By Jason Rantanen
Association for Molecular Pathology v. Myriad (2013) Download 12-398_8njq
In an unanimous opinion, this morning the Supreme Court drew a sharp line between isolated DNA (not patentable subject matter) and cDNA [synthetic versions of DNA that omit non-coding portions] (patentable). There is a curious concurrence by Justice Scalia that I'll post about separately.
The Court's basic rationale is similar to Judge Bryson's dissent in the Federal Circuit opinion. DNA is really about information, Myriad's patent claim treats it as if it's about information, and that's how the Court treats it as well. Because the minor chemical differences between naturally occurring DNA and isolated DNA don't change the informational component of DNA relative to its naturally ocurring state, isolated DNA is not patentable. However, the creation of cDNA in the laboratory does affect this informational component by removing the non-expressing portion of the DNA sequence, thus producing a non-naturally ocurring DNA sequence. This change in the informational content is sufficient to render the cDNA sequence patentable.
The 101 Standard: The court applied an incentive/preemption framework for analyzing the patentable subject matter issue:
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.” (quoting Mayo v. Prometheus, at 23)
Isolated DNA: Simlar to its approach in other patentable subject matter cases, the Court first looked to the essence of what Myriad had done. "Myriad’s principal contribution was uncovering the precise location and genetic sequence of the BRCA1 and BRCA2 genes within chromosomes 17 and 13. The question is whether this renders the genes patentable….In this case, [] Myriad did not create anything. To be sure, it found an important and useful gene, but separating that gene from its surrounding genetic material is not an act of invention." Slip Op. at 12.
In reaching its conclusion as to the unpatentability of isolated DNA, the Court adopted an information-centric view of DNA as opposed to a chemical-structural approach:
Nor are Myriad’s claims saved by the fact that isolating DNA from the human genome severs chemical bonds and thereby creates a nonnaturally occurring molecule. Myriad’s claims are simply not expressed in terms of chemical composition, nor do they rely in any way on the chemical changes that result from the isolation of a particular section of DNA. Instead, the claims understandably focuson the genetic information encoded in the BRCA1 and BRCA2 genes. If the patents depended upon the creation of a unique molecule, then a would-be infringer could arguably avoid at least Myriad’s patent claims on entire genes (such as claims 1 and 2 of the ’282 patent) by isolating a DNA sequence that included both the BRCA1 or BRCA2 gene and one additional nucleotide pair. Such a molecule would not be chemically identical to the molecule “invented” by Myriad. But Myriad obviously would resist that outcome because its claim is concerned primarily withthe information contained in the genetic sequence, not with the specific chemical composition of a particular molecule.
Slip Op. at 14-15.
cDNA Patentable: The Court reached a different result for cDNA:
cDNA does not present the same obstacles to patentability as naturally occurring, isolated DNA segments. As already explained, creation of a cDNA sequence from mRNA results in an exons-only molecule that is not naturally occurring. Petitioners concede that cDNA differs from natural DNA in that “the non-coding regions have been removed.” Brief for Petitioners 49. They nevertheless argue that cDNA is not patent eligible because “[t]he nucleotide sequence of cDNA is dictated by nature, not by the lab technician.” Id., at 51. That may be so, but the lab technician unquestionably creates something new when cDNA is made. cDNA retains the naturally occurring exons of DNA, but it is distinct from the DNA from which it was derived. As a result, cDNA is not a “product of nature” and is patent eligible under §101, except insofar as very short series of DNA may have no intervening introns to remove when creating cDNA. In that situation, a short strand of cDNA may be indistinguishable from natural DNA.
Slip Op. at 16-17 (emphasis added). Note that under the last bit, a cDNA sequence may not be patent eligible subject matter in some circumstances.
What are the consequences? My immediate reaction is that for most practical applications, the Court's holding means that even though the broadest possible biotechnology product claims (to the isolated DNA itself) aren't going to be patentable, the key elements in making and using a biotechnology-based invention are still going to be protectable via patents (Part III of the Court's opinion makes this especially clear). This will allow researchers and competitors a little bit of wiggle room to design around biotechnology patents because they can use the basic isolated sequence but there will still be substantial limitations on what they can do with that isolated sequence. For this reason, I'm skeptical that the Court's opinion will have a negative effect on the incentives for creating biotechnology-based applications. To the contrary: by affirming that cDNA can be patented, it may strengthen the incentives for investing in research in this area.
In terms of the effects on my friends here at the University, I can see at least two consequences. First, it may allow researchers more freedom to engage in whole-genome sequencing because they won't need to deal with a multitude of isolated DNA patents for individual sequences. On the other hand, because early-stage research on newly discovered DNA sequences cannot be patented, it may encourage companies – and perhaps universities – to pursue greater secrecy over those early stage discoveries. Social research norms may cut against this – particularly in universities – but there may be some increased pressure, particularly at the margins, towards secrecy of potentially valuable inventions.
