Ariosa v. Sequenom Athena Diagnostics v. Mayo Collaborative Services Books CAFC Courts Federal Circuit Guest Contributor Guest Contributors innovation inventor Inventors Information IP News IPWatchdog Articles Litigation patent patent eligibility patent eligible Patent Litigation Patents SCOTUS technology Technology & Innovation US Supreme Court

a Paradigm of Patent Eligibility Meriting En Banc Review

a Paradigm of Patent Eligibility Meriting En Banc Review

“The Mayo/Alice framework wants reconsideration to put pioneering or breakthrough innovations and incremental innovations on a degree enjoying area. No such drawback is imposed on inventors in Europe and there’s no credible coverage justification for such illogical and harsh remedy.”

In Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1376 (Fed. Cir. 2015) the Federal Circuit belittled pioneering work at Oxford College, indisputably one of many world’s main analysis establishments. Within the Athena Diagnostics v. Mayo Collaborative Providers choice handed down early in 2019, the Federal Circuit surpassed itself by belittling pioneering work representing the mixed efforts of Oxford College and the Max-Plank Gesellschaft, two of the world’s main analysis establishments. A petition for en banc assessment has been filed and is supported by amicus briefs. This text additional helps the necessity for assessment, emphasizing insufficient consideration paid to the constructive eligibility provisions of 35 USC 101, battle with Diamond v Diehr, an inadmissible extension of admissions inside the patent description relating to a genus of methods to cowl a beforehand undisclosed species of methods inside the genus, and the necessity to give equal remedy to those that make pioneering innovations or discoveries and people whose innovations or discoveries are incremental.

The Athena Topic Matter

As defined within the background to the bulk opinion, Athena Diagnostics is the unique licensee of U.S. Patent 7267820 (Vincent) overlaying strategies for diagnosing neurological issues by detecting antibodies to a protein referred to as muscle-specific tyrosine kinase (MuSK). Particularly, the strategies are helpful for diagnosing Myasthenia gravis (MG), which is a neurological dysfunction the place sufferers expertise muscle weak spot and signs together with drooping eyelids, double imaginative and prescient, and slurred speech.

The topic-matter claimed in declare 9 of Vincent US 7267820 on which the panel majority in Athena targeted is as set out under:

A way for diagnosing neurotransmission or developmental issues associated to muscle particular tyrosine kinase (MuSK) in a mammal

comprising the step of detecting in a bodily fluid of stated mammal autoantibodies to an epitope of muscle particular tyrosine kinase (MuSK), comprising

contacting MuSK or an epitope or antigenic determinant thereof having an appropriate label thereon, with stated bodily fluid, whereby stated label is a radioactive label and is 125I,

immunoprecipitating any antibody/MuSK complicated or antibody/MuSK epitope or antigenic determinant complicated from stated bodily fluid and

monitoring for stated label on any of stated antibody/MuSK complicated or antibody/MuSK epitope or antigen determinant complicated, whereby

the presence of stated label is indicative of stated mammal is affected by stated neurotransmission or developmental dysfunction associated to muscle particular tyrosine kinase (MuSK).

The above technique might be understood close to the disclosed embodiment just about the next diagram, with merchandise of nature proven above the horizontal line and merchandise created by human intervention proven under the horizontal line:

The panel majority held that the declare was directed to a pure regulation, i.e. the correlation between the presence of naturally occurring MuSK antibodies within the bodily fluid and MuSK-related neurological illnesses. Nevertheless, applicable and crucial consideration to element would have revealed course of steps of a qualifying transformative character, and particularly to the next ordered mixture of steps:

  • offering bodily fluid of a mammal, implicitly as an remoted pattern (column 5 strains 18-19);
  • offering 131I-labelled MusK or an epitope or antigenic determinant thereof, being a novel compound disclosed neither in Valenzuela WO 97/21811 cited by Vincent nor in earlier-dated Bowen US 5814478, apparently the earliest disclosure of the MuSK protein.
  • reacting the labelled MuSK or fragment thereof with the antibody within the pattern to supply an autoantibody/labelled MuSK complicated, a second novel compound; and
  • additional reacting the complicated produced with an immunoprecipitating agent (e.g. sheep IgG) to type an immunoprecipitated Three-component complicated which is a 3rd novel compound and is used for radioactive counting.

Will probably be obvious that three of the 4 eligible subject-matter classes of 35 USC 101 are related to the claimed subject-matter.

