{"id":23769,"date":"2012-04-03T22:05:55","date_gmt":"2012-04-04T02:05:55","guid":{"rendered":"https:\/\/ipwatchdog.com\/?p=23769"},"modified":"2016-04-01T18:32:26","modified_gmt":"2016-04-01T22:32:26","slug":"chakrabarty-controls-on-isolated-dna-sequences-not-mayo","status":"publish","type":"post","link":"https:\/\/ipwatchdog.com\/2012\/04\/03\/chakrabarty-controls-on-isolated-dna-sequences-not-mayo\/id=23769\/","title":{"rendered":"Chakrabarty Controls on Isolated DNA Sequences, not Mayo*"},"content":{"rendered":"
\"\"

Ananda Chakrabarty<\/p><\/div>\n

Not too surprisingly, the Supreme Court granted certiorari in AMP v. USPTO<\/em>, vacated the Federal Circuit\u2019s panel decision, and remanded for reconsideration in view of Mayo Collaborative Services v. Prometheus Laboratories, Inc.<\/em>\u00a0 On remand, the Federal Circuit is unlikely to \u201cresurrect\u201d the claims to the methods of \u201ccomparing\u201d or \u201canalyzing\u201d DNA sequences that were deemed unanimously by the Federal Circuit panel to be invalid<\/span> as being patent-ineligible under 35 U.S.C. \u00a7 101, and nothing in Mayo Collaborative Services<\/em> changes that result, but simply reaffirms it.\u00a0 But the story should also be no different for the claim directed to the method of screening potential cancer therapeutics that was unanimously upheld<\/span> by this same panel as being patent-eligible under 35 U.S.C. \u00a7 101 because the Supreme Court\u2019s reasoning in Mayo Collaborative Services<\/em> is distinguishable for reasons given in the original AMP<\/em> decision, as well as for reasons given in Judge Newman\u2019s opinion in the remand of Classen Immunotherapies, Inc. v. Biogen IDEC<\/em>.\u00a0 See The Way Forward from Mayo Collaborative Services is through the Classen Immunotherapies Remand*<\/a><\/strong>.<\/p>\n

Unfortunately this unspecific remand by the Supreme Court in AMP<\/em> vacates as well the two-to-one ruling by this same Federal Circuit panel (Judges Lourie and Moore in the majority, Judge Bryson in dissent) that the claimed isolated DNA sequences were also patent-eligible under 35 U.S.C. \u00a7 101.\u00a0 What, pray tell, does Mayo Collaborative Services<\/em> change with regard to that ruling in the original AMP<\/em> decision?\u00a0 For those, like the plaintiffs in AMP<\/em> (including the ACLU), who would like to upset this \u201capplecart,\u201d they\u2019re likely to be very disappointed.\u00a0 I can describe what should be the impact of the ruling (and reasoning) in Mayo Collaborative Services<\/em> on the claimed isolated DNA sequences in three short monosyllabic words:\u00a0 NONE AT ALL.\u00a0 And the Federal Circuit can (and should) say likewise, perhaps in far more words.<\/p>\n

First, the relevant claimed subject matter in each of these two cases is entirely different.\u00a0 In fact, the relevant claimed subject matter in these two cases falls into two entirely different statutory classes<\/span> described in 35 U.S.C. \u00a7 101.\u00a0 The claimed subject matter of Mayo Collaborative Services<\/em> is a method<\/span>.\u00a0 By contrast, the claimed isolated DNA sequences in AMP<\/em> are compositions<\/span> (i.e., chemical molecules), no matter how much the plaintiffs (and others) disingenuously focus attention on the so-called \u201cinformational content\u201d of these isolated DNA sequences.\u00a0 That means the Supreme Court\u2019s 1980 decision in Diamond v. Chakrabarty<\/em> (man-made living organism is patent-eligible) is far more analogous in terms of the claimed subject matter, and thus controls, not Mayo Collaborative Services<\/em>.<\/p>\n

[Bio-Pharma]<\/p>\n

Second, and certainly unlike the characterization of the methods in Mayo Collaborative Services<\/em>, these isolated DNA sequences are definitely not \u201claws of nature,\u201d or merely \u201claws of nature.\u201d\u00a0 Instead, like the organisms in Chakrabarty<\/em>, the claimed isolated DNA sequences are man-made, don\u2019t exist in nature, must, at the very least, be extracted and isolated from native DNA by using man-made techniques (and potentially by man-originated synthetic techniques), and are \u201cstructurally distinct from native DNA, and have different properties and utilities.\u201d\u00a0 In other words, and unlike what some have disingenuously said, we\u2019re not simply \u201cplucking a leaf\u201d in making the claimed isolated DNA sequences, and far from it.\u00a0 Mother Nature does not, (and more significantly cannot) \u201cisolate\u201d the claimed DNA sequences.\u00a0 Once again, the controlling ruling in Chakrabarty<\/em> says that which is \u201cman-made\u201d is patent-eligible under 35 U.S.C. \u00a7 101, and the claimed isolated DNA sequences are most definitely \u201cman-made.\u201d<\/p>\n