Update: In the short term, this case may have an immediate impact on BRCA testing. Via Brian Love at Santa Clara, Hank Greely just tweeted that: "Ambry announces its own BRCA 1/2 sequence test. $2200, a 30%+ cut from Myriad. They'll do deletes/dups for $500. Price hemorrhaging begins!"
Let the record show that Malcolm has failed.
Failed to find the nuts to admit he was wrong and I was right.
Failed to defend his pet theory that he tossed on a bonfire of his own making in his first substantive attempt to square Prometheus with the precedent case most on point.
Failed to deny his own 1ying svckpuppetry (that he had previously sworn he did not do when he was QQng up a storm).
And my intern just came in with this: Malcolm has posted nearly 21,000 words in one week on something ‘that he doesn’t care about.’
LOL – nearly 21,000 words of mewling QQ and not word to show he has the nuts to admit the plain FACT that I got the decision and reasoning right and that he was wrong.
So ends this chapter on Myriad, with a wonderful bookmark to the torching admission by Malcolm and a whole lot said that amounts to nothing.
Life is good.
That’s pretty funny.
Thank you. That means a lot, coming from you – Your keen sense of humor is well known, especially since yesterday’s “joke.”
That was an excellent analysis and break down of Diehr. You should publish it in a, Diehr for Dummies book! Seriously.
That’s pretty funny.
Almost as funny as the occasional crybaby’s veto attempt, and the ‘stop picking on MM’ mewling.
Almost.
NWPA:” But, converting numbers to different bases is not a scientific truth. But,the big picture is right. Where is that line of what is math of a scientific truth and what is application?”
I agree with you and that is an excellent question. Hmm… it makes me wonder if the astronomer(s) that proved Einstein’s General Theory of Relativity by using their telescopes to take a picture of the sun light bending around the moon, and doing the necessary math would cross that line. My intuitive analysis and best educated guess would be, yes.
Under the statute the process would be eligible, as the math is applied and does not pre-empt the underlying concept ( General Theory of Relativity). It would not even pre-empt Einstein’s equations for the theory. There would be a new use of the astronomers old math, telescopes and other apparatus in an ordered combination; fully integrated and fully patent eligible. But of course, today such a process would involve software and computers and so be pre-ordained an abstract idea. It’s scary when you realize how far we have regressed. At some point the madness has to stop. I am counting on that day at the Court.
It wasn’t a coincidence at all. We were just following Professor Lemley’s instructions.
Leopold Bloom.
For some strange and (I am sure) purely coincidental reason, several member of the little circle club all changed their monikers to two letter initials.
Malcolm Mooney went to MM
Leopold Bloom went to LB
MaxDrei went to MD
Hmmmmm.
Lacking Brains.
But, that is what I mean by iron age thinking. They only find concrete objects eligible.
Doesn’t that make it “concrete age thinking”?
Actually, it would be instructive to get that Fish attorney’s analysis of Diehr since he used it to defeat the claims in Prometheus. I remember that the basis was what was considered new and he had an argument that the only reason in Diehr it was held eligible is that it was the first time a process had included a interactive checking. He had two theories of why it was held eligible (both wrong or should be wrong and both essentially trying to hold Benson as good law).
But, his arguments are no doubt going to be used again in the great software case that will go to the SCOTUS soon.
Well, anon, the analysis of Diehr is complicated. I took the CLE where the Fish attorney who did Prometheus analyzed Diehr. I seem to recall his arguments were so convoluted as to be beyond remembering, but he won Prometheus.
My point was simply that because there was that rubber is why they held it eligible. The SCOTUS has completely discounted information in patent eligibility–outrageously.
But, that is what I mean by iron age thinking. They only find concrete objects eligible.
The thing about Diehr was that the physical object being made was not new.
The only thing new in Diehr was the computer program that took the (old) thermocouple data, applied the (old) Arrhenius equation, and opened the (old) door to produce an (old) mold. The new was the ability to apply the computer program with a GREAT COMPUTER BRAIN, and thus do a better job of opening the (old) door.
The whole thing is bizarre the way the SCOTUS has systematically used 101 to try and remove all modern inventions that are not a physical object. (Really, save for Diehr and you have to wonder if that was saved because it was making a physical object.)
Well, 101, I agree with your statements above regarding the math for scientific truths. But, converting numbers to different bases is not a scientific truth.
But,the big picture is right. Where is that line of what is math of a scientific truth and what is application. The other problem is Haliburton where they extended the exception to essentially applied math methods for the public policy reason that they didn’t want to stop other companies from building iron machines in a different way.
So, it is a slippery slope the SCOTUS has taken step after step of excluding everything but iron.
And, Lemley functional claiming nonsense is the other line of what is abstract. Lemley completely misrepresents functional claiming—to an extent he should have to resign from Stanford.
Fish scales: “Any thoughts as to how this opinion may effect the patent eligibility of business methods, software and “abstract ideas” (whatever they heck they are)?”
