Athena v. Mayo: Using Standard Techniques to Detect an Antibody that Correlates with a Disease

Athena Diagnostics, Inc. v. Mayo Collaborative Services LLC (Supreme Court 2019)

I enjoy comparing the Question Presented in a petition for writ of certiorari with the brief in opposition.   Perhaps the eligibility answer depends on how you frame the question.

In Athena, the patentee whose claims were invalidated by the Federal Circuit asked the following question:

Whether a new and specific method of diagnosing a medical condition is patent-eligible subject matter, where the method detects a molecule never previously linked to the condition using novel man-made molecules and a series of specific chemical steps never previously performed.

In its newly filed response, the accused infringer Mayo reframes the question as follows:

Whether patent claims to a method of diagnosis are ineligible under 35 U.S.C. § 101 where the claims employ admittedly “standard” and “known” laboratory techniques to detect the presence of an autoantibody that, when present, correlates to a particular disease.

The opposition brief provides its explanation of the briefing thus far:  Policy arguments best left for Congress.

Athena, amici, and various Federal Circuit judges disapprove of this outcome [that the claims are ineligible]. They plead that all medical diagnostics should be patent eligible. They posit that patent claims making use of man-made materials; or that require multiple laboratory-based steps, however conventional; or that detect something no one had previously looked for should be patent eligible. And they speculate, without any record support, that scientific research and the public health will suffer if all medical diagnostic methods are not patent eligible, even in the face of dramatically increased investment in diagnostics since Mayo.

But these are all policy concerns for Congress to examine and address; this Court’s precedent, including Mayo, has already considered each one.

There is thus no work for this Court to do here. This Court has already interpreted § 101 of the Patent Act and laid down a clear boundary around what is and is not patent eligible. Athena’s patent claims fall squarely on the ineligible side of that boundary. Any further action regarding the patentability of medical diagnostic claims such as Athena’s that employ conventional, known techniques should and does rest with Congress.

[Mayo Brief in Opposition].

I like the general idea of getting Congress involved when we need a change in the statute. Eligibility though is somewhat unique since we have had the same statute almost without amendment since 1793 (“useful art, machine, manufacture or composition of matter”). The original U.S. patent Act (1790) was slightly narrower (“useful art, manufacture, engine, machine, or device”).  For the past 230 years, the U.S. Courts have been doing their work on the statute — adding atextual gloss and meaning. And, while Congress has repeatedly altered many of the patent law provisions, it has left this language virtually untouched (“useful process, machine, manufacture, or composition of matter”).  Point being here, a substantive amendment on eligibility would be unprecedented in American law and thus should be done with deliberative caution.

70 thoughts on “Athena v. Mayo: Using Standard Techniques to Detect an Antibody that Correlates with a Disease

  1. 12

    At #10, Martin Snyder informs us that: “The concept of eligibility without prior art is meaningless”. With respect, I think that’s not so. See the established case law of the Boards of Appeal of the EPO.

    Perhaps because MM has some grasp of the way the EPO addresses eligibility under the EPC, MM is more careful in what he writes, at 9.1.1.2. viz.

    “it is logically impossible to have a working eligibility screen in the US system (where you can throw anything you want into your claim) without consideration of the prior art. ”

    That may indeed be so, “in the US system”. At least the courts seem to think so, don’t they?

    1. 12.1

      As should be abundantly clear to anyone with a mind willing to understand, the current problem with the US Sovereign law on eligibility IS because “ At least the courts seem to think so, don’t they?

    2. 12.2

      It’s the same deal in the EP but MaxDrei has a Europe-loving stick jammed so far up his behind that he refuses to admit it. Different words, same basic analysis, and of course the relationship of the claim to the prior art is considered in the typical case.

      The point being that it doesnt matter what MD says. The EP also does not have meaningful restrictions on what prior art can be recites in a claim. This is just logic we are discussing. It’s not rebuttable. It’s deniable, of course, but so is reality itself. See, e.g., the m-0-r-on of your choice.

      1. 12.2.1

        What exactly is your point here, Malcolm?

        All I see is your ven0m against any — and all — that would remotely provide protection for innovation in the computing arts.

        What exactly should MaxDrei “be admitting”…?

        How is his position evidence of any type of “stick-jamming”…?

        Different words, same basic analysis” is clearly not even close to being remotely correct — and your asserting so with zero basis only serves to emphasize the emptiness of your rants.

        The EP also does not have meaningful restrictions on what prior art can be recites in a claim.” what Rule of Law (to be contrasted with a “Rule of Malcolm’s Feelings) is possibly at point with this comment of yours?

