101.

                9. The rhetorical force of the point he was making would be only trivially diminished, while your objections would be eviscerated of all force.

                  Greg – I see it as quite the opposite. The “rhetorical force” is near zero because Mr. Snyder is playing the “I slept at a Holiday Inn last night” game of sound byte quoting. He has failed to account for the context of that provision and (as I noted previously) the provision does NOT stand for what he attempts to make it stand for.

                  He broadly paints a phrase INCORRECTLY, and neither recognizes nor cares of the context of that phrase.

                  No one is doubting the pain and suffering that came along with slavery – or that the 15th amendment was aimed directly at a race-based issue.

                  That though is just not the point – in context here and now. The dynamics of Free State/Slave State and Federal/State rights simply have nothing to do with patent law or a patent law related to the Constitution discussion.

    4. 13.4

      Lawrence, I think there is fundamental agreement that a change in a statute cannot invalidate vested property rights that were valid when granted. However, that does not apply to Supreme Court decisions that only interpret the statutes or the Constitution.

      The Supreme Court in these 101 cases did not purport to overturn or overrule any prior cases. Rather the Supreme Court has been consistent. The problem of issuing patents that are inconsistent with the Supreme Court is the problem that you now seem to complain about. If you have to blame somebody, blame the Federal Circuit for not following the Supreme Court case law, and blame the patent office for issuing patents that it should have known were invalid under existing Supreme Court case law.

      1. 13.4.1

        They say that they have been “consistent,” except EVERYONE knows that such is not – and cannot be – true.

        The overwhelming feality to the Supreme Court is NOT in accord with your oath as an attorney Ned.

        Time to stop genuflecting at that alter.

  5. 12

    I am confused. I had always thought that an invention could be described as the practical application of a discovery. Was I mistaken in that belief?

    Many patent laws around the world prohibit the patenting of discoveries. However, that does not mean that inventions cannot be based upon discoveries.

    Finding that cffDNA is present in circulating maternal plasma is an unpatentable discovery. However, a method of diagnosing foetal abnormalities by isolating and analysing that cffDNA is new and useful (practical) application of that discovery – and hence an invention. Outside of the completely incomprehensible world of the Supreme Court of the US, it really is as simple as that.

    1. 12.1

      It is even more confusing that that if you read the U.S. Constitution and/or 35 USC 101, both of which indicate that Discoveries are patentable.

    2. 12.2

      Confused: I had always thought that an invention could be described as the practical application of a discovery. Was I mistaken in that belief?

      The answer is that it depends on the discovery and it depends on what exactly you are claiming. There’s more to it than the “simple” belief you set forth, and there’s good reasons why there’s more to it. That said, the reality isn’t very complicated.

      Finding that cffDNA is present in circulating maternal plasma is an unpatentable [ineligible] discovery.

      Right. Now pay close attention to this next part: if your claim is so broad that it prevents people from observing that ineligible natural phenomenon using prior art tools designed for the purpose of observing such phenomenon, then your claim is ineligible. With respect to this case, PCR is a prior art tool for observing tiny amounts of DNA (and has been for a long time).

      a method of diagnosing foetal abnormalities by isolating and analysing that cffDNA is new and useful (practical) application of that discovery – and hence an invention

      The method you described may be an “invention” in the general sense but the important legal question remains: what exactly is being claimed? If “isolating cffDNA” encompasses “performing PCR on cffDNA”, then you’re still in the weeds. Adding a broad generic (and mental) step of “analyzing” the result of the PCR reaction isn’t going to get you anywhere (according to the USPTO’s recent guidelines, at least, it actually makes matters worse).

      the completely incomprehensible world of the Supreme Court of the US

      There’s plenty of us out here who comprehend this stuff quite well and we’ve been ahead of the curve for many years. What’s difficult to comprehend is how the American judiciary could have been so short-sighted to believe that opening the gates to the patenting of everything and anything you could describe as a “method” was somehow going to promote anything other than infinite liability and a race to the bottom.

      1. 12.2.1

        Right. Now pay close attention to this next part: if your claim is so broad that it prevents people from warping a wing using prior art rope and pulleys designed for the purpose of applying force to objects, then your claim is ineligible. With respect to the Wright Flyer, rope, lumber and canvas are prior art tools for harnessing the relative motion of the air (and have been for a long time)….

        1. 12.2.1.1

          LOL, but only because that hurts less than crying, your observation about the inanity of SCOTUS’ juriprudence is spot on.

          1. 12.2.1.1.1

            Actually I was making an observation about the inanity of the fourth paragraph of post 12.2.

            But thanks.

      2. 12.2.2

        So you are saying that the problem was that the claim in Sequenom’s patent was too broad – as it “prevents people from observing that ineligible natural phenomenon using prior art tools designed for the purpose of observing such phenomenon”.

        Interesting logic.

        Do you realise that you are essentially saying that it is not possible to patent any methods that apply known means in a new way, thereby achieving a completely new (and very useful) result?

        Or is it that you are instead saying that we need to distinguish between those (patent ineligible) methods where the “new way” has a connection to a natural phenomenon and other (patent eligible) methods where the “new way” has no such connection? If so, then that is frankly an absurd (and arbitrary) distinction that finds no basis in the legislation whatsoever.

        Let’s face it, your real complaint (and that of SCOTUS) is to the breadth of certain claims. In this respect it is important to acknowledge that not all patent claims are perfectly drafted, and some may represent an attempt to claim a monopoly over activities to which the patentee has not provided an inventive contribution. However, patent eligibility is not the right grounds upon which to challenge such claims – as evidenced by the completely ridiculous test (“not substantially different”) that SCOTUS needed to devise in order to use that ground.

        Other grounds (e.g. lack of utility, lack of proper written description, insufficiency, anticipation and/or obviousness) are much better suited to tackling overly broad claims – not least because those provisions (unlike patent eligibility) were specifically designed with that purpose in mind.

        1. 12.2.2.1

          Confused: you are essentially saying that it is not possible to patent any methods that apply known means in a new way, thereby achieving a completely new (and very useful) result?

          Let me help you out here by expressly stating that what you’ve just expressed is not my view at all.

          Now that we’ve got that out of the way, let’s deal with some of your confusion. First, using a prior art detection method to detect a member of a class which the detection method was designed to detect can never be accurately characterized as a “completely” new method. It’s more than a bit odd that I would have to explain that to an adult but, hey, I’ve seen just about everything at this stage.

          it is important to acknowledge that not all patent claims are perfectly drafted

          No kidding.

          some may represent an attempt to claim a monopoly over activities to which the patentee has not provided an inventive contribution.

          Indeed. Or they may represent an attempt to claim a monopoly over activities far beyond any “inventive contribution.” Or they may represent an attempt to claim a monopoly over logic, or a fact, or some other ineligible subject matter.

          patent eligibility is not the right grounds upon which to challenge such claims

          Sure it is. And I have hundreds of cases and hundreds of tanked claims to back me up. And there’s more to come. Lots more!

          Other grounds (e.g. lack of utility, lack of proper written description, insufficiency, anticipation and/or obviousness) are much better suited to tackling overly broad claims – not least because those provisions (unlike patent eligibility) were specifically designed with that purpose in mind.

          Well, unfortunately for your naive narrative, the courts (especially the CAFC) and the PTO spent many years not just ignoring those provisions when it came to certain claim formats but actively undercutting them. That undercutting quite often “found no basis in the legislation whatsoever” but the patent maximalists didn’t seem to mind much when the bubble was being inflated to absurd dimensions.

          Reap the whirlwind. Like I said, there’s more to come. Your “expectations” took a hit. That’s not my problem. That’s your problem because quite a few of us could see this coming a mile away. And we even told you about it in real time.

          1. 12.2.2.1.2

            MM – I apologise for misrepresenting your views in my previous post. I guess that my imagination just did not stretch to cover what (to me) is a frankly astonishing suggestion, namely that we need to make a distinction between what is merely “new” and what is “completely new”. And all in the context of assessing patent eligibility (not novelty). I really don’t know how I failed to spot that.

            On a less sarcastic note, I guess that you and I are just going to have to agree to differ. Although I remain open to persuasion, you have utterly failed to convince me that the position you are espousing is supported by a sound, seamless and consistent logic. As I also doubt that I have had any effect upon your (seemingly pretty entrenched) views, let’s just leave it there.

            1. 12.2.2.1.2.1

              I guess that my imagination just did not stretch to cover what (to me) is a frankly astonishing suggestion, namely that we need to make a distinction between what is merely “new” and what is “completely new”.

              As everyone can see, you are the one who felt compelled to make that distinction. The problem is that you chose a terrible example.

              I’m sure at some point somebody used PCR in outer space for the first time. Was that a “completely new” use of PCR? I know the patent maximalists would say so. Because they’d say literally anything if they thought it had a microchance of convincing a comatose factfinder.

              How about using PCR and an old computer-plus-detector to detect the result? Was that a “completely new” use of PCR? I know the patent maximalists would say so. Because they’d say literally anything if they thought it had a microchance of convincing a comatose factfinder.

              How about using PCR and an old computer-plus-detector that wirelessly transmits the PCR result to a user’s communication device? Was that a “completely new” use of PCR? I know the patent maximalists would say so. Because they’d say literally anything if they thought it had a microchance of convincing a comatose factfinder.

              you have utterly failed to convince me that the position you are espousing is supported by a sound, seamless and consistent logic.

              LOL. The position I’m espousing is that you can’t protect a newly discovered natural phenomenon by broadly claiming “detect this phenomenon using prior art tools designed to detect the phenomenon”. The reason why is that if we allow such claims then the system will quickly become clogged with endless “detect this phenomenon” claims and nobody will be able to use the detection tools without fear of liability. That defeats the whole purpose of promoting progress in an indisputably patent-worthy art field: new technological tools for detecting stuff.

              Now go ahead and show everyone the “logical inconsistency” or “logical leaps” in what I’ve just told you.

              1. 12.2.2.1.2.1.1

                35 USC 101: “and any new and useful improvements thereof

                D’Oh! (said in the best Homer Simpson tones)

            2. 12.2.2.1.2.2

              If the result of your new method is a change in the world, and the change is new, non-obvious, and fully described, you canz have a patent.

              If the result of your method is some item of information, the patent system as currently designed runs into problems. Information is often a symbol or model of something in the world, but symbols and models are far more malleable than things in the world generally are, and that inherent malleability makes concepts of prior art, or novelty, or complete description vastly more difficult to reasonably distinguish and adjudicate.

              The choice of how to deal with abstract inventions is a practical problem, and a political problem.

              This Sequenom invention is nothing more than someone exclaiming “there’s gold in them thar hills” and heading off to extract it with picks and shovels. A new extraction method would be eligible. The information about where to find the gold would not be.

              1. 12.2.2.1.2.2.1

                The method is new. The new method includes sampling and processing mother’s blood. The old method did not. The prior art taught sampling and processing amniotic fluid, which is more difficult, more invasive and more dangerous. If the new method were obvious, it would have been attempted long ago, driven by any or all of those motivators.