101 Integration Expert: I do not believe this will effect business methods or software because it appears to be a cut and dried product of nature exception. (Oh, and BTW, congratulations anon. That was a very impressive prediction not only on the outcome, but on the rationale as well.) The Court has been clear on what it believes is abstract, such as a fundamental truth; an original cause or a motive. Business methods and software per se do not meet that definition. Some have confused mathematical equations and formulas with abstract ideas but such reasoning is incorrect. Mathematical equations are not eligible when they represent laws of nature, physical phenomenon, or some other scientific truth. If that other scientific truth is a product of nature, and the claims present nothing beyond the math equation and formula, then the claims would be ineligible under the product of nature exception. Which would have nothing to do with business methods, software or abstract ideas.
PART V
But I ask, what use is a sat dish, TV Set, Cell Phone, or even a computer without the processes and systems for using them? Maybe the honorable Judge Lourie, or the esteemed members of the Versata Board can answer this question for us. If not the Supreme Court surely will!
PART IV
The irony is the lower courts have gone to the extreme to the point that not only the intellectual concept and any math that may represent it is excepted, but the information processing inventions such concepts have made possible are also excluded! Thus ALL progress is r-e-t-a-r-d-e-d! Theses judges think, yes it’s fine to get a patent on a satellite dish, thats an iron object, or maybe even a television set itself. But a patent on just the system and process for using or improving the use of such objects is forbidden!
PART III
I tend to agree with the Court’s thinking. Imagine if I invented or discovered the Photo Electric Effect or Einstein’s General Theory of Relativity and had a patent on the concept and the math equations? I would then be able to prevent all applications beyond the math. That would remove the basic tools of scientific work from the public domain. The inventors of systems and processes for satellites, cell phones, television networks, and all modern information processing would have to pay me a royalty.
NWPA: “Of course you are right 101 about the “preempt an abstract idea” being the most intellectually dishonest part. That is so farcical. Abstract idea was meant to prevent patents on things like a stitch in time saves nine. But, you know even this is wrong. ”
PART I
Also, I seem to recall reading in Supreme Court case law they were concerned someone might patent an idea like Einstein’s General Theory of Relativity. Thus the proscription for patenting abstract intellectual concepts. But Alice and even Versata come no where close to claiming an intellectual concept like a theory of General Relativity. The Court then reasoned that someone might also come up with the mathematical calculations for such a theory, as Einstein did. And even though the math equations are not abstract, the Court reasoned that such equations would represent “scientific truths” and would in effect be the same as patenting intellectual concepts like the general theory of relativity itself. So once again the proscription against patenting disembodied math equations, like e= mc square.
Try reading what I actually said Malcolm. There is a clear comparison between what instigates the ‘need’ for Leopold to speak up (and it is the little red cape of ‘anon said’).
Keep up son.
LOL.
Did you have a point with that post, Malcolm? Other than displaying the inability to read my post as suggested, or to realize just how much of a hypocrite you are with your own use of the N word?
Did you really need to draw the attention to your own failings even more?
Clearly, I am impugning the Robes – not the race.
Uh … what?
the one of two people to have ever used the N word on this blog.
God, you’re one f—ed up a–h0le.
LOL – coming from the one of two people to have ever used the N word on this blog.
Hypocrite, why don’t you read my post at 9:45.
Especially on the day that another Hit1er video makes an appearance on the blog – and you are quiet about that.
Your cheerleader skirt is showing.
the GroupofEightandThreeFifthsBlackRobedTr011s.
What. The. F?
Leopold – you are taking offense much too easily. Clearly, I am impugning the Robes – not the race.
Let’s not start shooting arrows at the wrong target (again). Let’s not aim for another version of the crybaby’s veto.
anon, that’s pretty offensive, even considering the source.
“We will not let our implicit reading become a dead letter – even if that means that someone will have to challenge the constitutionality of our actions. The constitution is what we say it is and we are never ever ever wrong”
rumored to be overheard from the GroupofNineBlackRobedTr011s – or is it the GroupofEightandThreeFifthsBlackRobedTr011s.
Sad really that the federal circuit is so deficient in their love of patent law that these arguments don’t even occur to them. They are robots that paid their dues to get on the fed. cir. and could care a less what happens to the patent system (save for a few–Rader, Newman, maybe Moore, and O’Malley.)
I think this point should be pushed much harder. That the SCOTUS is simply refusing to follow the 1952 act. They don’t even seem to reference the statute, but only their own precedent. Outrageous behavior on their part.
The other thing about this is that all these judges that Obama is appointing seem to have no experience (in general) with patent law and don’t even seem to have any appreciation for this giant issue.
It is after all the response the federal circuit should be giving the SCOTUS—you guys are NOT following the statutes but common law that was meant to be over ruled by the 1952 act. (Certainly 101 flash of genius was and I think all of it was meant to be over ruled.)
Quick 6, grab that time machine – the notion of the Supreme Court not following the 1952 act and the taking away of the common law path to defining invention (and codifying such in 103) as opposed to the atom bomb of 101 was an original thought at some point in time. We need to run to that time machine and make sure that Rader and Quinn say it first.