        It’s not rebuttable” is quite obscure, as it is simply not clear just what the “it” is that you are ranting about.

  2. 11

    M.Snyder: The concept of eligibility without prior art is meaningless.

    This is not a rebuttable proposition in view of the lack of meaningful restrictions on claiming formats in the US system.

    Sober admission of this fact is one of the signs that the person has at least spent five minutes thinking about the issue, possesses at least moderate intelligence, and isn’t simply a w@-nking pile of p-i-gsh-it.

    I would urge Dennis and Jason to make the admission themselves. I don’t expect the blog’s resident “ethicist” (LOL) to be up to the task.

    Denial of the fact is, quite simply, a sign to everyone that one really needn’t bother discussing subject matter eligibility with the person in question unless the purpose is to mock that person or demonstrate that the person is intellectually dishonest.

    Kudos to Martin, Paul Morgan, Random Guy, and others in the community for rising above the screeching i-d-i-0-c-y exhibited by so many other denizens of Big Jeans echo chamber who tr-0-ll here (note to GregDeL: you’ve got work to do before you get the stench off).

    1. 11.1

      Adding: outright denial of the fact is no different than pretending it’s not a fact, or simply remaining silent.

      In other words, Dennis and Jason, don’t “teach the controversy” as if there are two sides. There aren’t. There’s the fact, and then there’s a bunch of people who complain about it or ignore it for various selfish reasons (or because they are simply not very intelligent).

      Do your jobs for a change. Thanks.

    2. 11.2

      in view of the lack of meaningful restrictions on claiming formats in the US system.

      Yet another admission by Malcolm that the law as written is merely not the law that he feels should be in place.

      1. 11.2.1

        Remember, folks: Bildo is the guy who thinks that “campus PC” is a terrible scourge on freedom of speech (because our society needs to spend more time discussing the natural supremacy of white dudes!) and who also thinks that the Supreme Court should be removed from patent jurisprudence because he doesn’t get the results he likes.

        But, sure, a non-rebuttable statement of fact is all about “my feelings”.

        LOL

        Choke on your gravy and die a slow d-e-a-t-h, Bildo. You won’t be missed, just like nobody misses hearing Ned rant on about all those illegally voting black people corrupting our elections (yes, he actually believed that was a real problem).

        1. 11.2.1.1

          Your attempted spin is noted.

          That you ALSO try to spin your feelings as somehow substantiated as “fact” does NOT remove the (actual) fact that your views ARE an admission that the law as written by Congress is viewed – by you – as not enough.

          That you seem incapable of recognizing the difference between facts and your feelings is nothing more than the usual Trump-like nature that you exhibit well beyond ANY poster that posted on this blog.

  3. 10

    such a $snore r u anon.

    Rick you can’t place in invention into an art without some reference to prior art. The concept of eligibility without prior art is meaningless.

    Either rewrite 101 or 100(b) to reflect information inventions and create early-stage workable procedures for common sense 103/112 problems (i.e. a more adversarial and safeguarded Alice procedure) or continue to flail. The Senate hearings this summer were a clear demonstration that there is zero working consensus on these problems.

    1. 10.1

      Marty,

      You will have to forgive people that ignore your protests of the law as you continuously show that you do not understand the terrain upon which you would do battle.

      See Sun Tzu.

      As to the Senate hearings, your view of those is equally jaundiced and abysmal.

    2. 10.2

      “Information inventions”

      You mean, like a traffic light?

      1. 10.2.1

        I mean like where the useful novelty of a purported invention is an item of information.

        1. 10.2.1.1

          “Useful novelty”

          And that is found where in the words of Congress?

          You (still) do not grasp the patent aspect of utility. Do not tell other people that they are “swinging and missing” when you are not even at the ballpark.

          1. 10.2.1.1.1

            uh these words?

            § 101 – Inventions Patentable: Whoever invents or discovers any new and useful…. ah item of information?

            New means novel and useful means possessing utility. English is your native language?

            1. 10.2.1.1.1.1

              101 has two and only two elements (in itself):

              1) the innovation is to be put (by the applicant) in at least one of the statutory categories, and

              2) the utility of the innovation must belong to the Useful Arts.

              That
              Is
              It.

            2. 10.2.1.1.1.2

              … as to your “New means novel” and comical (in a self-deprecating manner) “do you speak English,” my law is an unfamiliar terrain friend, that aspect of new is explicitly controlled outside of 101.