Third, I do hope we hear no more reference to the \u201cproduct of nature\u201d line of cases that was proffered by the plaintiffs and unfortunately relied upon by the district court in ruling that these claimed isolated DNA sequences were patent-ineligible under 35 U.S.C. \u00a7 101.\u00a0 See Foaming at the Mouth: The Inane Ruling in the Gene Patents Case<\/a><\/strong>.\u00a0 The applicability of the \u201cproduct of nature\u201d doctrine was not accepted by a majority of the Federal Circuit in the original AMP<\/em> decision, and it should definitely not be accepted now.\u00a0 Again, we\u2019re not talking about purified natural elements such as vanadium, uranium, or even tungsten.\u00a0 The claimed isolated gene sequence are not merely \u201cproducts of nature,\u201d or any such thing, but are, again, man-made, chemical molecules that \u201cnature\u201d cannot make.<\/p>\n

The plaintiffs in AMP<\/em> may be dreaming that the remand by the Supreme Court for reconsideration in view Mayo Collaborative Services<\/em> will change the result by the Federal Circuit on the patent-eligibility of the claimed isolated DNA sequences.\u00a0 In my opinion, that is no more than very wishful thinking for at least the reasons I\u2019ve stated.\u00a0 But it wouldn\u2019t hurt for the Federal Circuit to explicitly tell SCOTUS \u201cloud and clear\u201d that Chakrabarty<\/em>, not Mayo Collaborative Services<\/em>, controls the patent-eligibility of the claimed isolated \u201cman-made\u201d DNA sequences in AMP<\/em>.<\/p>\n

*\u00a9 2012 Eric W. Guttag.\u00a0 Posted April 3, 2012 on IPWatchdog.com.<\/p>\n","protected":false},"excerpt":{"rendered":"

Unfortunately this unspecific remand by the Supreme Court in AMP vacates as well the two-to-one ruling by this same Federal Circuit panel (Judges Lourie and Moore in the majority, Judge Bryson in dissent) that the claimed isolated DNA sequences were also patent-eligible under 35 U.S.C. \u00a7 101. What, pray tell, does Mayo Collaborative Services change with regard to that ruling in the original AMP decision? For those, like the plaintiffs in AMP (including the ACLU), who would like to upset this \u201capplecart,\u201d they\u2019re likely to be very disappointed. I can describe what should be the impact of the ruling (and reasoning) in Mayo Collaborative Services on the claimed isolated DNA sequences in three short monosyllabic words: NONE AT ALL. And the Federal Circuit can (and should) say likewise, perhaps in far more words.<\/p>\n","protected":false},"author":301,"featured_media":0,"comment_status":"open","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"_acf_changed":false,"content-type":"","footnotes":"","_links_to":"","_links_to_target":""},"categories":[82,228,3,586],"tags":[536,1991,3152,553,1082,2403,8767,8730,8750,2404,3956,2689,3955,1566,570,1599,1569,83,1918,910,248],"yst_prominent_words":[],"acf":[],"_links":{"self":[{"href":"https:\/\/ipwatchdog.com\/wp-json\/wp\/v2\/posts\/23769"}],"collection":[{"href":"https:\/\/ipwatchdog.com\/wp-json\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/ipwatchdog.com\/wp-json\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/ipwatchdog.com\/wp-json\/wp\/v2\/users\/301"}],"replies":[{"embeddable":true,"href":"https:\/\/ipwatchdog.com\/wp-json\/wp\/v2\/comments?post=23769"}],"version-history":[{"count":0,"href":"https:\/\/ipwatchdog.com\/wp-json\/wp\/v2\/posts\/23769\/revisions"}],"wp:attachment":[{"href":"https:\/\/ipwatchdog.com\/wp-json\/wp\/v2\/media?parent=23769"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/ipwatchdog.com\/wp-json\/wp\/v2\/categories?post=23769"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/ipwatchdog.com\/wp-json\/wp\/v2\/tags?post=23769"},{"taxonomy":"yst_prominent_words","embeddable":true,"href":"https:\/\/ipwatchdog.com\/wp-json\/wp\/v2\/yst_prominent_words?post=23769"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}