I mean stitch of course.
Of course you are right 101 about the “preempt an abstract idea” being the most intellectually dishonest part. That is so farcical. Abstract idea was meant to prevent patents on things like a stick in time saves nine. But, you know even this is wrong. As there initial fear was that patents would be granted on an abstract idea as such—meaning that no art could be applied as this was a new abstract idea. But, that is not the modern patent system. A stick in time saves nine would easily be dealt with 102 and 103 now. But, you see they were afraid that a species couldn’t be applied to the claim as it was an abstract idea. Now the logic of the abstract idea abstract is no needed at all with 102, 103, and 112. THIS IS ANOTHER EXAMPLE OF THE SCOTUS REFUSING TO COMPLY WITH THE 1952 PATENT ACT.
I agree mainly with your analysis 101. And it is a Kangaroo court. And, I have read that they are talking about extending the covered business method review to all patents. So, all patents may come under this type of Kangaroo analysis. (And to be clear if the PTO can get its act together and reduce the backlog then this could be the primary litigation route for patents—be afraid.)
Seems to me the problem is that if any claim that involves any computation is classified as a law of nature, then it is hard to fight this type of “logic.” It is ridiculous to say that all these heuristic methods are laws of nature. Haliburton is the case that breaks this logic as in Haliburton the SCOTUS explains that the “logic” of putting all of these in laws of nature is so that other people can build other types of lab equipment to implement the “mathematical method.” You see the public policy reason for this vast grab no longer exists.
Their logic breaks down too at the hardware/software boundary and at the list of exceptions such as doing computations on an image of a real object is a type of transformation. I think the way forward is to push on these breaking points of their logic. The “other ways of doing” it is another breaking point that does not hold water in other areas of patent law. I mean you don’t say well, you can claim fiber optic cable as long as you can also show there are three other ways of sending light over a glass cable. Now do you?
And, consistently that is what happens with these types of arguments. If they break down and seem ridiculous in other areas of patent law, then it is a good indication that they are Kangaroo logic.
We do need to amplify our voices, though. Lemley needs to challenged publicly for academic dishonesty, for example.
You know, this abstract thing came about after they lost their battle for all numbers to be a law of nature and now they seem to be winning on both fronts.
The biggest problem we have now is that Obama is singing their songs–what a dope that guy is. I voted for him twice but you can see he has turned into a bubble person that has no clue what reality is.
Overall, of course, this is excellent 101. We need to amplify our voices and confront Lemley, Lourie, Stern, etc.
One problem: the law of nature from Benson if often taken by the anti’s to mean any mathematical algorithm which results in a mathematical computation.
NWPA said “He will see instantly that if the covered business method review is expanded then all patents to do with software can be funneled into the kangaroo court. And, now we do not appear to have the Fed. Cir. to stop the burning.”
Please tell me the law offers some recourse to an applicant or patentee that has their invention invalidated under the covered business method review!?!?!?
The proceeding was Part Four. This is Part Five.
WARNING. Now we are entering the height of intellectual dishonesty by the Board.
“Versata contends that there are many ways to practice the abstract concept of determining a price through arranging customer and product data hierarchies that fall outside the scope of the claims. PO Resp. 26-27. Yet, the fact that the claims could be drafted differently does not demonstrate that the additional limitations are meaningful. Flook, 437 U.S. at 590 (“A competent draftsman could attach some form of post-solution activity to almost any mathematical formula . . . .”), 593
( Flook is referring to claiming a mathematic formula that represents a scientific truth. Versata claims no such formula so there are no steps that are appended, and therefore no post-solution activity to any formula. The case law is misapplied. Again, Versata is claiming an “integrated” process that also includes technology, although there is no requirement by statute or case law even for that inclusion. )
“We conclude that Versata’s claims do not add meaningful limitations beyond the recited abstract idea and, in practical effect, preempt the abstract idea.”
The Board’s conclusion loses considerable credibility because it ignores Versata’s contention that the concept is not pre-emtpted then concludes without evidence, that the claims “preempt the abstract idea”. If this was an intellectually honest board they would have fully considered any examples of Versata’s that demonstrated for a fact the claims did not pre-empt the Board’s alleged concept and abstract idea of the invention. In effect this Kangaroo Review Board convicts without even considering evidence that could prove they are wrong. A sad day for Patent Law and Inventor rights.
SAP contends that Versata’s claims do not add anything beyond routine, conventional activities to the unpatentable abstract concepts. Pet. 18. The abstract nature of the claims is said to be confirmed by the fact that the claimed data arrangements and pricing calculations can be performed manually. Id.
(SAP is incorrect because a process that can be performed manually is neither abstract by the statute, or by any case law from the Supreme Court of the United States of America.)