              Maybe — just maybe — try to understand the terrain upon which you want to do battle.

              1. 10.2.1.1.1.2.1

                that aspect of new is explicitly controlled outside of 101.

                Well, what qualifies as prior art for determining what is “new” appears in 102.

                Again, Bildo: the statute as written is a total pile of sh-t. That’s because it was written by people who were themselves pretty sh-tty and who didn’t think very much about what they were doing (other than helping their wealthy friends).

                Nothing really controversial or suprising about that, unless of course you’ve spent a lot of time licking Judge Rich’s bu-tt-ons until they are super shiny because, hey, “a lot of other patent attorneys do it.”

                Now tell us about how much you know about “innovation”, Bildo. 1952! What a great year! The best year ever.

                1. Again, Bildo: the statute as written is a total pile of sh-t.

                  And again, Malcolm, your statement is taken as the admission that it is.

                  It is beyond humorous that you keep on making this type of admission and yet cannot seem to grasp what you are doing.

                  It’s almost as if your really think that because you feel something “deeply” enough, that any sense of reason is actually optional.

                  So very Trump of you.

  4. 9

    A key flaw with the current jurisprudence on subject matter ineligibility under Mayo, especially as has been applied to diagnostic methods, can be better understood by the following example which employs Mayo’s improper dissection of a claim to find the “novel” or “inventive” limitation rather than proper consideration of the claimed subject matter as a whole.
    1. A method comprising the step of obtaining tissue from a subject. (subject matter eligible regardless of it being conventional; 102 and 103 do not enter the consideration on eligibility)
    2. The method of claim 1 further comprising the step of analyzing said tissue by Western blot to determine the content of protein Y therein. (subject matter eligible regardless of it being conventional; 102 and 103 do not enter the consideration on eligibility)
    3. The method of claim 2 further comprising the step of indicating the subject has disease X when the level of protein Y is greater than Z. (novel step; ARGUABLY subject matter ineligible because it can be construed to encompass a solely mental process; however, the real reason the claim would be rejected under Mayo is that at the point of novelty (a 102 consideration improperly inserted under a 101 consideration) there exists this mental step).
    The Mayo Court would then deem all claims subject matter ineligible. That is absolutely wrong.
    Nowadays under Mayo, if the preamble of claim 1 simply specifies a “diagnostic method” and the remainder of claim 1 remains the same, most examiners’ immediate determination is “subject matter ineligible”.
    Mayo is simply poor jurisprudence. The attorneys that argued it and the judges that decided it should simply admit their error and help fix the problem they helped create. Congress and the USPTO need to step in. It is way past time…

    1. 9.1

      Maybe you should actually read Mayo, understand the facts and the reasoning, and apply the decision with a mind willing to understand.

      What you did here is to assume an absolutely incorrect and logically indefensible premise (i.e., consideration of the prior art has no place in a subject matter ineligibility analysis), obtain the “wrong” result, and then complain that the problem is the Supreme Court’s, rather than your own.

      We’ve all seen your game before. We saw it before the decision and we’ve seen it crawling on all fours like a zombie for years afterwards. Grow up.

      1. 9.1.1

        MM prior art consideration is 102 and 103, not 101.

        1. 9.1.1.1

          Rick,

          To “MM” (Malcolm), the Ends justify the Means and he has zero problem with the Supreme Court re-writing the direct and unambiguous words of Congress in order to “gloss” and insert their philosophical views in place of Congress’s wide open welcoming gates.

          That is, he has no problem as long as that Court’s actions match his own feelings. But note his attacks when the Court does not…

          1. 9.1.1.1.1

            Bildo the Bankrupt F-kstick: the direct and unambiguous words of Congress

            … would allow @-h0les to patent useful thinking processes that permit me to determine where to buy the latest iPhone, or useful processes for organizing a protest against neo-N-@-z-i piles of cr-@p.

            Pretending that the current Section of 101 isn’t a completely unconstitutional p.o.s. on its face is a l0-ser’s game, Bildo. That’s why you are a bigtime l0-ser, as everyone here knows. Especially your dear benefactor, Dennis.

            1. 9.1.1.1.1.1

              Pretending that the current Section of 101… on its face

              is NOT the pretending that is going on here, Malcolm.

              As for “dear benefactor,” I do have to wonder what you are smoking.

        2. 9.1.1.2

          MM prior art consideration is 102 and 103, not 101.

          101 requires an invention (“new and useful”).