                We would have expected that “nothing more” assertion would have been expected from other posters.

                1. The method is new. The new method includes sampling and processing mother’s blood. The old method did not./i>

                  “The method is new. The new method includes sampling and processing the mother’s blood while watching a targeted advertisement. The old method did not.”

                  And on and on.

                2. Ned said: “As explained multiple times by the Supreme Court, the patent laws exist to promote creation, not to promote discovery of existing phenomena.”

                  Wow Ned. Even if that were true. What the Constitution clearly says is:

                  To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.

                  …with clearly needed emphasis added.

                3. Les, the only thing new about the method is the target, and the target is new because of the discovery.

                  Les, assuming the discovery is can be patented in combination with any method, could I claim:

                  1. Newly discovered phenomena of nature.
                  2. Any method of determining the presence of the newly discovered phenomena of nature.

                  Item 2 would include all methods, new, old, conventional or revolutionary.

                4. Ned, I would direct your attention to the statutes:

                  35 U.S.C. 101 Inventions patentable.

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

                  35 U.S.C. 100 Definitions.

                  When used in this title unless the context otherwise indicates –

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

                  (emphasis added as it is apparently needed).

                5. Les, how in the world can invention mean invention or discovery if invention and discovery are two different things?

                  Now I can understand that fruit can include apples and oranges. But I can understand how apples can mean apples and oranges.

                  That phrase in 100 is nonsense. It is un-parsable.

                  Regardless, the Supreme Court has consistently held for more than 150 years that the discovery of laws of nature, natural phenomena or principles in the abstract cannot be claimed as such. When they are applied to produce practical applications, new results that are machines, manufactures, compositions or processes, they are patentable subject.

                  As explained multiple times by the Supreme Court, the patent laws exist to promote creation, not to promote discovery of existing phenomena.

                6. From today’s case, in re LF Centennial Limited,

                  Because a side panel does the same [as a spine], the Director suggests, a side panel can be a spine. That suggestion is fallacious: it employs a version of the fallacy of the undistributed middle, under which the two statements, “a dog is a four-legged pet” and “a cat is a four-legged pet,” are asserted to give rise to the inference that a dog is a cat. A common characteristic of a spine and a side panel does not allow a conclusion that one can be the other.

                7. Ned – it is completely parse able given the historical context – folding in your pre-1952 view and the change that Congress wanted the courts to make sure they understood when they (errantly) tried to limit process to merely being a handmaiden of the hard goods categories.

                  I have explained this to you before. You are only “confused” because you want to pretend that the Act of 1952 did not happen. Pay attention son.

                8. Ned asks: “Les, how in the world can invention mean invention or discovery if invention and discovery are two different things?”

                  Clearly Ned, 100(a) means: for the purposes of this title, and to save a lot of typing, paper and the like, where you see the word “invention” you should read it as including “discovery”.

                  In the C++ programing language, and perhaps other object oriented languages, there is a concept called “overloading an operator”. For example, the meaning of a plus sign can be changed depending on the type of operands.

                  35 USC 100 can be thought of as overloading the meaning of invention to include discovery.

                  Its meaning is quite clear. You just don’t like what it means.

                9. Absolutely Les – Ned has over-committed too much of his belief structure into a different “version” of patent law and that is exactly why whenever 35 USC 100 comes up, Ned literally runs away.

                  (This happens not only with 35 USC 100(a), but with 35 USC 100(b) as well.

                  Plain matter of fact here is that his attempts to ignore what actually happened in 1952 is the crux of his inability to get the law correct.

                  On top of that, he does not want to get the law correct, as that would mean that he would have to stop his favorite Windmill chases.

                  He is just TOO “invested” to treat the law in an inte11ectually honest manner.

              2. 12.2.2.1.2.2.2

                Here too – the “argument” has slipped into a conflation zone intermingling eligibility and patentability.

                Those who do not understand (or refuse to understand) the legal history leading up to the Act of 1952 keep on wanting to repeat that past mistake.

              3. 12.2.2.1.2.2.3

                If the result of your new method is a change in the world, and the change is new, non-obvious, and fully described, you canz have a patent.

                That is not the law.

                In your hurry to be flippant (“haz”), you have conflated the legal requirements for a method patent with wanting to apply those legal requirements to a result of a method.

                One can claim a result of a method, but that is distinct from claiming a method.

                As I have reminded Ned, prior to Diehr, perfect cures with the Arrhenius equation had been achieved.

            3. 12.2.2.1.2.3

              Your mistake was to assume that MM uses “logic”. He’s paid to obliterate the patent system, not resort to things like arguments that make sense.

            4. 12.2.2.1.2.4

              Confused, never, ever, apologise to MM. Your confusion is warranted: SCOTUS has, as the British might say, made of a muddle of it, or as the Yanks might say, f–ked up.

              1. 12.2.2.1.2.4.1

                Whilst I put great value on speaking plainly, I also cherish good manners. I had misrepresented MM’s views. For that, I am truly sorry. I would not like it if someone did the same to me. I try to live by the adage that “what is sauce for the goose is sauce for the gander” – no matter how unreasonable or unpleasant the person with whom I am conversing. Someone has to maintain standards less this debate turn into nothing but futile mud-slinging that is to all of our detriment.

                1. That is a fine set of maxims to live by. That said, I do not think you actually had reason to apologize here.

                  I almost never read MM’s posts. I just scroll past them, because one can know from long experience that they exhibit a very high inanity:insight ratio (asymptotically approaching infinity), along with a toxic quantity of invective.

                  However, I made an exception and went back to read the post in question, and I really cannot see what in your post could be fairly said to be a misrepresentation of the words that MM wrote in his. I can appreciate that he preferred his own spin on his views to your spin on the same, but substantively I cannot see that there was any daylight between the ideas that he expressed and the restatement that you made of the same.

                  Because there was no misrepresentation, there was nothing for which to apologize. It is certainly gratifying, however, to see a concern for good manners being expressed on this thread. May your style be imitated in that respect.

                2. Thanks, Greg.

                  I have to admit that I am saddened by MM’s vitriol and incoherence. I was prepared to listen carefully and see if I could learn anything new from a perspective that is clearly very different from my own. However, having seen how MM consistently fails to engage in any constructive debate, I quickly recognised that there were more constructive uses of my time (such as repeatedly banging my head against a brick wall).

                  No doubt MM will not hesitate to attack me again based upon this post, but I shall do my best to ignore him.

                3. As I have pointed out, Confused, what you see from Malcolm has been his staple for over a decade now.

        2. 12.2.2.2

          Confused, I think both the Supreme Court and the Federal Circuit have foreclosed the use of conventional methods for determining whether a law or phenomena of nature exists. I do not think they have foreclosed the practical applications in terms of using phenomena of nature to do something new. In fact, in reading the original cases on this topic, Le Roy v. Tatham and O’Reilly v. Morse, the Court made clear that a practical application of using a principal in the abstract, a law of nature, and natural phenomena, to produce a new result, was patentable.

          1. 12.2.2.2.2

            Ned – if you are correct, then presumably the problem for Sequenom could be solved by merely adding a step to the method in which the information obtained is put to a practical use.

            For example, instead of merely detecting the presence (or absence) of cffDNA, the method could include a step of diagnosing the subject as being pregnant (or not pregnant). That would be doing something new, namely conducting a pregnancy test upon the basis of a marker never before used for such a test.

            It is not hard to think of alternative “final” steps, for example assessing whether the foetus (if present) has any genetic abnormalities.

            There would clearly no “pre-emption” issue once such further method steps are included, right?

            1. 12.2.2.2.2.1

              Adding mental steps is, beyond doubt, the worst possible way to rescue an ineligible claim.

              Let me say it again with added emphasis: Adding mental steps is, beyond doubt, the worst possible way to rescue an ineligible claim.

              Here’s a much better idea: add some specific structural/physical limitations that change the claim from a concept into a practical applicable method that actually works. Examples include: details about the amount of serum that must be taken, details about the probes that are used, details about the reaction conditions and timing, etc. The specification, of course, should also be filed with supporting Examples illustrating the importance of these limitations.

              Is that claim less valuable? Of course it is.

              Is it worthless? Of course it isn’t.

              Is it worth patenting? The answer depends on your “expectations”.

              1. 12.2.2.2.2.1.1

                Here’s a much better idea: add some specific structural/physical limitations>/I>”

                And yet again Malcolm makes it an issue by stating that an optional claim format should be some type of non-optional legal criteria

            2. 12.2.2.2.2.2

              Curious, I will go with MM’s examples. But the knowledge of the DNA of the fetus must be used to do something and that something has to be more than what is traditionally done with such information.

              1. 12.2.2.2.2.2.1

                “More than traditional” is a (purposeful) conflation and has nothing to do with eligibility.

              2. 12.2.2.2.2.2.2

                Ned, I have to confess that I am really disappointed in you. You have moved the goalposts and I don’t even think that you realise that you have done so.

                Let me ask again. There would clearly no “pre-emption” issue once such further method steps are included, right?

                This time, please do not avoid the question by diverting into a discussion of completely different issues, such as whether or not the claimed process contains a “mental” step. We can move on to such issues later, i.e. once you have answered the question about pre-emption.

                1. Since you are new, let me also point out that bringing a conversation to a conclusion with Ned is very difficult for any such conclusion that does not fit Ned’s desired “version” of law as he would have it (colloquially “Ned-IMHO Law”).

                  No amount of politeness or care in taking a conversation in an easy step by step manner will elicit any confirmation from Ned of something that just does not fit how he would want the law to be (entire sections of the Act of 1952 are made to disappear).

                2. Confused: There would clearly no “pre-emption” issue once such further method steps are included, right?

                  Tell everyone what you think “pre-emption” means because there’s nothing “clear” about what you are suggesting.

                  please do not avoid the question by diverting into a discussion of completely different issues, such as whether or not the claimed process contains a “mental” step.

                  LOLOLOLOL

                  You’re the one who proposed adding mental steps to the claim. Or did you forget that already?

                  Wow.

                3. MM – please stay out of my conversation with Ned. I did not ask for your views.

                  If this leaves you with some spare time, I suggest that you spend it reviewing the prior thread – which will reveal that it was yourself and Ned who first discussed the concept of pre-emption. I’m quite happy for Ned to provide an answer upon the basis of his understanding of the meaning of that term (within the context of the relevant SCOTUS decisions).

                4. I didn’t know you were conversing only with Ned. Have at it.

                  (fyi, I’m quite certain I didn’t bring up “pre-emption” on the “prior thread” thread it’s not a particularly useful concept and it’s mostly abused (I might have brought it up to make those two points).

                5. I think Congress might consider amending the laws to allow patenting of such discoveries. But they are not patentable yet.

                  But why are they not patentable? What is the statutory basis for unpatentability here?