Versata contends that patent eligibility must be evaluated considering each of the claim elements in [combination], and that the challenged claims include specific separate and distinct steps that are not general or abstract in any way. See, e.g., PO Resp., 15. For example, Versata states that SAP has failed “to address the storing, retrieving, sorting, eliminating and determining steps required by claim 17 and their [interrelations] with one another and with the arranging steps.” Id. at 16. Emphasis added.
( Versata is correct in that the claims must be evaluated as a whole. Furthermore, evaluating Versata’s claims in combination and the interrelation of the elements with one another is called “integration” and is doing no more that what the Supreme Court has set forth as the example of what “is” patent eligible subject matter. See the oft cited and always ignored instruction from Prometheus as follows.
” In Diehr, the overall process was patent eligible because of the way the additional steps of the process “integrated” the equation into the process as a [whole.] 450 U. S., at 187. These additional steps transformed the process into an inventive application of the formula. ) [MAYO COLLABORATIVE SERVICES v. PROMETHEUS LABORATORIES, INC 566 U. S. (2012) 3 Syllabus] (Emphasis Added)
(The absence of the forgoing passage from Prometheus by the review Board is quite conspicuous. Especially when relying on Prometheus for authority to determine what is and is not patent eligible subject matter.)
Part Three
“SAP contends that Versata’s claims are unpatentable under § 101 as they are centered on abstract ideas. Pet. 17. at 18. SAP further states that the claims merely recite “abstract ideas with nothing more than ‘well-understood, routine, conventional activity’ added.” Id., citing Mayo, 132 S. Ct. at 1294.”
( Sap is incorrect. The Supreme Court has so stated that an abstract intellectual concept is a fundlemental truth, an original cause or motive. Versata makes no such claims. Furthermore Mayo is referring to steps added to a claim of a mathematical equation or formula that represent a LoN, Natural Phenomenon, or “scientific” truth. Again Versata makes no such claim(s) and therefore SAP has missapplied the law)
“SAP states the abstract nature of the claims is demonstrated by the fact that the method steps can be performed in the human mind or by a human using a pencil and paper. Id.”
(Again, SAP is incorrect, the example of method steps that can be performed in the human mind or by a human using a pencil and paper are only used by the Supreme Court for a claimed mathematical equation, formula, or other scientific truth. Versata does not makes no such claims of a mathematical equation, formula, or other scientific truth, therefore the analogy is misapplied)
Part Two:
In Benson…..The Court concluded that the claims sought to “pre-empt the mathematical formula and in practical effect would be a patent on the algorithm itself.” Id. at 71-72. Accordingly, the claims were held unpatentable under § 101.
( There is no mathematical equation being claimed by Versata. Therefore the analysis is misapplied with no legal authority. )
“The Court further recognized that purely “conventional or obvious” limitations are “normally not sufficient to transform an unpatentable law of nature into a patent-eligible application of such a law.”
(Again, there is no law of nature claimed. The analysis is misapplied with no legal authority
NWPA:This opinion from the PTAB is big.
101 Integration Expert: Yes, one big misapplication of the law. Here is part one of my dismantling of this opinion. Part one.
“A claim is not patent-eligible where it merely recites a law of nature and adds additional steps that merely reflect routine, conventional activity of those who work in the field. Id. at 1298.”
(There is no law of nature claimed. The analysis is misapplied with no legal authority.)
“Further, the “prohibition against patenting abstract ideas ‘cannot be circumvented by attempting to limit the use of the formula to a particular technological environment’ or adding ‘insignificant postsolution activity.’” Bilski, 130 S. Ct. at 3230 (quoting Diehr, 450 U.S. at 191-92).
( There is no formula being claimed. The analysis is misapplied with no legal authority. )
NWPA said : “J. Lourie: There are no other steps besides 101. The procedure is as follows. Look over the invention. If it looks like it shouldn’t be permitted to be a patent, then say it is abstract and not eligible.”
However, the Supreme Court says abstract intellectual concepts are recitations of a fundamental truth; an original cause or a motive. What Judge Lourie did in Alice is take an “integrated” process and disintegrate it, also called dissection. Clearly an illegal act.
And even after Lourie disintegrated Alice claims he STILL could not identify a single abstract concept of a fundamental truth; original cause or a motive. Yet he still declared all Alice claims as abstract.
A blatant violation of the law right in front of our faces. Yet very few have called him out it.
Are you sure you are banned and the odd filter isn’t just catching you? I get a lot of posts that don’t work because of words that you would think would be fine. Try just one word posts to see if you are really banned. Did Dennis send you email banning you?
anon: “….appreciate the work you have done in making the 101 analysis accessible and understandable at a simple level. And make no mistake, there are those with vested interests in NOT understanding. And make no mistake, there are those with such interests willing to make sure that others do not come to that understanding.”
Thank you very much anon. And trust me, I am under no illusions about the lengths they will go to do just that! Why else would I now have had two IP addresses blocked in a row?
It certainly seems more than suspicious that shortly after I make a post on “Integration Analysis” suddenly IP addresses no longer work on Patently o
Obviously the powers that be do not want this information to get out or be discussed. While commenters like MM, Ned and 6 are allowed to run roughshod over the blog, and completely misrepresent the law at will.