          In addition to that, it is logically impossible to have a working eligibility screen in the US system (where you can throw anything you want into your claim) without consideration of the prior art. The Supreme Court gets it, the Federal Circuit gets it, and pretty much every district court judge gets it, as do the majority of educated intellectually honest patent attorneys (like me) who aren’t self-interested w@-nking piles of p-g-sh-t.

          This is what I was getting at in my earlier comments, Rick: you don’t know what the F you are talking about so maybe take a deep breath, educate yourself, and in the meantime avoid sources of bad information like Big Jeans echo chamber. Good luck (your chances a redemption are low but go ahead and surprise everyone).

          1. 9.1.1.2.1

            Your feelings (and admissions as to what Congress actually wrote) are noted.

    2. 9.2

      Your claim 1 isn’t an invention and hasn’t been an invention for over 99.9999% of the history of human civilization (at least). In a system concerned about justice, we would be discussing what kind of sanctions should be handed to a person who presented that claim to the PTO. It’s ineligible and it’s anticipated. This isn’t a problem for normal, reasonable people. The fact that people presenting that kind of nonsense to the PTO aren’t barred from practicing before the PTO or sanctioned is a much bigger problem than anything in the Supreme Courts jurisprudence.

    3. 9.3

      Rick, you swiiiing and miss, like so many others. You nibble around the problem with “mental steps” and your point 3 correctly identifies that the essence of the invention is the item of information that the subject has disease X when the level of protein Y is greater than Z.

      So you see that this problem somehow turns on things that happen (or not) mentally, and that an item of information is very hard to squeeze into any of the non-process statuary categories.

      Simple argument: if the utility of an invention arises from an item of information, the eligibility must turn on the consumer of the information. If a human being, not eligible. If a non-human actor, eligible.

      New diagnostic methods that involve something other than human medical providers consuming information should be eligible.

      MM, for all his bluster, will not go more than a few steps into my argument before he bails. Policy wise, I think we end with something like my scheme no matter what happens, because there will have to be a compromise.

      Here is the argument in depth. I welcome objections.

      link to papers.ssrn.com

      1. 9.3.1

        Simple argument: if the utility of…

        And again, Marty, it is you that swings and misses.

        Same reason: you do not have a clue as to utility in the patent sense.

      2. 9.3.2

        MM, for all his bluster, will not go more than a few steps into my argument before he bails.

        Yes, Martin, because it’s not really an “argument” but rather an arbitrarily selected policy position that still would allow the system to be parasitized by a ton of “logic on a computer” patents that don’t belong there. In other words, you are putting a band-aid on a machete wound.

        Policy wise, I think we end with something like my scheme no matter what happens, because there will have to be a compromise.

        That’s what we call a “defeatist attitude”. Accommodating the interests of a well-heeled ultra minority at all costs is how rotten, corrupt legislation is drafted in the first place.

        The “compromise” you refer to has already taken place: decades of illegally granted patents that, taken as a whole, are undoubtedly the worst (least examined) patents ever granted by the US system were foisted on the public. The system was bent and warped to accommodate those applicants at the expense of its credibility and the system is still nowhere close to figuring out how to deal with the examination of logic claims (hint: it will never figure that out).

        1. 9.3.2.1

          So my reply never made it out of the “Count Filter” purgatory.

          Let’s see if I can recall it…

          because it’s not really an “argument” but rather an arbitrarily selected policy position

          Malcolm, how in the world is your description of Marty’s attempt at re-writing patent law NOT the exact same description that applies to your own desired re-writing of patent law?

          I do grant that your position at least is reflected in the improper “atextual gloss” (a FAR too polite acquiescence from a legal teacher in a condition that should be highlighted as improper) from the Supreme Court. In this regard, Marty is simply trying to insert his own entirely made-up views with NO regard to the terrain of patent law.

          That being said though, the fact of the matter is that the Score Board IS broken, and that fact IS the larger problem with the current state of eligibility law (of Congress). Yes, you have made repeated admissions that you FEEL that the law as written by Congress “is bad.” But your Means to your desired Ends is simply NO BETTER.

          I entirely “get” your feelings and why you seek to deny innovation protection to a certain form of innovation (regardless of your lack of appreciation of innovation, the history of innovation — vis a vis Kondratiev Waves, and the factual nature of patent equivalence between the DESIGN CHOICES of wares in the computing arts).

          But your feelings are merely that: feelings.

          You have no basis in law (properly applied and with proper Means) to reach your desired Ends.

          You have no basis in facts (in either the historical nature of law as written by Congress or in the innovation field of the computing arts) to reach your desired Ends.