                  The claimed process is not a natural product, nor an abstract idea, nor a law of nature. The claimed process—amplifying a paternally inherited nucleic acid from a maternal serum sample—is both new and useful. I am using the word “new” here in the same sense that we both agree that 101-“new” conveys: i.e., not merely that this action had not been on sale in the United States or described in a printed publication, but in the sense that before L&W, nobody had ever before amplified a paternal nucleic acid from a maternal serum sample.

                  Given that this claimed process is both new and useful, and fits within the statutory category of “process,” on what ground are we to conclude that Congress has not already made it patentable?

                6. Whoops, I posted the previous post to depend from the wrong parent. Please see below for the correct context of the above response.

                7. Confused, I think you misunderstood my original point – Tatham and Morse both required that practical application of laws of nature and principles, and the example given in Morse was the heated box of Nielsen in the blast furnace application. Diehr also applied the program computer to continuously update the mold time to produce an improved product. In both cases, the law or phenomena of nature was applied to produce a new or improved result.

                  I do not think this has anything to do with preemption. It has to do with producing a something – creating something.

                  A process for determining whether a phenomenon exists in the particular case does not actually produce a new result in the sense of any of the Supreme Court cases. As was explained in multiple Supreme Court cases, including Myriad, the purpose of the patent laws is to promote creation. It does not exist to promote the discovery of existing phenomena.

                  Now if we are to reverse this in the minds is Supreme Court or in Congress, we are going to have to convince either or both that the purpose of the patent system is includes the promotion of the discovery of existing phenomena.

                8. Sorry Ned, I clearly misunderstood you when you said that “I will go with what MM says below about preemption“. My mistake.

                  However, if I understand you correctly now, you are harking back to a standard of patentability that does not exist in the post-TRIPS world (i.e. the kind of “manner of manufacture” standard that used to prevail before the modern era).

                  In case you are not familiar with TRIPS, let me remind you that Article 27(1) says that “patents shall be available for any inventions, whether products or processes, in all fields of technology, provided that they are new, involve an inventive step and are capable of industrial application“.

                  A new method of diagnosis clearly meets these criteria. However, based upon your logic, no method of diagnosis could ever be patented (unless the method also relies upon a further invention regarding a physical entity, i.e. a manner of manufacture). The inescapable conclusion is that your logic is inconsistent with TRIPS (which, by the way, was an issue that was raised in some of the amici submitted to SCOTUS).

                  So I guess that I will see you at the Dispute Resolution proceedings at the WTO!

                9. Confused, we must have an agreement on the fundamentals here. The fundamentals are that the method itself is conventional and old. There is nothing new about it.

                  What is new is the discovery that fetal DNA exists in maternal plasma so that identification of paternal DNA identifies the fetal DNA.

                  Now I would agree that the discovery of these phenomena of nature are highly useful in diagnosing genetic diseases, and useful in the prevention and cure of diseases. That is why I think Congress might consider amending the laws to allow patenting of such discoveries. But they are not patentable yet.

                  And I hardly think that TRIPS would have been construed to extend to discoveries of phenomena of nature that could be used for any industrial application. That would have been a very odd interpretation at the time that the treaty was signed.

                10. I think Congress might consider amending the laws to allow patenting of such discoveries. But they are not patentable yet.

                  But why are they not patentable? What is the statutory basis for unpatentability here?

                  The claimed process is not a natural product, nor an abstract idea, nor a law of nature. The claimed process—amplifying a paternally inherited nucleic acid from a maternal serum sample—is both new and useful. I am using the word “new” here in the same sense that we both agree that 101-“new” conveys: i.e., not merely that this action had not been on sale in the United States or described in a printed publication, but in the sense that before L&W, nobody had ever before amplified a paternal nucleic acid from a maternal serum sample.

                  Given that this claimed process is both new and useful, and fits within the statutory category of “process,” on what ground are we to conclude that Congress has not already made it patentable?

                11. Greg, I agree with you that the claimed process was literally new and as such the Supreme Court decision could have said so and approved the claims a bar. I actually said this many times in posts over the last few months and years when this case was discussed.

                  I also thought the Myriad case could have been decided in the favor of Myriad using Lourie’s analysis. But it is clear that Supreme Court has put real teeth into the law of nature/phenomena of nature/product of nature exclusions.

                  In another post you talked about spiderwebs and beaver dams. Both are prior inventions of others albeit lesser creatures. An observer of these prior inventions cannot file and obtain a patent on them just because the inventors of these prior inventions themselves could not hire patent attorneys and file and obtain their own patents. (The whole idea that creatures of nature can own things is novel, but they clearly can invent.)

                  I think the principle involved here is that these are not so much products of nature but rather are inventions of others, not the inventions of the applicant.

                12. Ah, got it. I get you.

                  Do I understand you to convey that a correct reading of section 101 would permit Sequenom’s claim to be patented, but that now that the SCotUS has rejiggered 101 in Mayo, legislative action is necessary to restore the status quo ante to make Sequenom’s claims once again patentable? If so, then I agree.

                  That said, this position seems rather in tension with your response to Lawrence above that the CAFC is to blame for allowing the PTO to think that these sorts of claims are patentable. Prior to Mayo these claims really were patentable, so of course the CAFC ought to leave the PTO with this impression. The SCotUS has wrongly construed the statute, and in so doing they changed (not merely clarified) the law. Therefore, the Sequenom patentees should feel rightfully agrieved by the SCotUS, not the CAFC.

                13. Greg, when I made the comment about defying the Supreme Court, I was considering the situation involving business methods. In the case of isolated DNA and this case, I think the claims were literally new if interpreted narrowly. So, you are right, that the scope of the decision here by the Federal Circuit that has now been “affirmed” by the Supreme Court was a little bit unexpected. But it is truly consistent with the direction the Supreme Court was taking in Mayo.

                14. Ned,

                  How much more fundamental can you get beyond the definition section as provided by Congress?

                  Here, this portion of 35 USC 100(b) needs your attention:

                  includes a new use of a known process, machine, manufacture, composition of matter, or material

                  Please speak cogently to this point.

          2. 12.2.2.2.3

            I think both the Supreme Court and the Federal Circuit have foreclosed the use of conventional methods for determining whether a law or phenomena of nature exists.

            I think you are right about that, they have. Why have they? I welcome correction as to anything I am about to say below, but near as I can tell:

            * nothing in the text of §101 compels such a result;
            * nothing in the IP clause of the constitution compels such a result;
            * no public policy consideration urges such a result;
            * no concern related to judicial administrability of standards urges such a result.

            In other words, while I agree that the Court and the CAFC have laid down the very rule you enunciate, I cannot see a single good reason why they have done so, and many reasons why they ought not to have promulgated such a rule.

            Imagine if, instead of filing a patent application, the Sequenom inventors had opened a prenatal diagnosis clinic. A woman whose doctor had recommended amniocentesis would instead go to Drs. Lo & Wainscoat’s clinic. Instead of having a dangerous needle shoved into her abdomen, the mother would undergo a routine phlebotomy procedure, after which her obstetrician would be sent all of the same diagnostic information that the OB had intended to obtain from the amniocentesis.

            The magic of how L&W are obtaining this info would be totally opaque to the patients, so good luck reverse engineering their technique. Of course, it is only possible to keep a secret among a few people, so L&W would have to keep their operation small, and limited to a select clientele willing to pay the sort of fees necessary to make such an operation possible, but fortunately for L&W, the ranks of the fertility-challenged are disproportionately enriched for upper-income social strata, so they would not want for patients willing to pay handsomely to avoid the risk’s presented by amniocentesis so a so-dearly-wished-for pregnancy.

            In other words, they L&W could have made out like bandits if they had kept their discovery as a trade secret. I dare say that such a lesson will quickly become apparent to the next generation of diagnostic innovators, once the fully ramifications of this case sink in among the regulated community. Going forward, diagnostic medicine is going to favor secrecy over disclosure.

            It seems perverse, to my mind, to craft a law that incentivizes secrecy. That is rather the opposite of what the patent law is meant to do. Furthermore, it serves to ensure that what innovation emerges going forward will be confined to the few who are able to afford the hefty fees of the private clinics where the dark arts of diagnosis are allowed to flourish. Anyone who think that are legal system is not yet biased enough in favor of the 1% should surely cheer this recent development in §101 jurisprudence.

            1. 12.2.2.2.3.1

              Greg, we can debate the patent statute elsewhere, but let us just say that in 1793 only new or improved machines, etc., could be patented, and this was independent of whether they were known or used. The Court long considered that laws of nature and principles, could not be patented in the abstract. There needed to be some practical application as in Morse. The matter of a product of nature was clarified in Myriad. Products of nature were declared to be unpatentable compositions because they were not new regardless that they were not previously known.

              Now as to policy, the requirement that patents be limited to practical applications as opposed to the principles in the abstract was thoroughly explained in O’Reilly v. Morse. Assuredly, the policy against patenting products is also clear because no man may own nature.

              So that leaves us with phenomena of nature, such as the fact that fetal DNA exists in maternal plasma. Now this fact is quite valuable. Unless the discoverer is provided adequate protection, he or she may not disclose it to the public but rather may keep it as a trade secret for as long as he is able. Thus, the question should be whether the scope of protection should be sufficient to incentivize disclosure of the discovery to the public. Otherwise, the discovery will be kept secret.

              Now, assuming we went this way, just what is the form of a such a claim:

              1. Fetal DNA exists in maternal plasma?

              1. 12.2.2.2.3.1.1

                The Court long considered that laws of nature and principles, could not be patented in the abstract. There needed to be some practical application as in Morse.

                Right, so far we all agree.

                Products of nature were declared to be unpatentable compositions because… no man may own nature.

                Once again, we are all in agreement still. I will note here, however, that Sequenom was only claiming a practical application of cffDNA, not the naturally occurring DNA itself.

                Unless the discoverer [of cffDNA] is provided adequate protection, he or she may not disclose it to the public… Now, assuming we went this way, just what is the form of a such a claim[?]

                I guess I am still not clear about what was wrong with Sequenom’s actual claim. I think that in a sane world, Sequenom’s actual claims should have been easily upheld against Ariosa’s 101-attack.

              2. 12.2.2.2.3.1.2

                Ned, you disappoint me again.

                You may not have noticed, but the world of commerce (including, in particular, the notion of “industry”) has moved on a little since 1793. For example, we now have this completely new industry called healthcare, which provides products (safe and effective treatments, as well as reliable diagnostics) that no one in the 18th century could have foreseen. Quite rightly, the statute has had to evolve to reflect such changes. Thus, harking back to the olden days is not going to get you anywhere.

                It is also particularly revealing that you answer a question (regarding how public policy should work to encourage innovation by not only incentivising it but also ensuring the public availability of technical information that would otherwise remain secret) by posing another question.

                To answer your question: no, we would not want to claim the discovery. Apart from anything else, this would make it rather difficult to work out who infringes the patent claim. Instead, we would want a patent claim that provides a monopoly of a limited duration (e.g. 20 years from filing) upon commercial exploitation of the innovative methods that have been disclosed (and fully enabled) by the patentee.