I have grown tired of having to jump thru hoops and use different machines, ISP’s and screen names just to make a simple honest post on the current state of the law. So I will be taking my fight to the real world. I may be banned from posting but I am not going away. You, NWPA, and E.G. keep up the great work here. And to the Anti Patent crowd. See you at the Supreme Court!
People who wish not to see, who run around with their eyes tightly clenched, will not appreciate the work you have done in making the 101 analysis accessible and understandable at a simple level.
And make no mistake, there are those with vested interests in NOT understanding.
And make no mistake, there are those with such interests willing to make sure that others do not come to that understanding.
These are not constrained by intellectual honesty, or honesty of any sort.
>
> LB said: Hey 101 Integration Expert, can you do us a favor and
> perform integration analysis on this claim:
>
> 101 Integration Expert said: LB, now that I have read the
> specification, studied the drawings and all claims, I would be glad to apply “Integration Analysis” to the claims in question, in order to establish 101 statutory subject matter. We begin with the clear and unambiguous letter of the law, 35 USC 101, and ask; Are the claims a process? The answer is, yes. Since the claims are a process under 35 U.S.C. § 101 and meet the definition of Process under 35 U.S.C. § 100(b) the claims are physical, and are legally not abstract. However, this does not mean the claims pass 101 and are statutory subject
> matter. The Supreme Court has created exceptions, derived implicitly from the statute. Therefore, we must ask 3 more questions as required
> by the Court. Are the claims a Law of Nature? The answer is, no.
> Are the claims a physical phenomenon? The answer is, no. Are the claims a mathematical equation or formula representative of a Law of
> Nature, Physical Phenomenon, or other “scientific” truth? The answer is, no. In such a special case as when the answer is yes, in addition to the mathematical equation or formula, the claim would need at least one additional step that limited the process so that the claims as a
whole did not pre-empt the LoN, Natural Phenomenon, or “scientific” truth. Furthermore, if the additional step(s) were present, or added and the LoN, Natural Phenomenon, or “scientific” truth itself were
> still pre-empted by the claims as a whole, the additional steps would be counted as extra-solution activity, and the claims would still fail 101. Next we ask; Do the claims recite an intellectual concept such as
> a fundamental truth; an original cause or a motive? The answer is,
> no. In which case we are now required by law to take the claims as an inseparable whole( integrated ) and determine if they are new and useful, if so they pass 101 and we proceed to the other sections of the statute to see if they meet those conditions and requirements. And that my friends is an example of “Integration Analysis” A clean,
> clear, concise and accurate application of the law.
>
> Any questions?
” act of violence against patent law. ”
o noes! an act of violence agin patent lawl! The horror! The humanity!
On a more serious note, is an act of violence agin patent lawl more or less serious than a normal act of violence? Than domestic violence?
Hey NWPA, when are you going to stop beating your patent system?
“But they punted”
They didn’t punt Ned, Je sus Chris t on sale, I just got done telling you exactly how they’d rule, a thousand times, and explained why. They did, with the exact same rationale. And you come back and say that “following the law” is somehow “punting”?
You’re a ta rd Ned. There’s little else to be said.
With all due respect to Michael Stipes:
I thought that I heard Malcolm sing
Trying to keep up with you
And I don’t know if I can do it
Oh no, I’ve said too much
I haven’t said enough
Yes, JD. Maybe one the of bio experts can disabuse me here, but my take away is: Client – i have discovered a break thru compound that cures cancer. It cost us 1 billion in testing and exploration of the most obscure life forms on the planet. IP Attorney – under Myraid – you need to keep the compound a trade secret because it is found in nature – and is therefore has an absolute bar to patent – not even patent eligible. – but you are free to patent all kinds of applications of the discovery. Under the AIA you can keep the best mode from disclosure – because failure to disclose the best mode (in our example the break thru discovery of the naturally occurring compound) is not a defense to a patent.
Back to me: On reading Myraid, sounds like you bio and chemical guys and can work around it. Tis, breathtaking, however, to see that every compound that can be ‘isolated’ from nature is going to NEVER EVER be eligible for patent. I would have thought our society would want to encourage this type of exploration, discovery and DISCLOSURE. Meh, guess SCOTUS has got it all figured out for us.
I need to get the time machine back to 6, since I had to use it to copy Rader and Quinn to get this ‘unoriginal thought’…
You really should be more afraid of the power grab.
While they only address a small reason for the use of the power grab in this decision, the logic they use is open-ended.
This is literally an Article 1 court, subservient to a pure executive branch, (well, the fourth branch of the government… – but the head of the PTAB is still the head of the USPTO), with no apparent check to the law it can write, it can decide what it means and what it can enforce. ZERO checks and balances.