          ALL that you have is your table of feelings (that you pound away at – and NEVER come around to actually engaging in cogent and inte11ectually honest dialogue on the law and on the facts).

          Hmm, this comment is more intensive than the blocked comment. Timing (and the fact that this is directed at Malcolm, who has no viable reply) will dictate that this comment will have no answer, but for historical purposed, it is worth posting.

  5. 8

    Even (or perhaps especially) outside of 35 USC 101. We have the following (emphasis added) from Congress in the Act of 1952:

    (b) The term “process” means process, art or method, and includes a new use of a KNOWNprocess, machine, manufacture, composition of matter, or material.

    Think about it.

    1. 8.1

      Yawn.

      That phrase does nothing to alleviate at all to address the well-known and gigantic flaws in the statute as written. On the contrary, it just makes the problems worse.

      If we want to be generous to the drafters, however, we would kindly suggest that the phrase is nothing more than the (perhaps trivial) observation that a non-obvious use of an existing matter-transforming process (i.e., use of the existing process to act on matter that was previously not believed to be a proper subject for that process) should not be rendered unpatentable (i.e., ineligible) merely because the matter-transforming process itself was old.

      Plainly the text does not suggest that every “new use” (including the zillions of obvious uses) is remotely patent-worthy. For example, using a prior art instructable computing device to compute something should not be patentable merely because the “something” in question has been given a “new” name or meaning. That would be absurd.

      As noted, it’s unfortunate for everyone in our society (except for the rich manipulators and grifters) that the drafters of the statute seemed to be entirely lacking in circumspection or foresight.

      1. 8.1.1

        Again — I will take this as your admission that the law as written is not how you feel the law should be.

        Your concession is noted.

      2. 8.1.2

        Plainly the text does not suggest that every “new use” (including the zillions of obvious uses) is remotely patent-worthy.

        Talk about kicking up dust.

        You insert the phrase “patent worthy,” and it is entirely unclear what you intend with that phrase (other than as a basis for your feelings).

        Are you talking about eligibility?

        Are you talking about patentability (i.e., the substantive sections of patent law outside of eligibility)?

        So when I brush away your strawmen and spin, I do not see a point here from you in regards to actual patent law.

        All I see is your well-known feelings and animosity towards protection of a certain type of innovation.

        And that, based merely on your feelings, untethered to the actual law written by Congress.

      3. 8.1.3

        … and yet again, Malcolm has NO substantive or cogent reply…

  6. 7

    I don’t follow chem cases too closely, but I thought Myriad stood for the idea that you were eligible if you recited a non-naturally occurring molecule…even if the non-natural-ness was trivial/obvious.

    1. 7.1

      I thought Myriad stood for the idea that you were eligible if you recited a non-naturally occurring molecule…even if the non-natural-ness was trivial/obvious.

      Myriad’s holding was expressly limited to nucleic acids. The broader issue you are discussing wasn’t addressed by Myriad so that can’t be the holding.

      As I noted below, however, the reasoning underlying the ineligibility of “detect this new molecule using old detection techniques” isn’t assailable on logical grounds. You can attack on policy grounds but … good luck with that. Your best bet is simply to pay off a pack of corrupt (or ign-0-rant) Congresspeople to look the other way, then grab as much cash with these j-un-ky claims as you can before the larger public wakes up (which they will, because I and others have been watching this silly tale of relentless greed unfold for many years).

      Thanks for the comment and don’t forget: Kevin Noonan is a hack and a shill for some of the worst people in the world.

    2. 7.2

      Myriad stood for the idea that you were eligible if you recited a non-naturally occurring molecule…even if the non-natural-ness was trivial/obvious.

      Please explain to everyone why it matters whether you bar patenting “newly discovered naturally occurring molecule further comprising an obvious label so you can detect it” under eligibility grounds or 103 grounds. Same question regarding “generic undisclosed antibody against newly discovered molecule”, except expand you analysis to include 112 as well.

      Thank you. I’m sure you’ve given this a lot of thought. Maybe you’ve given it so much thought that you understand that these are, in fact, rhetorical questions and in each instance the underlying reasoning for the bar is not distinguishable unless you want to engage in sophistry *or* unless you want to rely on some judicially created exception to the bar that is reserved for those truly super special molecules which we all know are truly super special because [wave hands around, cite a 19th century Supreme Court case, and discuss all the dying children and the things that “nobody will ever know about” because communists destroyed the patent system etc].