                There might be a completely separate debate about whether the breadth of the claims Sequinom’s patent gives rise to doubts over whether other patentability requirements are satisfied. However, please let’s not get things muddled up by dragging concepts from those grounds into an assessment of eligibility.

                With all of this in mind, can we please now have an honest attempt from you to provide a constructive response to the points made so eloquently by Greg? (I was going to make similar points myself, but I see that Greg beat me to it.)

                We are not playing games here or point-scoring. What is ultimately at stake is the kind of world in which we want to live. Underneath it all, you may have some valid criticisms of the patent system in the US (indeed, who doesn’t?). However, you need to be careful not to throw the baby out with the bathwater – so please explain how, under the eligibility standard that you are espousing, the public secures greater long-term benefits.

            2. 12.2.2.2.3.2

              Greg, an excellent analysis and statement of the problem that follows from Alice/Myriad/Mayo.

              I would only add that if you can touch it, it’s not abstract. Seems like something any schoolchild knows. Any result to the contrary – and we’ve seen plenty of those in the wake of Alice, as the courts now pretend that parts of claimed devices aren’t there – is folly.

              1. 12.2.2.2.3.2.1

                Almost as much folly as having people who should know better pretend that these “can touch” things still must be considered “abstract” because of “what they protect” and engage in my coined term of anthropomorphication – trying to make machines have the human capacity of “abstract thinking” – even if only by “proxy.”

                This last point of course would be disabused if a complete dissertation on the mental steps doctrine were to be explicated, with its historical demise illustrated (to help forgo having to relearn the lesson from that only-too-eager-by-some ignoring of reality).

            3. 12.2.2.2.3.3

              Lord have mercy, there are a lot of typos in that post of mine. I suppose that is what comes from trying to type at the same time while I scoop ice cream for my kids. My apologies.

              1. 12.2.2.2.3.3.1

                Also, scooping i-scream with your i-phone voids the warranty.

                Says so right there in the manual.

            4. 12.2.2.2.3.4

              Greg: * no public policy consideration urges such a result;

              The public policy considerations have been spelled out here and elsewhere since the beginning of this case, Greg. They’ve been spelled out in this thread. You read them.

              Nice try, though.

              1. 12.2.2.2.3.4.1

                LOL – The Ends of “Public Policy” must be allowed to happen, no matter what the means, eh Malcolm?

                Maybe some of the Supreme Court’s own words (in the more restrained days of Chakrabarty) might help:

                “What is more important is that we are without competence to entertain these arguments — either to brush them aside as fantasies generated by fear of the unknown or to act on them. The choice we are urged to make is a matter of high policy for resolution within the legislative process after the kind of investigation, examination, and study that legislative bodies can provide and courts cannot. That process involves the balancing of competing values and interests, which, in our democratic system, is the business of elected representatives. Whatever their validity, the contentions now pressed on us should be addressed to the political branches of the Government, the Congress and the Executive, and not to the courts.

                …and of course, this:

                “The unambiguous language of § 101 fairly embraces respondent’s invention. Arguments against patentability under § 101, based on potential hazards that may be generated by genetic research” [or fill in ANY imagined danger that should strike up a Justice’s ‘fancy’], should be addressed to the Congress and the Executive, not to the Judiciary.” (emphasis added)

            5. 12.2.2.2.3.5

              >>The magic of how L&W are obtaining this info would be totally opaque to the patients, so good luck reverse engineering their technique.

              This strikes me as incredibly naive. The ‘magic’ wouldn’ elude a curious PhD, much less a financially motivated team of researchers.

              1. 12.2.2.2.3.5.1

                You could send a string of Ph.D.s into the clinic posed as patients, and the only thing they would see is their own blood being drawn. The testing itself would be done behind closed doors, so the Ph.D.—no matter how curious—would have no opportunity to discover the actual technique. The results that they would receive on the other end would be likewise opaque (“trait X present,” “trait Y absent,” etc.).

                As for a team of motivated researchers, yes, I dare say that given enough time and motivation they could duplicate L&W’s discovery. One of the purposes of the patent laws, however, is to encourage disclosure precisely so that we do not teams of scientists wasting their time reinventing the wheel, so to speak.

                The time of smart scientists is a scarce resource. We should not be comforted to think “if L&W keep it as a trade secret, that is no big deal, because some other smart person will, given enough time and capital, arrive eventually at exactly the same degree of scientific progress that L&W have already achieved, instead of pushing the boundaries of technology forward.” That is an inferior outcome, relative to the outcome that would be achieved with the rule that prevailed before Mayo.

                1. Greg,

                  “Bob” is a Malcolm Echo, and like Malcolm, really does not care about such “trivialities” as your critical line of thought here.

                2. I don’t know Bob from Malcolm, but I do know he’s essentially correct that reverse engineering the test method would be trivial once known the test was being run on mom’s blood.

                3. Nonsense. A PhD would see a black box process where maternal blood is taken, and fetal DNA information is output. Those circumstances would suggest fetal DNA in the maternal blood sample. The remainder of the method is obvious with that information, which is why the case is problematic. Say what you will about the problems with current 101 jurisprudence, this technique would not have been tenable as a trade secret.

                4. Fair enough. I am not a very devious person by nature, so it would not occur to me to lay a false trail in the clinic, but clearly what you say is correct. The lesson that the clever inventor should learn from Sequenom is not only to keep the diagnostic method a trade secret, but also to include a lot of medically useless misdirection in the actual clinic procedures. Instead of merely drawing blood, they should also collect hair, saliva, and urine samples. That way, the would-be reverse engineer will have a lot of false leads to follow up before they crack the secret.

                  As I said above, this will not keep the secret forever. Given enough time and effort, the motivated team will manage to reinvent L&W’s invention. Meanwhile, a lot of patients will undergo slightly more inconvenience than is really medically necessary, and slightly more medical waste will be generated than is really useful.

                  This is all a rather perverse outcome to incentivize. Or at least it seems perverse to me, but then I am not on the Supreme Court, so my own views matter rather little.

    3. 12.3

      Confused, I will go with what MM says below about preemption. I think that is Supreme Court’s concern here. If one discovers a phenomena and then claims it with the only known technique for observing it (as opposed to using it) then the claims will be held ineligible.

      However your question about “practical application” does suggest there seems to be some confusion here. I think what the Supreme Court has in mind in this regard, and the Federal Circuit seems to understand it this way as well, is that a practical application involves the use of the phenomena as opposed to the phenomena itself or its detection.

      1. 12.3.1

        If one discovers a phenomena and then claims it with the only known technique for observing it (as opposed to using it) then the claims will be held ineligible. [emphasis added]

        I do not think that the “only known” part makes a bit of difference. PCR is not the only technique you could use to detect the cffDNA of Sequenom’s method. FISH would also serve. Sequenom’s claims do not read on FISH (Sequenom requires “amplifying”). The fact that there was another detection technique that one could use that is not covered by Sequenom’s claims did not save Sequenom.

        1. 12.3.1.1

          Greg, thanks.

          From this, I will assume that any conventional technique is not enough.

          1. 12.3.1.1.1

            I think you are correct. I do not think that this is what the law should be, but I think that this is an objectively correct statement of what the law now is.

    4. 12.4

      I had some misgivings on how the Mayo test excises the physical steps of the claimed process to isolate the natural phenomenon. After all, claims must be read as a whole, right? Even if we agree that the process shouldn’t be patented because the actual process steps are old, novelty is a requirement typically raised under 102, not 101, since even an old technique for extracting DNA has utility. But after reading into this more, I have come to agree with the conclusion because section 101 does require an invention to be “new and useful” and therefore, novelty is also a 101 requirement. This 101 novelty needs to be applied very conservatively though, since a 101 finding essentially precludes analysis under 102/103. In my opinion, the Mayo rule is not specific enough on this point and we need to identify and clarify the bounds of 101 novelty. With regards to this case, this boundary should be limited by what the applicant admits as prior art so that there can be no argument against finding a process to be old and known. That’s the only way we can accept the separation of the process steps from the law of nature. It then makes perfect sense that the only new thing being claimed is merely an inescapable law of nature added as commentary to the recitation of an old process. The claims therefore are merely, and admittedly, attempting to repatent an old process, since an inescapable law of nature cannot materially distinguish the process steps. This is in agreement with the well established 102/103 principle that newly observed benefits of an old invention cannot be the basis for patentability (MPEP 2112). With this limit, if establishing a lack of novelty necessitates citation of prior art under 102/103, we shouldn’t cling to 101 ineligibilty.

      1. 12.4.1

        Ed – I would suggest that the fantastically contorted nature of the “test” that you propose is evidence enough that there are serious problems with (the interpretation of) the case law that prompted you to propose that test.

      2. 12.4.2

        The “new” in 101 was NOT meant as something outside of 102/103.

        There was a recent post from the congressional record relating to the Act of 1952 that should put that canard to rest once and for all.

        1. 12.4.2.1

          anon, I saw that post. It did not discuss what new meant in 1793 when it was first introduced. As quoted in Flook, the historical idea was that products of nature, laws of nature, etc., could not be patented because they were not new, even though not previously known. Flook quote well known treatises from the 1800’s.

          Since ’52, Myriad affirmed that products of nature were not new compositions. That is now the law, and it is consistent with the understanding prior to ’52, and is consistent with Jefferson’s intent in 1793.

          1. 12.4.2.1.1

            Does not have to Ned / the 1952 Act is the controlling Act and you just don’t get to change what Congress said just because you may like the older version.

            Yes, that wrecks your little made-up view (over-played as it was) on that word way back when, but since that was only “Ned’s IMHO Law” anyway, such is not great loss.

            1. 12.4.2.1.1.1

              (That you appear to want to glom onto a Version of reading the Court pronouncement as if 1952 never happened is a bug – not a feature)

              It is also part of your inability to recognize how a single paragraph (pre-1952) was so very much changed into their own sections of law

              1. 12.4.2.1.1.1.1

                anon, if you believe that the Act of ’52 changed the law (recall all that discussion we had about 101 not be a defense to validity because it was not listed among the defenses in the new 282) then someone has to stand up an make this case. Truly though, I can predict that the Supreme Court is never going to accept that Congress intended a radical departure without some discussion of the Supreme Court cases involved and what they were changing.

                1. There was discussion – see the 1962 write up by someone with perhaps the most knowledgeable view.

      3. 12.4.3

        Ed, I think the newness of 101 relates more to discoveries of products, laws and phenomena of nature. These cannot be patented even though previously unknown because they are not new.

        As to the other steps/elements, if they too are as well old, then there is no patentable novelty in the claim. Think printed matter doctrine and how that operates in prosecution. The novelty cannot lie solely in the ineligible subject matter unless that is used functionally to produce a new or improved physical result. Example, Diehr.

          1. 12.4.3.1.1

            …without properly incorporating the exceptions to that judicial doctrine…?

            ;-)

        1. 12.4.3.2

          I think the newness of 101 relates more to discoveries of products, laws and phenomena of nature. These cannot be patented even though previously unknown because they are not new.

