Athena v. Mayo: An Unprecedented Cry for Help

6 thoughts on “Athena v. Mayo: An Unprecedented Cry for Help

  1. 4

    Posted on the earlier thread but worth re-posting here:

    Some guy named Jai Rho: This appears to be another case of confusion between eligibility and obviousness. Both the courts and litigators have had extreme difficulty distinguishing these two principles, particularly in cases involving biotechnology and computer software

    It’s not “courts” who have extreme difficulty with the distinction. It’s blog commenters … like you.

    the method of tagging MuSK antibodies does not occur in nature, so the method itself should not be disqualified from eligibilitya

    This is nothing more than your personal opinion (in which case we can and should question your motives) and does not reflect the current state of the law or the practical reality of applying the law to patent claims. Feel free to justify your opinion with facts and logic but don’t assume that your opinion is correct just because it sounds good to you. That, in fact, is a mistake that is often made by “courts and litigators” and usually leads to the wrong result.

    The mere fact that a claim describes something that “does not occur in nature” does not and should not be the test for eligibility. The reason why is that it is not only possible, but easy to write claims that satisfy this “test” but which impermissibly allow patentees to use the patent system to protect (i.e., to control) “things that occur in nature”. The public’s interest in preventing that unlawful protection from occurring is –as you surely know — paramount.

    Let’s provide a simple example. Let’s say I discover a naturally occurring molecule that has previously not been described (let’s call it “Molecule X”). I am not allowed to claim that molecule because it’s a naturally occurring molecule. But wait! According to you I can broadly claim “A method comprising the step of studying Molecule X” and “A method comprising the step of isolating Molecule X” and/or “A method of detecting Molecule X using any antibody that works” or “A method of tagging Molecule X using any prior art tagging method” because … none of those things are found in nature. As any thoughtful person can see, what you suggest is simply using words to scriven the prohibition against claiming naturally occurring things into a toothless rule. In fact, 101 is the proper tool for the job here.

    Your suggestion that 103 works “better” is only true if you believe that you should be able to scriven around 101 (“because … reasons”) or if you believe that there should be special exceptions to 101 when the otherwise ineligible subject matter is “really cool” or “will make someone filthy rich which is derp the only way to derp promote progress derp”.

    In essence, what you want to do is create a new legal doctrine under 103 that treats previously undescribed but naturally occurring subject matter as prior art and then asks whether the modification is an obvious one. So here’s the problem with that: in 99.9% of these problematic claims, the method applied to the naturally occurring subject matter is going to be in the prior art. Why is that the case? Because most intelligent attorneys working with their clients would recognize that if the methodology itself is new and patentable on its own terms it would be silly to limit claims reciting that new methodology to the “newly discovered” phenomenon (e.g., Molecule X) that is being detected. In other words, it’s always prima facie obvious to use a prior art detection method to detect some “new” species falling within the genus of things that the method was designed to detect. Given this practical reality, the new 103 doctrine you are proposing to enact boils down essentially to this: otherwise ineligible subject matter can be protected by a patent if … it’s commercially valuable or some other (judge created) “secondary factor” can be ginned up to overcome the prima facie case. So now you’ve created a loophole in 101 that you can drive a truck through because you’ve created an easy way for every otherwise highly problematic eligibility claim to sail past summary judgment, where so many of these claims otherwise would properly expire.

    Let me know if you have any questions about any of the above. You’ll note that I’m making very. very few assumptions and I would suggest that all of you do the same. Also do not fall into the trap of pretending that “all diagnostic patents are ineligible” because that is absolutely not true. The best and most important “diagnostic patents” are just as eligible as they always were because they recite otherwise eligible non-obvious objective physical structure or non-obvious physical transformations of matter.

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    Slightly off-topic, but Judge Moore is in fine form this morning in her dissent from a holding of §101 ineligibility in American Axle & Mfg:

    The majority’s concern with the claims at issue has nothing to do with a natural law and its preemption and everything to do with concern that the claims are not enabled. Respectfully, there is a clear and explicit statutory section for enablement, § 112. We cannot convert § 101 into a panacea for every concern we have over an invention’s patentability, especially where the patent statute expressly addresses the other conditions of patentability and where the defendant has not challenged them.

    That really is the failure of Mayo/Myriad/Alice—to make §101 do the work that was really intended for §112 (or §103 at times). There is a perfectly serviceable statutory requirement to deal with claims that get functional at the point of novelty, but §101 is not it.

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    The “cry for help” has long been there.

    This time though, the Supreme Court actually has a mechanism to extract itself if it wants to:

    It can cut the Gordian Knot of its own making with the Kavanaugh Scissors.

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