      1. 7.2.1

        I think Old Curmudgeon is right. The cDNA in Myriad was patent-eligible because it was “unquestionably something new” even though its structure and sequence were dictated by nature and making a cDNA was pretty conventional. By the same logic, the radioactive iodine-labeled MuSK is likewise “unquestionably something new.” If it had been claimed in its own right it would have passed 101 analysis. It makes no sense to make it ineligible just because it was used to detect the naturally-occurring antibody.
        Myriad also had claims to a drug screening method using a cell line transfected with a defective BRCA gene. Transfecting a cell line was conventional, but the BRCA-transfected cell was nonetheless new and patent-eligible and therefore the screening method using that cell line was eligible too.

        1. 7.2.1.1

          Moocow It makes no sense to make it ineligible just because it was used to detect the naturally-occurring antibody.

          Really? It actually makes total sense once you take your lips off your patent crack pipe.

          The iodine-labeled MusK is ineligible for patenting because there is not “sufficiently” more that is “inventive” recited in the claim beyond the ineligible subject matter (i.e., the naturally occurring molecule). Iodine labeling for the purpose of detection or detecting is old in the art. What possible sense would it make to ban people from patenting naturally occurring molecules but to grant those same people the right to sue anybody who uses prior art techniques to detect those same molecules? Answer that question and try to do so without engaging in sophistry and silly scare tactics about how “nobody will bother to discover anything anymore unless you hand out reams of these junk claims.” Go ahead.

          If it had been claimed in its own right it would have passed 101 analysis.

          Hey, if you say so. It’s unclear why it wasn’t claimed, then, if that’s the case. Why not also claim the naturally occuring molecule “comprising a detectable label”? That’s also “new” and a lot broader. For that matter, why not claim “in a plasma-free solution” or “freeze dried”? All “new”. Also incredibly obvious, of course, and also a recipe for disaster unless you are already wealthy and looking to invest in an R&D destroying scheme, or if you are a patent attorney desperate for work and you don’t care about anything else.

          Myriad also had claims to a drug screening method using a cell line transfected with a defective BRCA gene.

          Those claims were total j-u-n-k.

          Transfecting a cell line was conventional, but the BRCA-transfected cell was nonetheless new and patent-eligible and therefore the screening method using that cell line was eligible too.

          I don’t recall those claims being specifically presented to the Supreme Court but I guarantee you that they would never be deemed enforceable if they were challenged by a party capable and willing to make the proper defense (and 101 would certainly be among those defenses). Identify a mutation and draft a generic prior art method of “use a cell line with the mutation for testing stuff”? You think that’s going to fly in 2020? Highly highly unlikely. And again: there’s great reasons for keeping that junk out of the system.

          That’s the funny thing about the patent maximalists. They think they are all about “innovation” and yet they are somehow stuck back in 1985 when it comes to technology. Heck, when it comes to computers you guys are stuck back in 1945, or earlier! Grow up already.

          The cDNA in Myriad was patent-eligible because it was “unquestionably something new” even though its structure and sequence were dictated by nature and making a cDNA was pretty conventional.

          Just for the sake of historical accuracy, many of the compositions covered by Myriad’s broadest asserted claims were, in fact, not remotely new (except possibly for the “isolation” aspect). Myriad is (?) was an awful, greedy company and their asserted claims were disgustingly broad. In real time, I (and others) regularly expressed my unhappiness with the defense’s approach to Myriad’s claims and Thomas’ opinion certainly includes inconsistencies and inaccuracies that are only rescued by the opinion’s expressly limited holding. The worst problem is the fuzzing over of the fact that “cDNA” is just … DNA. There is nothing necessarily implicated about the structure of a claimed DNA molecule merely by inserting the “c” before “DNA”. All it means is that the DNA molecule is complementary to a naturally occurring RNA molecule. That’s it.

          That’s what was pretty amusing about the Myriad decision. It was literally all about Myriad and Myriad’s greed. Hardly any company was even interested in pursuing and claiming isolated DNA molecules comprising short specific sequences of DNA because the universe of prior art is huge and enforcement is virtually impossible. All that is to say that what was at stake in Myriad went well beyond Myriad’s specific claims and their “eligibility”. On a certain level it was about deciding what kind of world we wanted to live in. Do I have the right to use prior art tech to determine facts about my own body? Or do I need to license ten zillion patents from super s-c-u-m-m-y corporations first?

      2. 7.2.2

        >Please explain to everyone why it matters whether you bar patenting “newly discovered naturally occurring molecule further comprising an obvious label so you can detect it” under eligibility grounds or 103 grounds.