          For what little it is worth, Ned, I agree with this 100%. I get the sense, however, that you & I are distinctly in the minority in holding this understanding. Whenever I express this view to colleagues, they are invariably certain that this is not correct (although only one has ever cited me a case to back up his position, and it was not any sort of controlling precedent).

          1. 12.4.3.2.1

            In the minority – as you should be, given the actual words in the Congressional record and all.

            I will have to dig out that quote (unless Ned has it handy)

            1. 12.4.3.2.1.1

              Like the late Justice Scalia, I am rather skeptical of the value of the Congressional record in construing statutes. The words of § 101 seem much more important than the words of this or that Congress member. Indeed, recourse to the legislative history is the ultimate “nose of wax,” so it is more than a little ironic to see you jumping on the legislative history bandwagon.

              1. 12.4.3.2.1.1.1

                I would HAPPILY go by the words of Congress.

                I offer the legislative record to defuse the attempt at obscuring those simple and direct words of Congress.

                Your noting of my “jumping on the bandwagon” is misplaced.

                1. Great, I am glad to see we are all on the same page.

                  Why, then, did you bring up the Congressional record?

                2. Anon, you do acknowledge that others have quoted the legislative record here regarding 101 and the attempt by some in Congress to overrule Funk Brothers. Congress rebuffed that attempt and preserve the language of the prior statutes that have remained such since 1793.

                  So if you are going to look for a legislative history concerning the meaning of the words in 101, is going to have to actually go back to legislative history in 1793. Believe that history shows that Jefferson made the first draft. We also know that what is now 101 was changed by dropping engine, dropping discover, adding new and adding composition. (Discover was added back in in the patent act of 1836.) But clearly the edits to 101 suggest that the requirement for new, which was added to the statute even though not known and used remained and additional requirement, was intended to exclude, I believe pre-existing compositions – products of nature. There can be no other reasonable explanation.

                  It would also apply, I believe the requirement that the Art be new as well – thereby excluding laws of nature and phenomena of nature even though they are discovered and not previously known.

                3. Ned,

                  Your version on the “rebuff” is in error – you also have to consider the sum total changes involved in the entire pre-1952 single paragraph into each of the new sections of law (as well as the added definitions in 35 USC 100).

                  We both know that you should know better than to attempt a far-too-simple “word for word” comparison on only a portion of that pre-1952 paragraph. You are attempting a “sound byte” highly selective (and TOO selective) parse.

                  For example, that conversation you mention centered as well on the definition section – a section that you have refused to even try to give credit too.

          2. 12.4.3.2.2

            Flook at 594, n. 15

            First, respondent incorrectly assumes that if a process application implements a principle in some specific fashion, it automatically falls within the patentable subject matter of § 101 and the substantive patentability of the particular process can then be determined by the conditions of §§ 102 and 103. This assumption is based on respondent’s narrow reading of Benson, and is as untenable in the context of § 101 as it is in the context of that case. It would make the determination of patentable subject matter depend simply on the draftsman’s art and would ill serve the principles underlying the prohibition against patents for “ideas” or phenomena of nature. 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] The obligation to determine what type of discovery is sought to be patented must precede the determination of whether that discovery is, in fact, new or obvious.

            n.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).

            1. 12.4.3.2.2.1

              Patentable subject matter must be new (novel); not merely heretofore unknown.

              Hey, I do not know that I had ever picked up on that quote. That is very good. I think that rather conclusively proves that you and I are correct. Thanks for citing that to me.

            2. 12.4.3.2.2.2

              Flook – cabined by Diehr, see Bilski.

              (this of course is part of the incongruity of profanity from the Supreme Court that Ned refuses to recognize)

              1. 12.4.3.2.2.2.1

                How is your observation at all relevant to the point that Ned is making? There is nothing that Ned said above that is any less valid for Flook having been cabined by Diehr.

                1. If you want merely to believe as much privately in your own mind, no one will try to stop you. If you intend to establish the above as a true assertion, however, you actually have to make your case. Merely waving the word “overbroad” around will not achieve that end. It is possible for Flook to be “overbroad” along a million different dimensions. What is the evidence that it was “overbroad” along the one dimension that is relevant to Ned’s (and my) point?

                  I carry no brief for Flook. I think that it was wrongly decided, and I wish that Diehr had not merely “cabined” Flook, but frankly over-ruled it.

                  Still and all, even a case that holds for the wrong outcome can enunciate a legally correct premise on the way to its erroneous outcome. What is the evidence that this particular footnote in Flook is not legally correct? Or, to put the question in another way, where in Diehr is this particular footnote addressed and cabined?

                2. Greg – you have to recall the politics of the day – the Court could not flat out “overrule” because of the politics of the Justices involved.

                  The fact that such politics even plays such a prominent role SHOULD be a tip-off to one and all.

                3. Sure. I am not blaming Justice Rehnquist. He had to get to five votes, and I guess that he could not get there if he came out in the open as over-ruling Flook. Still and all, I think that Justice Stevens got Flook wrong and that Judge Baldwin applied the legally (or at least statutorily) correct analysis In re Flook, 559 F.2d 21 (C.C.P.A. 1977).

          3. 12.4.3.2.3

            Myriad at 2116,

            We have “long held that this provision contains an important implicit exception[:] Laws of nature, natural phenomena, and abstract ideas are not patentable.” … This would be at odds with the very point of patents, which exist to promote creation. Diamond v. Chakrabarty, 447 U.S. 303, 309, 100 S.Ct. 2204, 65 L.Ed.2d 144 (1980) (Products of nature are not created, and “`manifestations… of nature [are] free to all men and reserved exclusively to none'”).

            … As we have recognized before, patent protection strikes a delicate balance between creating “incentives that lead to creation, invention, and discovery” and “imped[ing] the flow of information that might permit, indeed spur, invention.” Id., at ___, 132 S.Ct., at 1305. We must apply this well-established standard to determine whether Myriad’s patents claim any “new and useful … composition of matter,” § 101, or instead claim naturally occurring phenomena.

            1. 12.4.3.2.3.1

              It is undisputed that Myriad did not create or alter any of the genetic information encoded in the BRCA1 and BRCA2 genes.

              1. 12.4.3.2.3.1.1

                Sure. As it happens, I think that the SCotUS got Myriad wrong and Judge Lourie got it right: Myriad was not claiming the natural product; Myriad was only claiming man-made composition of matter. While it is true that Myriad did not purport to alter any of the genetic information in its claimed isolates, the statute does speak of information content, so this consideration is simply irrelevant. The statute speaks of “composition of matter,” and considered as a composition of matter, Myriad’s isolates differ from their naturally occurring counsins in lacking phosphodiesters at the 5′ and 3′ ends.

                Still and all, the part of Myriad that you cite is legally correct. Natural products are not eligible subject matter under § 101 because they are not “new.”

                1. Greg, I agree with you that if the claim was interpreted to cover the isolated product itself, that product was structurally different than the product occurring in nature. It was literally new and should have been patentable as such. Thus I thought myriad was going to come out affirming the patentability of the claims and supporting Lourie’s view. I was surprised.

        2. 12.4.3.3

          Classic and multiple Ned-being-wrong here.

          Clench tight those eyes, stick those fingers deep into your ears and chant your Windmill Chase chant over and over and over, regardless of the (repeated) points that show just how wrong you are.

          Yay ec(h)osystem!

      4. 12.4.4

        DISCOVERIES ARE PATENT ELIGIBLE (See the U.S. Constitution, 35 USC 101 and 35 USC 100(a).

        There is NOTHING TO DISCOVER BUT laws of and products of nature.

        Therefore….

        1. 12.4.4.1

          Les, except that the Supreme Court has often ruled that discoveries of laws of nature and principles cannot be claimed in the abstract, but only in application.

          That leaves products of nature. That was clarified in Myriad.

          1. 12.4.4.1.1

            You do not seem to be able to grasp the notion of “broken scoreboard.”

            Nor the fact that patent law is statutory law and for which the authority to write such law is granted – by the Constitution – to ONLY the legislative branch.

            Are you ever going to tell me what your attorney oath states there Ned?

          2. 12.4.4.1.2

            Yes Ned. I am well aware that to justify a desired result a court declared that the law says things that it does not say and that said declaration has tainted rulings ever since.

            The King has no clothes, is all.

            Just as an aside Ned. Is a spider web a product of nature? Is a beaver’s dam a product of nature?

            1. 12.4.4.1.2.1

              Just as an aside Ned. Is a spider web a product of nature? Is a beaver’s dam a product of nature?

              Ned can speak for himself, of course, but if you will pardon my butting in, I would answer both questions in the affirmative. Neither are “new” (even back in the day when either could have qualified as “novel” under 102). That is what makes a “product of nature” unpatentable under 101, so that means that for all intents and purposes, spider webs and beaver dams are products of nature.

                1. Ned tends to disappear whenever the required thinking level hits an inconvenient point for his Wimdmill chases.

              1. 12.4.4.1.2.1.2

                Greg, I had a nice response to your post here that was hung up in the filter.

  6. 11

    Paul Cole: You have only to look at the names on many of the amicus briefs to realize the rare assembly of skill and knowledge with which the decision-making process was supported.

    In the history of the legal profession, has there ever been a pack of elitist, entitled whiners remotely as self-absorbed as the contemporary patent maximalists?

    I kinda have to doubt it.

    “You only have to look at the names.” Thanks for the laughs, Paul.

    1. 11.1

      On the whole, I address the law and facts in detail and avoid mere personal abuse.

      The information content of the previous post is precisely zero, which is why it is wholly worthless.

      In 2010 there was an opportunity to contribute examples to the mew KSR guidelines that the USPTO was preparing. Then director Kappos was committed to the project. I made a posting on this blog asking for the collective help of readers in identifying worthwhile examples that would help the drafting process. Very little useful resulted, but the kind of worthless comment that we have just seen from MM abounded.

      1. 11.1.1

        I will correct the spelling of mew to new in my last posting.

        It also gives me the opportunity to characterise the MM comment: WASTE OF SPACE!

        1. 11.1.1.1

          LOL Paul – are you surprised?

          That has been the Malcolm signature for a full decade now.

          Happy Decade of Decadence – yay ecosystem!

      2. 11.1.2

        There’s no “personal” abuse in my comment, Paul.

        Let me put it another way: this loss should serve as another reminder that the age of “looking at names” to determine whether a brief is “skillfully” or “knowledgeably” prepared has mostly passed, at least in the patent sphere.

        Many of us came to appreciate the hollowness of “expert opinion” in this area when Prometheus v. Mayo came to town. I’m happy to recap that history-making episode for you in case you’ve forgotten how it went down. It’s useful to do that every so often because many of the same “experts” are still out there pretending that nobody noticed, and still habitually failing to address their errors that were pointed out to them in real time.

        You know what the major problem with these junky claims was because I told you what the major problem was.

        Question for you: How many of these amici addressed that problem head on with compelling counter-arguments?

