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Mayo Decision Impacts Myriad Genetics - Judgment Vacated, Remanded ~pj
Monday, March 26 2012 @ 07:16 PM EDT

As Dennis Crouch of Patently O earlier predicted, the world-changing Mayo v. Prometheus decision by the US Supreme Court is already impacting the other case regarding gene patents, Myriad Genetics. Today, the Supreme Court vacated and remanded [PDF] the case back to the Federal Circuit, telling it to take another look and come up with a ruling in harmony with their Mayo decision:

The petition for a writ of certiorari is granted. The judgment is vacated, and the case is remanded to the United States Court of Appeals for the Federal Circuit for further consideration in light of Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. ___ (2012)

Things are looking up in PatentLand. As for the Mayo decision and its implications for software, Rob Tiller, VP and Assistant General Counsel at Red Hat has a nice article on, Prometheus bound: An important precedent for the next software patent case.

Myriad Genetics is the case about whether human genes should be patentable, specifically genes for identifying the risk of breast and ovarian cancer. Arguing against such patents on the grounds that DNA is part of nature were the Obama Administration, PubPat, and ACLU. PubPat and the ACLU brought this case to begin with. You can listen to the oral argument before the Federal Circuit here on Groklaw. And the New York Times has a wonderful feature, showing a long list of its articles about the case. And the ACLU has the documents all in one handy place. And PubPat's Dan Ravicher has this quotable quote in their press release, “Nobody ‘invents’ genes, so no one should be able to claim ownership of them,” said Daniel B. Ravicher, executive director of PUBPAT. “We are not talking about a new drug or a new tool to fight cancer. We are talking about a genetic marker that occurs naturally in the human body. That cannot, and should not, be patented.”

Crouch explains the remand:

The Supreme Court today vacated the Federal Circuit's decision in AMP v. Myriad Genetics and has ordered the appellate court to reconsider the case in light of the recent Supreme Court decision in Mayo v. Prometheus. To be clear, the Supreme Court's move here is not a ruling on the merits but rather merely a recognition that the validity of Myriad's human gene patents may be impacted by the Mayo decision.

I previously wrote that one reasoned result of the Mayo decision is that Myriad's claims directed toward isolated human DNA are now invalid.

And that's not what the Federal Circuit had ruled. Last September, the Federal Circuit denied both ACLU's and Myriad's requests for a rehearing, leaving the US Supreme Court as the last hope. And so now there will be a rehearing, after all. Some lawyers are already predicting that somehow the Federal Circuit will find a way to save the patents, however. But then, it's back to the Supremes.

And now Tiller on the Mayo decision:

The Mayo Court cited as important precedents three earlier Supreme Court cases that involved software. According to the new opinion, these cases--Diehr, Flook, and Benson--concerned patents involving “processes that embodied the equivalent of natural laws.” Diehr concerned a process for transforming uncured rubbed into cured, molded products using the Arrhenius equation. Although the Diehr process as a whole was patentable, the Court found that by itself, “the basic mathematical equation, like a law of nature, was not patentable.” In Flook, the Court found a formula for computing an alarm limit as part of a process for catalytic conversion of hydrocarbons was a basic mathematical equation that, “like a law of nature,” was not patentable.

The Benson case involved a process for converting binary-coded decimal numerals into pure binary numbers on a general purpose computer. The Mayer opinion describes Benson as holding “that simply implementing a mathematical principle on a physical machine, namely a computer, was not a patentable application of that principle.”

These references and the analogy to laws of nature will be important in future software patent cases. It is also interesting to note the Court’s application of the machine-or-transfer test of Bilski. In response to the argument that the blood of the individual was transformed in the course of the test, the Court said that the machine-or-transformation test was only “an ‘important and useful clue’ to patentability” which did not “trump the ‘law of nature’ exclusion.” In other words, the Bilski test, even if satisfied, does not allow patenting of laws of nature. The Mayo opinion indicates the same ought to be true for mathematical algorithms. And software is made up of mathematical algorithms, n’est-ce pas?

It also seems noteworthy that the Mayo Court outlined a balanced view of the patent system that took account of the risks it can pose for innovation. It wrote, “Patent protection is, after all, a two-edged sword. On the one hand, the promise of exclusive rights provides monetary incentives that lead to creation, invention, and discovery. On the other hand, that very exclusivity can impede the flow of information that might permit, indeed spur, invention, by, for example, raising the price of using the patented ideas once created, requiring potential users to conduct costly and time-consuming searches of existing patents and pending patent applications, and requiring the negotiation of complex licensing arrangements.” The Court also noted that monopolization of abstract intellectual concepts and other basic tools “through the grant of a patent might tend to impede innovation more than it would tend to promote it.”

This may not sound surprising to FOSS community members who are knowledgeable about the problems of software patents. But Americans are taught from an early age to venerate the patent system. Many end up with an unshakeable belief that it always fosters progress, and cannot conceive that it sometimes hinders innovation. In Mayo, all nine Justices recognized that the reality is more complicated. The Court may not be ready yet to take on the software patent problem, but its practical, empirical approach could be a harbinger of progress to come.