        Policy wise, I completely agree; the distinction is silly. But, we’re stuck with the SCOTUS we have.

        On the other hand, I’d personally have said the Myrid claims were all patentable subject matter on the grounds they were a properly formatted method (subject to 112/102/103). Chakrabarty is the right approach to 101, not Mayo/Alice, imho.

        1. 7.2.2.1

          OldCurmudgeon,

          You have to remember that to Malcolm, the Ends justify the Means.

          (watch him grouse now as if he does not understand what that means – and why, especially in law, that such is especially troublesome)

        2. 7.2.2.2

          Policy wise, I completely agree; the distinction is silly.

          But it’s you making the silly distinction. I guess coherency is your weak suit. The bottom line is that it’s perfectly reasonable for claims to fail multiple prongs of the patent statutes simultaneously. That’s not a bug. It’s a feature.

          I’d personally have said the Myrid claims were all patentable subject matter on the grounds they were a properly formatted method (subject to 112/102/103). Chakrabarty is the right approach to 101, not Mayo/Alice, imho.

          While some of the same policy considerations discussed in Mayo were correctly invoked in the Myriad decision, Mayo was dealing with a completely different fact situation, as was Alice. It’s your mistake when you lump these decisions together, not the Supreme Court’s.

          1. 7.2.2.2.1

            The bottom line is that it’s perfectly reasonable for claims to fail multiple prongs of the patent statutes simultaneously. That’s not a bug. It’s a feature.

            Great – but that is NOT your position, as you instead confuse and conflate (and do NOT keep separate the separate multiple prongs).

            THIS is also nothing new from you, Malcolm.

  7. 6

    You can’t protect a naturally occurring phenomenon using a patent merely by reciting the use of prior art methods for detecting that phenomenon.

    Antibody/antigen detection methods are very old in the art.

    Granting such patents does not “promote progress.” It promotes litigation, and hoarding. and it squelches progress and understanding. Any researcher or scientist (or any other person with at least a modest level of intellect) will understand why this necessarily the case. The beginning of that understanding is to appreciate that **any** new discovery in any field can be tied up by claims drafted in such a manner.

    It’s illegal for a reason. The people who object are invariably self-interested shills and they refuse to address the facts and the inevitable outcomes.

  8. 5

    What are the allegedly new “specific chemical steps” that were “never previously performed”?

    You’d think they’d have claimed those steps in a stand alone claim as they would seem to have great value. I wonder why they didn’t?

    This is more or less a rhetorical question. Definitely above the pay grade of Big Jeans’ lil shriekers.

    1. 5.1

      Your 0bsess10n is noted.

  9. 4

    1. What is the patent number?

    2. How is this different from inventions that use a method using a combination of resistors, capacitors, and transistors (all of which are well known)?

    3. And what about all the inventions that use electrons? An electron is an abstract idea. Is an electron a particle, a wave, or a wave function? If it is a wave function then it only exists when the wave function collapses (i.e. when it reduces to a single eigenstate due to interaction with the external world. (This interaction is called an “observation”).
    link to en.wikipedia.org

    Are inventions that use observations patentable?

    Maybe there should be a requirement that at least some of the judges be engineers and physicists.

    1. 4.1

      2. How is this different from inventions that use a method using a combination of resistors, capacitors, and transistors (all of which are well known)?

      Take it down even deeper: How is this different than ANY of the hard goods categories that at their core only use “laws of nature” AND the ‘fundamental’ (all of which are well known AND nearly-all-age-of-the-universe old) particles of Protons, Neutrons, and Electrons (say, in a ‘Big Box,’ ala Star Trek replicator, or perhaps additive manufacturing ‘printer’)…?

    2. 4.2

      Muddling two very different Sup. Ct. “unpatentable subject matter” grounds issues and reasons – patenting abstractions versus patenting laws of nature – is not helpful for the proposed patent legislation or other fixes.

      1. 4.2.1

        They think the problem should be (and can be) resolved by Congress?

        Do they mean the U.S. Congress?

        In order to get through the U.S. Congress it would have to get through the U.S. Senate.

        The Majority of the U.S. Senate are people for whom the Truth and Facts are whatever they want it to be.

        And that depends on which way the wind is blowing at that particular moment.

        And the wind comes from between Trumpy’s copious buttocks.

      2. 4.2.2

        This is true, Paul, although the two concepts do themselves merge (arguably) in the case of claims that recites steps of thinking about a scientific/medical “meaning” for a piece of obtained data (these were the facts at issue in the Prometheus v Mayo case).