        1. 11.1.2.1

          Malcolm,

          It is more than certain that you would not be able to recognize what a compelling counter-argument would be.

          The moment ANY THING appears to be outside of your self-appointed field of rye desired ends, the only thing you can do is v0mit forth your typical ad hominem and twisted game playing (including your favorite standby of AccuseOthersOfThatWhichMalcomDoes).

          1. 11.1.2.1.1

            “anon” you would not be able to recognize what a compelling counter-argument would be

            Perhaps it’s time to schedule another session of Let Me Make Your Argument For You.

            That’s always fun.

  7. 10

    On a completely unrelated note, Harvard University is suing Micron and GlobalFoundaries for infringing US6969539, US7507848, and US8334016.

    link to harvard.edu

    While Dr. Gordon is a well-respected scientist in the fields of ALD/CVD, it seems that very-relevant US6238734 was not cited in any of those office actions, and, if the material is disclosed in the US priority document, may well be prior art, as it discloses most of the same subject matter (although the exact claimed compounds are not disclosed, in my opinion, there are good secondary references that teach the equivalence of the claimed compounds and the disclosed compounds of ‘734, or reasons for modifying the ligands of ‘734 to result in the claimed methylethyl ligand)

          1. 10.1.1.1.1

            You are correct. IDS after allowance of first patent, though.

            Doubtful examiners even considered documents in IDS, though.

            1. 10.1.1.1.1.1

              No, the IDS was posted on March 28, 2005, after the NON- Final Office Action of September 1, 2004, but BEFORE the Notice of Allowance of April 12, 2005. You may have been confused by the copy of the IDS initialed by the Examiner (indicating that the documents were considered) and posted on June 24, 2005.

  8. 9

    As someone who is not a patent lawyer, but did nevertheless follow this case (as I had followed Bilski, Mayo, Myriad, Alice and a whole lot of others), it seemed inevitable to me that the Supreme Court would deny cert.

    What puzzles me is why anyone would expect that the petition and the accompanying amicus briefs would persuade the members of the Supreme Court to take on the case. After all, taking into account the comments of the Justices at oral argument in previous patent cases, and the resultant opinions authored by them, one would certainly not expect them to agree with the proposition that the discovery or verification of a purely natural phenomenon, such as the presence of paternally-inheritied cffDNA in blood serum, should entitle the discoverers to monopolies based on such broad patent claims. And, attempting to read the petition again, which is not easy given the emotive, passionate, dogmatic and prolix style of the petitioner’s brief, and taking into account where the Justices would be coming from, just about every paragraph of argument or analysis presented is likely to evoke fundamental disagreement and rejection on the part of the members of the Supreme Court, who are surely the audience whom the briefs should be seeking to convince. And on reading many if not most of the amicus briefs in support of the petitioner, the almost inevitable effect must surely be to confirm members of the Supreme Court that the case was properly decided in the CAFC according to their Alice/Mayo framework.

    I would suggest that maybe the Justices would be more disposed to respect the opinion of Judge Dyk, in his concurrence in the denial of the en banc petition. But it seems to me that what Judge Dyk is saying to the Supreme Court is this: “One of these days a case implicating a relatively routine, but narrowly and specifically claimed, application of a discovery of a law of nature will come to you, where it would appropriate, and indeed important, that you should grant certiorari. But not this case.”

    So, summing up, what seems odd to me is this: one would surely expect that lawyers drafting briefs, particularly briefs for the Supreme Court, would take account of the intellectual temper and natural instincts of the Justices whom they need to convince, and craft their arguments to set out an account of previous cases that would resonate with the Justices, and then seek to convince the Justices that reversing the judgment below is, if not implied by, at least consistent with, the basic principles behind the patent-eligibility cases decided by the Court. Maybe this was not possible on the facts of this case. But it certainly seems that the petitioner and amici did not find, and maybe made no real attempt to seek, a manner of presenting their case for certiorari that would engage the Justices and persuade them to grant certiorari.

    1. 9.1

      Mr. distant, this is an interesting perspective. The petition was written by Tom Goldstein, among the very top in his profession; he should know how to address the Supreme Court, he was once a clerk, and he is the most successful petition writer in the business.

      Paul Cole over at Gene’s place observed that he thought the petition and the amici were all well done.

      But what I hear you to stay is that the petition and the amici simply do not get it. The discovery of a phenomena of nature is not patentable; and conventional techniques to observe the phenomena is not enough.

      Of course, I was of the view that the claims in this case should have been found eligible because the method described was literally new. But my view is influenced by the words of the statute, unencumbered by policy. The policy seems to require invention in all cases, not simply discovery, so that the claimed subject matter must involve some nonobvious improvement in prior techniques not simply that the claim subject matter is novel because of the presence in the claim of the phenomena of nature.

      1. 9.1.1

        “Mr. distant, this is an interesting perspective. ”

        Heh, see what you did there.

      2. 9.1.2

        To follow up on a specific point, you use the word “nonobvious” in your last sentence.

        Consider this. Justice Thomas’s opinion for the Court in Alice can be viewed here:

        link to supremecourt.gov

        As a PDF file, one can search for words in the text. The following words are completely absent from the text:

        novel, novelty, obvious, nonobvious.

        If you search for “new” you will find “new and useful” embedded in several standard quotations, you will find “both new and previously stored data”, and you will find “Judge Newman”.

        In addition to “laws of nature”, “natural phenomena” and “abstract ideas”, claim “elements” that fail to supply “inventive concepts” are described with adjectives such as “generic”, “conventional” and “routine”. Checking back, one finds “conventional” used several times in Flook. But it seems that the Supreme Court have left the door open for adjectives like “generic”, “conventional” and “routine” to be construed narrowly so as to allow “inventive concepts” to be associated with claim “elements” and “combinations of elements” (see Chen on BASCOM) that may turn out to be anticipated under 102 or obvious under 103.

        Thus the Supreme Court appear to have adopted their own version of the “Three Doors”, essentially replacing Judge Rich’s wide open barn door with a much narrower and elaborate door, with a bouncer on hand turning away those seeking admission who cannot present an invitation in the form of an “inventive concept” lying outside the “judicial exceptions” developed through case law. If claim elements are routine and conventional, this should surely be apparent on the face of the specification, in the description of the state of the art, so that, where a 101 analysis is proposed by a potential or alleged infringer, the matter will typically be dealt with by summary judgment, either before or after claim construction, as appropriate. Traditional product and industrial process claims would typically be waved through, to be subject to analysis under the more stringent “novelty” and “nonobviousness” analysis of 102 and 103.

        But if just “amplification” of “paternally-inherited cffDNA” is claimed, then such a claim element cannot avoid being deemed to be “conventional”, given the state of the art. And you would need to get past 101 to reach 102 and argue that the subject matter, considered as a whole, was not anticipated under 103 by a prior publication etc. and was non-obvious under 103, it must be “patentable”, because doing so make the 101 analysis a dead letter.

        1. 9.1.2.1

          Possible specific instance?

          In the Diehr and Lutton patent, the elements of continuously measuring the temperature etc. may have been anticipated by Davis and Gould, or obvious over Davis and Gould, but, arguably, this, in itself, would not make those elements outside the computational step “generic” or “conventional”.

          1. 9.1.2.1.1

            Distant, in Diehr, I think the claim passed because the programmed computer was used to modify molding time on a continuous basis thereby improving the resultant molded product. This is an example, I think, of an application of a principle in the abstract, just as the heated box of Nielson was a application in Morse.

            When the process only produces information that may be used for something useful, we have Mayo. Here the process itself must be inventive.

            1. 9.1.2.1.1.1

              Except Ned – as has been pointed out, you cure rubber only once and KNOWN perfect cures had been obtained previously.

            2. 9.1.2.1.1.2

              the process…

              being he claim as a whole, right?

              Or do you mean the “point of novelty” of the software…?

              ;-)

        2. 9.1.2.2

          Distant, assuming arguendo that the discovery of a phenomena of nature was eligible subject matter, could one claim

          1. Mother’s plasma contains fetal DNA.
          2. The fact of claim 1, further comprising the fact that fetal DNA comprises paternal DNA by which the fetal DNA might be identified?

          1. 9.1.2.2.1

            Your “by which” appears to be an application of the facts….

            (did you mean to extend your “straw-hypo” to that extent?)

    2. 9.2

      distant: it certainly seems that the petitioner and amici did not find, and maybe made no real attempt to seek, a manner of presenting their case for certiorari that would engage the Justices and persuade them to grant certiorari./i>

      As has been observed for years, there is a certain class of patent attorney for whom the sense of entitlement to a particular kind of patent overwhelms all other considerations.

      That’s why we keep hearing that software simply must be eligible for patenting (why? who the heck cares “why”!) and discoveries of natural phenomenon with medical diagnostic relevance simply must be eligible for patenting (think of the children! or something).

      As every scientifically literate and intellectually honest person knows perfectly well, the facts of this case were terrible for the applicants and the only reason these junk claims got out of the patent office at all was because of bad lawyering by everyone involved. But we’re supposed to ignore all that, somehow, and at the same time we’re supposed to genuflect before the proposition that junk claims like these — claims that should never have been granted — are somehow necessary to promote progress. It makes no sense at all and you don’t need to be a Supreme Court Justice to see that it makes no sense at all. One does need to take a giant step back from the patent kool-aid dispenser, however.

    3. 9.3

      Distant Perspective,

      So very “hush child, do not tell the emperor that he is wearing no clothes.”

  9. 8

    Well I was wrong again. I thought the patentee would prevail in Myriad (even though I bet with Malcolm that the patentee would fail). I thought the Federal Circuit would be reversed here.

    The bottom line seems to be this: if one discovers an existing composition or a fact of nature, one must do more than simply claim known techniques for isolating the composition or observing the fact.

  10. 7

    As expected, the people who are always s00per d00per concerned that we’re not granting enough patents to funnel enough money into the pockets of The Most Important People Ever are having a bit of trouble accepting what has just happened.

    Here’s my question for those people: assuming that you don’t have a problem with keeping some patents on “detect this newly discovered phenomenon using old t0 0ls that were designed for detecting such phenomenon” out of the system, how do you describe generally the class of such patents that you want to grant? Obviously the answer can’t be “the important ones” or “the ones that give the most jobs to the most patent attorneys.”

    So which “innovative” uses of old detection methods are going to be eligible? Remember: “all of them” is a non-starter.

    It’s a great question to ponder. After all, if you’re contemplating a statutory fix, you’re going to need come up with a statute. And it has to be a statute that most people like. Note the term “people.” It includes people other than “investors” and “patent attorneys.”

    I realize these types of questions are extremely difficult ones to answer for many of the patent maximalists out there. If you find it difficult, perhaps consider simply not even trying to attempt a response. Good luck!

    1. 7.1

      “After all, if you’re contemplating a statutory fix, you’re going to need come up with a statute”

      “inventions comprising information consumed by human beings are ineligible for United States patents. Inventions comprising information consumed by non-human actors, and otherwise meeting the requirements of patentability, may be patented”.