Analyzing Eligibility Elements

Every of the 135I-MuSK, the autoantibody complicated and the immunoprecipitated complicated falls straightforwardly inside the eligible “composition of matter” class, not being directed to a single substance however to a composite article, see Chakrabarty, 447 U.S. at 308, citing Shell Improvement Co. v. Watson, 149 F. Supp. 279, 280 (DC 1957). No authority helps the proposition that a novel chemical compound created by the mixture of separate entities is aside from patent eligible. Particularly, no such conclusion could be drawn from the Supreme Courtroom opinion in Affiliation for Molecular Pathology v. Myriad, the place Thomas J. acknowledged cDNA as distinct from a naturally-occurring materials and as unquestionably one thing new created by a lab technician, however that every of the nucleotide sequences within the cDNA had been dictated by nature and never by the lab technician. Nor ought to steps involving these new compounds be dismissed as “typical steps specified at a excessive degree of generality” as in Mayo Collaborative Providers v. Prometheus Laboratories, Inc., 566 U.S. 66 (2012) since steps involving compounds new to science can’t legitimately be considered “typical” or “non-routine steps” however as contended by Athena are directed to a brand new laboratory method that makes use of artificial molecules.

Additionally it is plain that the immunoprecipitated Three-component complicated qualifies as a “manufacture” being a newly created article in a brand new type (precipitated materials), with new provenance and with new utility (suitability for radioactive counting), all of that are attributes of eligibility as a “manufacture” underneath the standards in Hartranft v. Wiegmann, 121 U. S. 609, 121 U. S. 615 (1887), quoted with approval in American Fruit Growers, Inc. v. Brogdex Co., 283 U. S. 1, 283 U. S. 11 (1931), Diamond v Chakrabarty, 308  and Affiliation for Molecular Pathology v. Myriad Genetics, Inc  569 U.S. ___ , 133 S.Ct. 2107 (2013). The precipitated Three-component complicated has additionally turn into for each sensible objective a brand new factor commercially and analytically: Parke-Davis & Co. v. H.Okay. Mulford Co., 189 F. 95 (C.C.S.D.N.Y. 1911) (adrenalin),   Kuehmsted v. Farbenfabriken of Elberfeld Co., 179 F. 701 (seventh Cir. 1910) (aspirin), Merck & Co. v. Olin Mathieson Chem. Corp., 253 F.second 156 (4th Cir. 1958) (vitamin B12).

The claimed technique subsequently includes the manufacturing of patent-eligible new substances. No prior Supreme Courtroom or Federal Circuit determination helps the proposition that they need to not rely in the direction of Part 101 compliance merely as a result of they’re outlined in particular person steps in a multi-step technique and never in stand-alone compound claims.

The eye of the panel majority had been directed to the brand new compound situation, however it was dismissed in a footnote:

“We notice that the district courtroom held that the “focus of the claims” was the binding of MuSK to MuSK antibodies in bodily fluid. Determination, 275 F. Supp. 3d at 310. Our instances haven’t described a declare to the binding of two molecules throughout a sequence of chemical manipulations (right here, after MuSK labelling and earlier than immunoprecipitation) as a declare to a pure regulation, even when such binding happens in accordance with pure legal guidelines. We’d like not resolve that challenge right here, as we agree with Mayo’s identification of the pure regulation.”

It’s obvious that the alleged battle between constructive statutory eligibility as composition of matter options and judicial exception as a declare to a pure regulation was a big and extremely related authorized situation that cried out for decision, not least as a result of it concerned the doctrine of separation of powers. The necessity to interpret a statute as written and the inappropriateness of rewriting it have been just lately emphasised by Kavanaugh J. in Henry Schein v. Archer & White. Nevertheless, the necessity to take constructive provisions under consideration might be traced to older authority e.g. Bilski v. Kappos 561 U.S. 593 (2010) the place Kennedy J. defined that: “Considerations about makes an attempt to name any type of human exercise a “course of” may be met by ensuring the declare meets the necessities of §101.”

It’s also obvious that the general technique claimed falls as a matter of substance and never mere outward look inside the Part 101 class of “course of,” the water-soluble autoantibody beginning materials being reworked or decreased to the water-insoluble Three-component complicated which is a special state or factor: Cochrane v. Deener, 788, quoted with approval in Parker v. Flook, 59 see e.g. footnote 9, Diamond v. Diehr, 185, Bilski v. Kappos, Affiliation for Molecular Pathology v. Myriad Genetics  569 U.S. 576 (2013) and Alice Corp. v. CLS Financial institution Worldwide, 573 U.S. 208 (2014). The bulk in Diehr summarized its conclusion that the claimed rubber-curing technique involving the Arrhenius equation was patent-eligible within the following phrases:

“We view respondents’ claims as nothing greater than a course of for molding rubber merchandise, and never as an try and patent a mathematical formulation. We acknowledge, in fact, that, when a declare recites a mathematical formulation (or scientific precept or phenomenon of nature), an inquiry have to be made into whether or not the declare is looking for patent safety for that components within the summary…. However, when a declare containing a mathematical method implements or applies that components in a construction or course of which, when thought-about as an entire, is performing a perform which the patent legal guidelines have been designed to guard (e.g., reworking or decreasing an article to a special state or factor), then the declare satisfies the necessities of § 101. As a result of we don’t view respondents’ claims as an try and patent a mathematical method, however fairly to be drawn to an industrial course of for the molding of rubber merchandise, we affirm the judgment of the Courtroom of Customs and Patent Appeals.”