    3. 4.3

      All of your comments and questions here exhibit low intelligence and an unwillingness to understand the issues.

      Now would be a good time for you to F off and crawl back to Big Jeans echo chamber. Get a new script.

      1. 4.3.1

        Your ISMs (and 0bsess10n) are noted.

    4. 4.4

      There is a difference between using an observation and claiming an observation, but I suspect you already know this.

      1. 4.4.1

        NS II: There is a difference between using an observation and claiming an observation, but I suspect you already know this.

        Pretending that you were born yesterday and asking silly questions is one of the tried and true rhetorical techniques of the maximalists, second only to the technique of confusing patent claims with all of the things and acts that fall within the scope of those claims (for whatever purpose).

        The bottom line is that only “Unfrozen Caveman Lawyer” TRULY understands innovation and technology. The rest of us are just distractions for his wonderful clients who have only everyone’s best interests in mind.

  10. 3

    The view that the Supreme Court itself has not been writing patent law (over the last 230 years) in direct contrast with the Legislative Branch — and this view advanced by someone teaching patent law — is really unbelievable.

    Oh, how I wish I were a student in your class if you floated that out there.

    1. 3.1

      Law students do not get good grades for misrepresenting what their law professor actually said, which here is: “For the past 230 years, the U.S. Courts have been doing their work on the statute — ADDING ATEXTUAL gloss and meaning. And, while Congress has repeatedly altered many of the patent law provisions, it has left THIS language virtually untouched..”

      1. 3.1.1

        Great – what the H does your retort have to do with my post?

        Certainly, I recognized the wording of “ATEXTUAL.”

        Do you really think that the Act of 1952 was not a direct move against the Supreme Court and its own self-appointed description of “the only valid patent is one that has not yet appeared before us,” or that the importance of the Court’s makeup (exactly who is saying what as the Court itself scrivins itself into a Gordian Knot) — a knot directly observed by all three branches including Congress in the last few years in any way supports your feeble attempt at rebutting my post?

        For shame, Paul.

        1. 3.1.1.1

          Bildo thinks that Congress intended to allow patentees to protect “man-made” information and logic through use of patents.

          The simpler, sane reality is that the statute was drafted by naive patent huffers who couldn’t legislate their way out of a paper bag.

          1. 3.1.1.1.1

            simpler, sane reality is that the statute was drafted by naive patent huffers who couldn’t legislate their way out of a paper bag.

            I will take this as an admission that the law as written is NOT how you feel the law should be.

  11. 2

    Disingenuous bull$h!t from Mayo, or more accurately, from Mayo’s lawyers.

    Congress DID set forth the policy for eligibility in 1952, and then in Mayo, Myriad and Alice, SCOTUS ignored it and supplanted its own ill-considered policy.

  12. 1

    The subject brief seems to primarily stress the longstanding Sup. Ct. prohibition of patenting “laws of nature,” In particular citing Mayo as controlling here by holding that “a process reciting a law of nature” is not patentable “unless that process has additional features that provide practical assurance that the process is more than a drafting effort designed to monopolize the law of nature itself.”

    1. 1.1

      Denis notes that “Perhaps the eligibility answer depends on how you frame the question.” Proposed legislation thereon likewise. How likely is Congress to enact legislation if it gets attacked as “allowing the patenting of laws of nature?”

      1. 1.1.1

        Paul,

        You alight upon a good point: “ Proposed legislation thereon likewise.” — but perhaps for a different reason.

        It is less a “philosophical” reason related to providing an exclusive right to something pre-existing and more a matter that strong patent rights (along any dimension) are NOT what the established monied interests (and the impact of their “voi€e$” — in a Citizens United manner) are willing to entertain.

        As to the notion of “laws of nature,” let’s discuss phlogiston, the aether, and other “laws” that are merely maps (rather than what the man-made replications model).

    2. 1.2

      The whole schtick about “drafting effort” is — and should be recognized as — nothing but spin and dust-kicking from a branch of the government putting their thumb on the scales and reaching a desired Ends outside of the actual words of Congress.

      It is entirely extra-statutory, and — in the body of ALL such scrivining — self-conflicting and unsustainable.

      1. 1.2.1

        It’s not a “schtick” at all. The scrivening problem is a critical, fundamental problem that arises when you allow drafters to draft claims reciting prior art contexts and prior art steps in addition to “new abstractions”, and then you enlist some derpsherts to draft a broad eligibility statute that, literally construed, prohibits nothing.

        1. 1.2.1.1

          It is a schtick.

          Your feelings otherwise are immaterial.

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