Perhaps there are some serious constitutional separation of powers issues here…
J. Lourie: There are no other steps besides 101. The procedure is as follows. Look over the invention. If it looks like it shouldn’t be permitted to be a patent, then say it is abstract and not eligible, otherwise go ahead and give them a patent.
This part of Benson is ignored:
(funny, just as you have always ignored it Ned, as you have NEVER answered my request for you to address this quote – EVER)
“It is said that the decision precludes a patent for any program servicing a computer. We do not so hold.“
It is also the losing side of Bilski.
The jurisprudence in the decision is abysmal.
You see they keep morphing. They are very clever. Lemley has hits this at every angle possible. He will be all over this. He will see instantly that if the covered business method review is expanded then all patents to do with software can be funneled into the kangaroo court. And, now we do not appear to have the Fed. Cir. to stop the burning.
If you read the opinion it is just like Benson. I till cannot for the life of me understand how anyone can with a straight face recite the Benson “logic.”
I suppose 101 is right that it is possible that the SCOTUS might fix this. Possible. If you have to rely on the SCOTUS to get something done, though, you are desperate.
I agree anon. Actually, with a little thought everyone should be very afraid of this decision. We see the nonsensical logic of Benson being applied (if you can use that word) and a Puppet Court. All, they need now do is expand the covered business method patent to all software/hardware and there go all the patents. It will only cost you about $100-$200K now to burn down a patent.
“Benson is controlled by Diehr”
As is Flook.
See Bilski.
P1sspoor jurisprudence from this Article 1, Super Examiner, Puppet Court.
“The results of basic scientific research should be considered a “public good” (in the economic sense), and direct compensation – if any – should be provided under a “liability rule” rather than a ‘property rule’.”
Not sure how logically you made that jump – such is unconnected to anything in this case. Quite in fact, the model you advocate has been a dismal failure from the historical record.
Your inclusion of ‘ethics’ is likewise misguided, one-sided, and without support. Please do not assume a (false) moral position based on your ideology.
Thanks.
Benson is controlled by Diehr. The Board did not properly consider all elements of the claim.
We’ve taken a detailed look at the Myriad decision on IPcopy – link to ipcopy.wordpress.com
This opinion implicitly but solidly rejects the idea voiced recently by CAFC members (notably Newman and Rader) that patents are needed to foster private basic scientific research. In that respect, it can have far-reaching consequences.
But the SCOTUS is right. if only because patents are not for facts but for acts (that can be carried out by a PHOSITA).
The results of basic scientific research should be considered a “public good” (in the economic sense), and direct compensation – if any – should be provided under a “liability rule” rather than a “property rule”. Because the latter type of rule gives too much power to its owner (as Calabresi and Melamed explained in 1972). And Myriad indeed has shown to abuse this power, perhaps legally permissible, bit not ethically.
Learn the different rules, roles and meanings of the patent law sections.
Timing is not a 101 issue. “Routine,” and hence timing, is a 102/103 issue.
Thanks.
Patents law must keep itself in step with the recent advancements. In today’s world, isolation of DNA is a routine technique. Way back in 1980s and 90s it was a miraculous thing to do. Therefore, I should think, claims reciting isolated DNA do not merit patent protection. Any comments?
Leopold Bloom: “Hey 101 Integration Expert, can you do us a favor and perform integration analysis on this claim”
Hello Leo:
This is not an integration problem. It’s a broadest reasonable interpretation (BRI) problem. The Board, in it’s broadest reasonable interpretation, has read out all all significant limitations, and statutory elements in the claim to the point there is only an abstract concept left with no physical process the concept can be integrated into. But I ask you Leo, does that sound reasonable?
If it’s legally possible, this inventor needs to appeal and at least get to the CAFC where the claims can be interpreted in light of the specification. But even then it is a roll of the dice depending on which panel you get. And with more Obama appointees getting on the bench and judges like Linn leaving that gamble is getting greater everyday. Ultimately what needs to happen is another case like Diehr in which an inventor or patentee goes all the way to the Supreme Court and explicitly argues the following:
If it pleases the Court, in Prometheus this Court said Diehr was the case most on point for what is patent eligible subject matter, then proceeded to instruct that: “in Diehr, the overall process was patent eligible because of the way the additional steps of the process [integrated] the equation into the process as a whole. 450 U. S., at 187. These additional steps transformed the process into an inventive application of the formula. ) [MAYO COLLABORATIVE SERVICES v. PROMETHEUS LABORATORIES, INC 566 U. S. (2012) 3 Syllabus] (Emphasis Added)
From there the inventor should be prepared to show how their process precisely conforms to the Court’s rationale and analysis for integration. I believe once this happens you and the rest of the anti’s will be shut down for another 30 years, just like after the Diehr.
”
“Help me with this, why would CLS make it to the Supremes? Assuming Alice is a rational actor, and that they see that the case has a potentially negative outlook at the Supremes, why would they petition for cert?”
First of all Diehr challenged the PTO in the wake of Flook and won it’s case. And I think most would agree that Diehr had a potentially negative outlook with Flook and Benson before it being the reigning precedent. So one should never be cowed and simply give up because a lower court rules against you.