No legitimate distinction might be discerned between the rubber molding strategy of Diehr and the diagnostic technique of Athena. The claimed course of equally transforms the preliminary autoantibody into a special state or factor. The tactic of declare 9 can’t be considered an try and patent the correlation which was held to be a pure regulation, particularly because it covers solely a most popular considered one of two various detection strategies disclosed within the patent. The diagnostic technique is equal “an industrial course of” as a result of it’s commercialized on a mass-scale by medical diagnostic corporations.

The panel majority over-emphasized the doctrine in Supreme Courtroom precedent that a regulation of nature or different ineligible aspect must be handled as prior artwork, the place being defined in Diamond v. Diehr as follows:

“…we didn’t maintain in Flook that the mathematical algorithm couldn’t be thought-about in any respect when making the § 101 willpower. To simply accept the evaluation proffered by the petitioner would, if carried to its excessive, make all innovations unpatentable, as a result of all innovations might be decreased to underlying rules of nature which, as soon as recognized, make their implementation apparent. The evaluation steered by the petitioner would additionally undermine our earlier selections relating to the standards to think about in figuring out the eligibility of a course of for patent safety. See, e.g., Gottschalk v. Benson, supra; and Cochrane v. Deener, 94 U. S. 780 (1877).”

Repeatedly all through its opinion, the panel majority held that the claimed subject-matter was directed to a pure regulation as a result of the claimed advance was solely within the discovery of a pure regulation, and that the extra recited steps solely utilized typical methods to detect that pure regulation, this allegedly being an admission made within the description of the patent specification itself. Nevertheless, a extra logical evaluation of what was stated within the description is that the detection steps fell inside a genus of recognized immunoassay methods, which shouldn’t be held to be an admission that these steps thought-about as species inside the genus have been additionally typical. Certainly, the proposition that the radio assay method developed by Vincent was typical involving normal methods in a normal approach when it resulted in man-made compounds new to science is clearly self-contradictory.

The choice repeats the toxic doctrine that to provide an creative idea the sequence of claimed steps should do greater than adapt a standard assay to a newly found pure regulation; it should characterize an creative software past the invention of the pure regulation itself. The Mayo/Alice framework wants reconsideration to put pioneering or breakthrough innovations and incremental innovations on a degree enjoying area. Whereas incremental inventors solely should make a single invention or discovery, for eligibility these pioneering inventors have to make two innovations or discoveries. The return for the qualifying second invention is ashes: it’s left open to others to seek out methods aside from the second invention for performing the detection steps, after which these others can freely profit from the elemental discovery or breakthrough and the unique inventors obtain nothing. No such drawback is imposed on inventors in Europe and there’s no credible coverage justification for such illogical and harsh remedy, which was not meted out to James Watt, Samuel Morse or Alexander Graham Bell. A greater rule is in The Phone Instances 126 U.S. 1, 531 (1888):

“It might be that electrical energy can’t be used in any respect for the transmission of speech besides in the best way Bell has found, and that subsequently, virtually, his patent provides him its unique use for that function; however that doesn’t make his declare one for using electrical energy distinct from the actual course of with which it’s related in his patent. It’ll, if true, present extra clearly the good significance of his discovery, however it won’t invalidate his patent.”

The persevering with relevance of the rule within the Phone Instances was affirmed by Justice Stevens in Bilski v. Kappos, 561 U.S. 593 (2010), the place he stated, additionally close to O’Reilly v. Morse, 56 U.S. 62 (1853):

“One may assume that the Courtroom’s evaluation signifies that any course of that makes use of an summary concept is itself an unpatentable, summary concept. However we have now by no means advised any such rule, which might undermine a number of patentable processes.”

It’s to be sincerely hoped that the petition for en banc evaluation might be granted and that the current unsatisfactory choice will probably be reversed. Certainly, probably the most applicable consequence can be disapproval of the entire chain of unsatisfactory Federal Circuit selections in life sciences innovations, together with Ariosa.

 

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