       Backgound Here

      1. 7.1.1

        “Comprising” is a term of art that you misuse in order to advance your fantasies, Mr. Snyder.

        As you use that term, ALL inventions have a nexus with the type of utility that is “information that is consumed by human beings.”

        That is an inherent aspect of the utility portion of 101.

        1. 7.1.1.1

          Its an easy intellectual excercise to construe the result of a method. Some methods result in a non abstract change to the world, thus the result does not comprise of information.

          Simple, feasable, durable, flexible.

            1. 7.1.1.1.1.1

              As usual, “what you stated” is unknowable to anyone but you.

              I’ll try again:

              You say all inventions derive their utility from information, or are made of information. I say that my rule is 1) limited to methods (a much smaller universe of inventions) and limited to methods which result in nothing but information, rather than any change in the world (e.g. a new use of an old drug, where the “invention” is the information that the drug works, but the the result is a change to a metabolic chain.

              In this case, the result of the invention is information about fetal abnormalities. The invention does not correct them, or alter them in any way; that is for the consumer to do, as he or she sees fit.

              Go ahead, squeeze that into protons and neutrons, or something.

              1. 7.1.1.1.1.1.1

                the result of the invention is information about fetal abnormalities

                Just for the record, you can practice these claims and not learn a darn thing about “fetal abormalities.”

                1. I could restate that by saying the economic result of the invention is information about fetal abnormalities, derived from know where to look for them.

                  You just identified another reason that human consumption of information should be patent ineligible; the economic value of information is (i.e. the economic value of the infringement) is inherently vastly variable case to case compared to inventions that make direct changes to the world- which makes fair adjudication a human impossibility, as you have ably shown over the years.

              2. 7.1.1.1.1.1.2

                No, Mr. Snyder, I do NOT say: “all inventions derive their utility from information, or are made of information.

                I do say that inherent in the concept of utility is utility for the human mind.

                This can include all types of items, and there is NO artificial distinction as you are attempting to insert into patent law.

                1. No, anon, you did not say “that inherent in the concept of utility is utility for the human mind”.

                  You said, precisely, “ALL inventions have a nexus with the type of utility that is [“information that is consumed by human beings].”

                  In other words, the meaning of information is the same in all inventions.

                  I think you are wrong, and I don’t think very many people would agree with you either.

                2. Having a nexus does NOT mean “the meaning of information is the same in all inventions.

                  Where you are getting these things is more than a bit of a mystery.

  11. 6

    Currently, there are 18 posts (19 with mine), of which 8 (or 44%) are from MM. Why not just rename this “The MM sounding board”?

    1. 6.1

      It is far less important the amount of posts and far more important the fact that practically ALL of those posts are nothing but noise with no signal.

  12. 5

    Well, this really is a blow. I cannot think of a case that has made it as far as Ariosa has made it with a better set of facts for the patentee. If the Court was not willing to take this case, I cannot imagine what other case they would be willing to use as a vehicle to temper the CAFC’s excesses in implementing Mayo/Alice. Seems like we are stuck with this state of affairs until the Congress can be moved to revise the statute and put things back on track.

    1. 5.1

      Greg: If the Court was not willing to take this case, I cannot imagine what other case they would be willing to use as a vehicle to temper the CAFC’s excesses in implementing Mayo/Alice.

      Take a deep breath, Chicken Little.

    2. 5.2

      Here’s a couple really easy cases to “imagine”, Greg. Please share these with your clients and please tell them that I taught you about them after you expressed an inability to come up with anything yourself (that’s the honest thing to do).

      1) Inventor synthesizes a new non-0bvious chemical compound. The compound is claimed in objective structural terms distinguishing it from prior art compounds. The unexpected and beneficial properties of the new compound are described in the specification. The Federal Circuit holds that the compound is ineligible because “Under Mayo, the patentee merely discovered the phenomenon that the recited chemicals could be joined together.” The case goes up to the Supreme Court and it’s mercilessly smacked down in a unanimous decision.

      2) Inventor builds a new non-obvious machine for analyzing stock fluctuations. The machine is described in objective structural terms distinguishing it from prior art machines. The inventor provides examples demonstrating the utility of the machine. The Federal Circuit holds that “The machine is ineligible under Alice because its a computer that is used to perform an abstraction.” The case goes up to the Supreme Court and it’s mercilessly smacked down in a unanimous decision.

      This really isn’t a terribly difficult exercise.

      The patent system just got a little healthier. We should all be happy.

      1. 5.2.1

        …and once again Malcolm makes an issue of his pet canard of one optional claim format (objective structural terms) as somehow NOT being an optional claim format…

        Don’t you get tired of such misrepresentations?

        1. 5.2.1.1

          It surely must be frustrating to be so consistently wrong about everything, “anon.”

          I really do feel sorry for you. Oh wait … that’s just a hangnail.

          1. 5.2.1.1.1

            My point is not wrong, so your reply is, well, just wrong and just more of that mindless noise that is your speciality.

            You do realize that one option of claim format is – and this is a tough concept (for you) – an option.

              1. 5.2.1.1.1.1.1

                If you don’t know what I am talking about then why are you commenting so often on what you don’t know..?

                (as if that is somehow different than your typical modus operandi…)

                Of course, the truth is different than what you post here.

                1. If you don’t know what I am talking about then why are you commenting so often on what you don’t know..?

                  Deep, deep stuff.

                  Tune in next time when “anon” starts talking about m0m’s wearing combat boots.

                2. …and you want to talk about others kicking up dust….?

                  I see the old standby meme of AccuseOthersOfThatWhichMalcolmDoes is still your go-to short script item.

    3. 5.3

      Well, the CAFC’s jurisprudence on Alice is getting riper and riper. DDR was settled, so that can’t be appealed. Enfish seems like a possible case but I expect a couple more egregious decisions to pass before we see action from above. And it won’t happen until there are an odd number of Supremes, either from another death or—a remote possibility—a new confirmation.

      So the excesses and blunders of the CAFC will eventually be corrected. But I wouldn’t hold my breath.

      Ariosa is obviously correct so that would be a waste of certiorari. The obviously illiterate ones like Enfish will probably stand a while longer, too.

      1. 5.3.1

        Ariosa is obviously correct so that would be a waste of certiorari.

        Fair enough, we are each entitled to our opinions. I could not disagree more, however. I agree with Judges Lourie and Linn that Ariosa is living proof of how badly Mayo has ruined §101 jurisprudence.

        I had hoped that Ariosa would be to Mayo what Diehr was to Flook. I am very disappointed in this outcome.

        1. 5.3.1.1

          I had hoped that Ariosa would be to Mayo what Diehr was to Flook.

          Diehr was a poorly written decision based on bad facts. If I were you, I’d be hoping for something better than that.

          That said, I can tell you with pretty high confidence what you’re actually going to get.

        1. 5.3.2.1

          No, DDR was settled. I recall that the CAFC opinion that found the patent eligible also reduced total damages below what a serious certiorari petition costs.

          It might not even have had an en banc petition.

          1. 5.3.2.1.1

            Thanks. While I personally agree with DDR, I would like to see what the Supreme Court would say about it.

    4. 5.4

      I cannot imagine what other case they would be willing to use as a vehicle to temper the CAFC’s excesses in implementing Mayo/Alice.

      You’re kind of assuming there is a problem here. The invention was nothing more than the disclosure of where to look for something naturally occurring. Of all the cases on this board I’ve only seen one where I would have come down in favor of eligibility when none was found :/

      1. 5.4.1

        You’re kind of assuming there is a problem here.

        Correct. My response to this decision is predicated on the premise—which I share with Judges Lourie and Linn—that Ariosa is inconsistent with Congress’ intent as expressed in §101. Those who do not share this premise have no reason to be dismayed by today’s denial of cert.

        The invention was nothing more than the disclosure of where to look for something naturally occurring.

        It is hard to know how to respond to something like this. You can pull this trick for absolutely any patent invention. Kary Mullis’ invention was “nothing more” than the disclosure of how to use naturally occurring enzymes to replicate a naturally occurring process in a lab. Still and all, it revolutionized modern biology. It is absurdly easy to recharacterize any great invention as “nothing more” than some combination of naturally occurring element and natural phenomena, because all technologies work within the context of a natural universe governed by pre-existing physical “laws.”

        I am not sure how the observation that the Sequenom invention is “nothing more than the disclosure of where to look for something naturally occurring” is supposed to contribute meaningfully to the discussion.

        1. 5.4.1.1

          Greg: You can pull this trick for absolutely any patent invention.

          Ah yes: the false equivalence.

          It’s true, Greg, that you make a silly absurdly stretched argument in justification of any result that you think will “shock” people. But you’re missing the fact that you just end up looking silly when you do that.

          You’re not over at Big Q’s place or Patent Crocks where your mystification and outrage will be echoed over and over by your fellow sycophants. You need to try a bit harder.

          am not sure how the observation that the Sequenom invention is “nothing more than the disclosure of where to look for something naturally occurring” is supposed to contribute meaningfully to the discussion.

          If that’s the case, then you have no business working as a patent lawyer.

          1. 5.4.1.1.1

            Says the guy who employs that very technique to the most extreme….

            “Go figure Folks”

        2. 5.4.1.2

          It’s beyond baffling that a seemingly educated adult would compare the invention of PCR to the discovery of a natural phenomenon made through the intended use of PCR.

          It’s like comparing the invention of the telescope to the discovery of rings on Saturn.

          If you want to promote progress in better detection methods, then reward people who invent new detection methods. Don’t reward the attorneys who sit around figuring out how to encumber old detection methods with a zillion “look at this” patent claims. That doesn’t make any sense at all (unless you’re an attorney).

          Like every other decent Ph.D. on the planet, I’ve discovered plenty of cool stuff (I still am discovering stuff, all the time). And I shared those discoveries with people around the world. It never occurred to me or anyone in the lab where I worked to run to the patent office to “protect” the “discovery”. I had better things to do and so did everybody else.

          Note that there is nothing — literally nothing — preventing Sequenom or any other company from “innovating” and marketing an awesome kit that reliably detects fetal DNA in maternal serum. People want those kits. Make them and people will buy them. Of course, you might have to compete with someone else (oh noes!) but that’s just the way it is in the good old USA. Perhaps if you can come up with some non-obvious patent eligible device, you can get a little “edge” over your competitors. That will require some work. And some risk! Welcome to planet earth.

          1. 5.4.1.2.1

            Forgot to close the bold tag after the first sentence of the third paragraph. Apologies.

          2. 5.4.1.2.2

            “In a sense, I put together elements that were already there, but that’s what inventors always do. You can’t make up new elements, usually. The new element, if any, was the combination, the way they were used . . .”
            Kary Mullis

        3. 5.4.1.3

          “You can pull this trick for absolutely any patent invention”

          You can’t “pull that trick” for any of the cases before me.

        4. 5.4.1.4

          You can pull this trick for absolutely any patent invention.