Second, your assumption is wrong because Alice has a very positive outlook at the Supreme Court when viewed thru the lens of the Court’s use of “integration” to determine what “is” statutory subject matter.
If Alice had claimed a math equation that represented a law of nature, or natural phenomenon, and the equation was limited to use on a computer, then I would agree, the potential for the Court to affirm would be significant; since that is precisely what the Court has said is non statutory subject matter regarding computers and software.
However, Alice has made no such claim. The concept of Alice’s invention is not disembodied at all, but is instead “integrated” into a physical process and a system utilizing machines, which according to the Supreme Court, transforms the process as a whole into an inventive application of the concept, and thus makes the claims statutory subject matter. See Prometheus, Diehr, and CLS Bank v Alice, Rader dissenting.
A sharp, learned, and gutsy patent attorney would challenge the CAFC decision using the Courts “Integration Analysis” as the template and foundational core of his/her argument, and win! Hope that helped.
My scribe just came in with the stats for the three Myriad threads:
Number one for quantity of posts: Malcolm (aside from me – but I do care and I am gloating).
Better yet, Malcolm has more than three times the average words per post than I (with quotes and requotes removed).
Yep – shows just how much he doesn’t care.
/eyeroll
LOL – and still he does not have the nuts to admit that I was right and he was wrong.
I’ll add based on MM’s “we merely hold that genes and the information they encode are ineligible simply when isolated” comment above, what does this do to the 100+ antibodies in clinical trials? There may be some screening involved but antibodies basically come from naturally occurring sequences do they not?
Whoops – “an aberration”
Wasn’t “isolated” using definitions and embodiments typically essentially a claim about a degree of purification and therein was the novelty? Beyond that Thomas says isolation is necessary to do genetic testing, but it isn’t is it unless he changed the definition?
In any event, I think this further decreases the likelihood companies will try and enter the markets (OTC or lab) for gene-based diagnostics, including for emergent viruses & bacteria. Such diagnostic products were already considered by many not worth the risk and the margin. That would leave MDs open to set the frequency and cost of such tests (and wasn’t that what this case was about – a doctor running his own version of the test and charging for it vs. paying for the patented test?). Myriad’s test was a aberration in terms of its cost, so to me this means test costs will rise as will the use of such tests since it’s an additional revenue stream for MDs.
Further this means new genomes are more likely to go trade secret now rather than enter public databases via patents, as anyone who has used, for example, BLAST via NCBI and the “pat” database will be aware. I’d consider that a negative for research.
So, IANAE, you told me that I didn’t understand the science of Myriad and yet I understood it well enough to predict the outcome and the reasoning and the case they would cite.
You really an ignorant p$g. I challenged you to make a prediction on Myriad, but you didn’t. You see IANAE your lame little games are pretty transparent when you have to actually perform real legal analysis. Then you come off as the p$g that you are.
So, why the LOL? You sound like some twirp in a gang of laborers trying to insult the local lawyers.
your chem case
LOL
And just think IANAE, I accurately predicted the outcome of your chem case. I understood the science and correctly predicted the case they would most prominently cite.
You see, some of us care about patent law and take the time to make reasoned arguments and remedy our ignorance.
You should reflect on this.
Really, IANAE, is it silly? What do you think I meant then? Can you figure that out?
You are right in that “Turing complete” is a bit of a slang term. But, “barely even nonsense”? Not really.
You know, IANAE, you come off as a p$g. A person that is intentionally ignorant and wants to use the ignorance to commit an act of violence against patent law. You seem to wallow in your ignorance and think you are cute or clever. You are neither. You come off as a sociopathic p$g.
you have told me you don’t even know what the Church Turing Thesis is.
Pretty sure I’ve never told you that. Also, pretty sure you did tell me that “software is Turing complete”, which is so silly it’s barely even nonsense.
Anthropomorphication
Sorry INANE – you laugh at yourself, by yourself.
“instructions to do math” is applied math.
LMAO
INANE’s specialty is trying to be a smart-@$$, and leaving out the smart.
It’s only become worse over time as the cumulative effects of Calvinball face sp1kes present themselves.
Sorry INANE, “instructions to do math” is applied math.
Applied math is statutory subject matter in all fields.
IANAE: you have told me you don’t even know what the Church Turing Thesis is. Perhaps, given how annoyed you and the other chem people are regarding this SCOTUS opinion, you should consider trying to educate yourself on information processing.
You may find that there is merit in our arguments. And, you may find it more rewarding to actually contribute to the conversation rather than being one of the p$gs who make outrageously ignorant statements.
You know IANAE, you should use this time to reflect that perhaps you are ignorant regarding these matters.
Consider how to tell the difference between software/hardware.
And what is the difference between “instructions” and method steps? Aren’t all your chemical methods really just a set of instructions?
Allapat is still good law.
method of use claims that do not involve a non-obvious step.
Were those valid before?