          No you can’t, that is what “nothing more” is – there is no teaching to one of skill of relevance beyond the location information. Once you tell someone where to look, they know how to look and what the meaning of what is found is.

          The oil industry knows how to drill for oil. You’re suggesting I can tell them nothing more than the location of oil and receive a patent on drilling for that oil. That’s rather ridiculous, because nobody has ever suggested that you can receive a patent on discovering the location of oil. Oil was always solely within the purview of property law.

          For example, a bow is more than just the principle of string tension. If a bow was just string tension, we would call a bow and a crossbow and a catapault and a guitar and a harp the same thing. You can’t fairly describe it as “nothing more.” String tension may be the main disclosure, but it’s not the only disclosure.

      1. 5.5.1

        I guess that as of this afternoon, you can add Bascom to that list.

        Where is the thread about Bascom? I cannot believe that there is not yet a thread in which to discuss the third case post-Alice in which the CAFC upholds a claim following a §101-attack.

        1. 5.5.1.1

          I cannot believe that there is not yet a thread in which to discuss the third case post-Alice in which the CAFC upholds a claim following a §101-attack.

          I wouldn’t call it an instance of “upholding a claim” but rather an instance of a district court judge not being clear enough (in this panel’s opinion, anyway) about the reasons for ineligibility.

          Because that claim is surely some ineligible junk. And also obvious junk.

  13. 4

    Excellent result.

    “Observe this new natural phenomenon using old observation techniques” has always been a non-starter. Scientists and their lawyers weren’t even interested in such claims until they caught a whiff of the fumes from the patent bubble. If this gate had been opened “officially” by the Supreme Court as the patent maximalists were hoping, the system would melt down pretty much immediately.

    Now we can rest assured that — unsurprisingly — the doctrine applies to DNA and RNA in addition to “new” planets, “new” galaxies, “new” asteroids, “new” frogs, “new” owls, “new” beetles, “new” diamonds, “new” gold nuggets, and “new” fruit trees.

    1. 4.1

      But MM, what if the “old observation techniques” are being applied in a new combination or way? Or do you disagree with their formulation of the “question presented” in the cert petition?

      1. 4.1.1

        Ken: what if the “old observation techniques” are being applied in a new combination or way?

        Then it’s not really an “old observation technique” but a “new” technique. If there’s a new previously undisclosed physical transformation of matter or the method recites the use of a new machine described in objective structural terms, you might have something eligible and patent-worthy.

        But simply pointing the old observation technique at a “new” phenomenon that belongs to the same class as the phenomenon for which the technique was designed is certainly not a “new” combination or a “new” way of using the technique. And that’s all the claims at issue here did.

    2. 4.2

      Yah MM I thought I was saving money when I bought seed at Dollar General. The impatiens won’t flower. and the Bachelor Buttons look like grass stalks with tiny babies’ breath flowers that won’t open. I got second generation hybrids. Really Dollar General! Says they are from Plantation Products Norton MA. Can I has a Patent on that?

  14. 3

    As Roger Meyers Jr. said, “The screwballs have spoken.”

    If I had any doubts before, I have none now: nothing is going to change until a member of SCOTUS or one their families dies from a disease for which no treatment was commercialized due to lack of IP protection.

    Any bets on which country is going to file the complaint at the WTO for lack of adequate patent protection in the USA?

    1. 3.1

      Any bets on which country is going to file the complaint at the WTO for lack of adequate patent protection in the USA?

      The EU would be the ideal jurisdiction to bring such a challenge, as their law still looks like U.S. law used to look pre-Mayo and pre-Myriad. They are also, historically, the entity most willing to drag us before the WTO.

      Here’s hoping for some EU litigiousness.

    2. 3.2

      Dan: nothing is going to change until a member of SCOTUS or one their families dies from a disease for which no treatment was commercialized due to lack of IP protection.

      Just in case everybody has forgotten: the patentees here did not “innovate” a new disease treatment.

      Rather, the patentees “discovered” that fetal DNA was “detectable” in maternal serum using PCR (a technique that was notoriously well-known for its ability to detect tiny amounts of DNA).

      That “discovery” would have occurred without this patent. Moreover, it was already possible — and routine — to conduct fetal genetics before this patent. The primary purpose of that test is not to treat the fetus but to decide whether you want to abort the pregnancy.

      In any event, if people like Dan want more “commercialization” of medical treatment, they should press hard to defund higher public education and government-sponsored research in all its forms. Then all we’ll have left is corporate research. What a wonderful world that will be! Who woudn’t want that?

      1. 3.2.1

        Let me guess: MM has never been married and has no children.

        Anyone who has made use of the test covered by this patent (or whose wife has made use of it), and especially couples who went through amniocentesis to achieve the same results in the days before this test was developed, knows what a big deal this test was when it came out. Even the CAFC judges acknowledged that.

        1. 3.2.1.1

          I missed the part where you pointed out some error in my comment, Atari Man.

          I did forget to add that not only was amniocentesis routine (and it’s still routine as far as I can tell) but it was also known prior to this “discovery” that fetal cells — cells that included fetal DNA — were also in maternal serum.

          what a big deal this test was when it came out

          It was a “big deal” when it was “discovered” that a woman’s ovaries made tons of little eggs. Correct me if I’m wrong, but nobody rushed to the patent office to prevent anybody else from “detecting” that fact, did they? Pretty sure I’m not wrong.

          Of course, back then we didn’t have a class of professional entitled whiners who ran around screaming at the sky because “nobody is going to discovery anything anymore if we don’t hand out more patents!”

      2. 3.2.2

        “Would have occurred without” is a serious misrepresentation of why we have the patent system.

        Of course, Malcolm knows – or perhaps more importantly should know this.

        1. 3.2.2.1

          “Would have occurred without” is a serious misrepresentation of why we have the patent system.

          No. It’s just a fact.

          But you’re comment is a “serious misrepresentation” of what I actually wrote. We’re all used to that kind of dishonesty from you, though. It’s all you know how to do, really. But you’re a very serious person! We all have to pay attention to you.

          1. 3.2.2.1.1

            It is a meaningless “fact,” and worse, as presented by you as somehow having an impact on patent law is a dissembling tactic.

            It can be said of ALL items worthy of patent s that eventually the item would occur without the patent system.

            That too is a “fact.” But regardless of whether or not that item is a “fact,” the presentation on this board in the manner presented shows either a lack of understanding of the basics of the patent system or a deliberate attempt to misguide those who do not know better (or both).

            There is a real shame in what you do – whether or not you care is part of that problem, but hey, Yay Ecosystem!

            1. 3.2.2.1.1.1

              It is a meaningless “fact,”

              Not at all.

              For example, it’s certainly not a “meaningless” fact to mention in reponse to the suggestion that incredibly broad claims like this one are necessary to promote discoveries of the type that led to the filing of this claim. That suggestion, as you know, has been made (directly or indirectly) a zillion times (and more than once already in this short thread). Perhaps you believe that everyone should simply echo that suggestion — after all, it’s what happens at your favorite echo chambers seven days a week.

              LOL

              1. 3.2.2.1.1.1.1

                That “necessary” canard is the “but-for” mindset that is implicit in your ridiculousness.

                The patent system is simply NOT a “but-for” system. Never has been.

                You seek a strawman.

                1. The patent system is simply NOT a “but-for” system.

                  That’s nice. I never said that it was.

                  You seek a strawman.

                  I never have to look for strawmen when you’re around “anon.” Yup, I found one alright.

                2. Nice attempted twist: what is clear is that I have identified your strawman.

                  The proper reply is “thank you.”

            2. 3.2.2.1.1.2

              It can be said of ALL items worthy of patent s that eventually the item would occur without the patent system.

              Exactly. Patent law is meant to do much more than simply to encourage discovery. As I see it, there are at least three major outcomes that patent law (when it is functioning well) is meant to foster:

              (1) discovery;
              (2) disclosure; and
              (3) commercialization.

              It is a painfully insufficient response to answer”someone would have discovered X anyway, even if Drs. J & K had not.”

              Would these hypothetical other inventors have invented X as soon as Drs. J & K?

              Would these hypothetical other inventors have disclosed X as quickly as Drs. J & K disclosed?

              Finally, and perhaps even more importantly, would these hypothetical other inventors have gotten the more practically useful embodiments of the X invention out into the marketplace where actual people can benefit from X?

              If Sequenom had not built the market for prenatal screening by materal blood test, would Ariosa have undertaken to build the market itself? I really would like to see the evidence that undergirds an affirmative answer to that question.

              1. 3.2.2.1.1.2.1

                Thanks Greg – pay attention Malcolm as that is what an inte11ectually honest – and meaningful – response looks like.

              2. 3.2.2.1.1.2.2

                Greg: It can be said of ALL items worthy of patent s that eventually the item would occur without the patent system.

                Exactly.

                Whoo hooo! First the strawman and then the goalpost moving.

                Do you really want to talk about the prior art versus the scope of the claims in this case case, and/or in cases with claims similar to the claims at issue in this case? If so, just let me know.

                There’s a big difference between “eventually”, on one hand, and “within two years of the applicant’s disclosure” on the other hand.

                If Sequenom had not built the market for prenatal screening by materal blood test, would Ariosa have undertaken to build the market itself?

                Because there’s only two playes in “the market”!

                Please give everybody a break, Greg. Also: why does a market for prenatal screening by maternal blood testing have to be “built” at all? It would seem to build itself once there’s a method out there that reliably works.

                Are you going to tell everyone now that the best way to arrive at a method/product that reliably works is to grant an exclusive monopoly on the foundational discovery to a single player?

                Seems like a bit of competition would be better for everybody. That’s just common sense.

                Of course, I’m assuming you’re interested in a result that’s better for everybody, as opposed to a result that’s better for “investors” and/or patients who can afford to pay the monopoly prices. That’s not a great assumption, is it?

                1. Does that “within two years” come from Malcolm’s land of feelings? (Otherwise known as his own personal field of rye)…

              3. 3.2.2.1.1.2.3

                Greg: Would these hypothetical other inventors have invented X as soon as Drs. J & K? Would these hypothetical other inventors have invented X as soon as Drs. J & K

                This kind of nonsense is right up there with “If it was so obvious, then why didn’t someone else invent it first”?

                You’re missing the point. And, yes, it seems that you’re missing it intentionally.

  15. 2

    …and no word on Cooper, incidentally…wonder if they might deal w/ that (and possibly MCM too) in their final “term clean up” conference in the coming weeks?

  16. 1

    “Alice and Mayo are the law”

    OK, but many had argued that Ariosa goes well beyond Mayo holding – so now I suppose that’s the law too. (I probably could’ve lived with Mayo if it had stopped short of leading to Ariosa.)

    Since, technically, the Federal Circuit denied to hear it en banc, there is no en banc level precedent, right? So in theory, a combination of new appointees and/or judges reconsidering could leave room for the full court to overturn the panel at some point down the road (without needing cert or violating stare decisis).

    But unless/until that may happen, the only hope would be that future panels don’t continue the expansion of ineligibility even further…

Comments are closed.