One of his links takes you to an earlier Tiller article that referenced a couple of articles by P0IR on Groklaw, by the way, so keep talking, y'all. It's a matter of education:
There are various possible paths on this. The Supreme Court has said that mathematical algorithms are not patentable, and Ben Klemens [PDF] and others have argued that software is at bottom indistinguishable from mathematical algorithms. Others have fashioned related arguments leading toward the conclusion that at least some software is too abstract to be patented. Some of the analysis of PoIR on GrokLaw is particularly interesting: Why software is abstract and An Open Response to the USPTO — Physical Aspects of Mathematics.

This is a discussion that needs to continue. I hope FOSS developers and others with deep knowledge of software technology will get involved. We need to get to a convincing explanation in terms that non-technical people (such as judges and juries) can understand of the nature of software and why it is at bottom an abstract idea. Anyone care to take a swing?

He's right that we need to figure out a way to explain it to folks who are not technical. It can be done, I'm sure, if we seriously try.

Other patent attorneys are still frothing at the mouth over Mayo on IP Watchdog, and on Patent Docs [also here]. Their disrespect for the rule of law is noted. They are writing suggestions for how to avoid applying Mayo. The Federal Circuit is not *over* the Supreme Court. It's subject to it, and all these patents lawyers are talking about is how to avoid applying the Mayo decision. It seems to be very hard to imagine something could be harmful if there's a lot of money to be made. And there's the human side too -- change is hard.

Wait until they realize software is just mathematics. We'd best have some humanitarian smelling salts ready.


Mayo Decision Impacts Myriad Genetics - Judgment Vacated, Remanded ~pj | 170 comments | Create New Account
Comments belong to whoever posts them. Please notify us of inappropriate comments.
Authored by: Laomedon on Monday, March 26 2012 @ 07:58 PM EDT
Please put your corrections here.

[ Reply to This | # ]

Off Topic Thread
Authored by: artp on Monday, March 26 2012 @ 08:14 PM EDT
No Myriad. No Vacating. No Genetics. Hold the Mayo.

Userfriendly on WGA server outage:
When you're chained to an oar you don't think you should go down when the galley
sinks ?

[ Reply to This | # ]

News Picks Thread
Authored by: artp on Monday, March 26 2012 @ 08:16 PM EDT
URL, too, please. They scroll off so fast.

Userfriendly on WGA server outage:
When you're chained to an oar you don't think you should go down when the galley
sinks ?

[ Reply to This | # ]

Comes Goes Here
Authored by: artp on Monday, March 26 2012 @ 08:18 PM EDT
See Comes v. MS above for details.

Userfriendly on WGA server outage:
When you're chained to an oar you don't think you should go down when the galley
sinks ?

[ Reply to This | # ]

Just basic pharmacology...
Authored by: Crocodile_Dundee on Monday, March 26 2012 @ 09:18 PM EDT
I was listening to one of my wife's lectures the other day (she is doing a
Masters in Pharmacology) and the monitoring (or at least knowing) the levels of
metabolites of a drug in the bloodstream is simply basic pharmacology.

They discuss the therapeutic range and that this level may vary somewhat between
patients, and that there is an established range which should give most patients
the maximum effectiveness and minimum side-effects.

The whole point is to remove the need to test for these levels by being able to
calculate it.

Actually measuring them and taking action based on the measured levels is
something that is unnecessary for most drugs, but is implicitly implied as being
a method you could employ if the drug was subject to such weirdness that it
behaved very differently in different individuals.

A similar situation exists with other drugs where the therapeutic dose is close
to one which can have serious side-effects (such as certain anti-clotting
agents) where blood levels of the drug are monitored.

Monitoring of the drug or its metabolites is really no different. Many drugs
are administered in a form that is different to their active form and actually
require some metabolising before they do their job (and the reverse is also

I am somewhat glad that the patent was thrown out because its effects could be
very widespread, not only limiting what doctors could think, but also what
calculations pharmacists could perform in determining an appropriate dosage (and
yes, that is part of their job)

That's not a law suit. *THIS* is a law suit!

[ Reply to This | # ]

Software is math?
Authored by: argee on Monday, March 26 2012 @ 09:39 PM EDT
I was never comfortable with the software = math argument.
My own personal definition is perhaps more obvious to the

You have a machine, say a lathe. You want to control it
with a computer. You can patent the lathe, if you can. You
can patent the servo motors that actuate it, if you can. You
can even patent the cabling to the computer, the interface
cards, etc, if you can. If you use a peculiar computer, like
your own make of CPU, maybe you can patent those devices.

That comprises hardware. Hardware, if inventive, may be
patentable, In this case, maybe yes, maybe not. But
the program that makes all that work can be encircled
in the drawing. It is the software, and is not patentable.

If the program needs protection, a copyright.

So, if I go to town, buy a lathe off the shelf, some
servo motors off the shelf, a servo controller off the
shelf, cabling off the shelf, and tie it all to a pair
or three parallel printer port cards in my Dell PC,
there is NO hardware to patent, and no matter what I write
to make the contraption work, nothing here can be

That is not to say I could build a nice, innovative lathe,
that can be patented by itself. But the rest, no-no.

That has always been my own definition of what is

Why? Well, you can go to school and learn about lathes.
Those designs are probably a century old, and not
patentable, but that is not to say I could not invent some
kinda lathe, perhaps one that has magnetic bearings, or
anti gravity suspension, etc. etc. fine.

But I also go to school and learn about assembly language,
C, Basic, Linux, Windows, various other ways to program
something. If I write a program using those components,
that is EXACTLY the reason I went to school for, and is
what a person "versed in the arts" would know how to do.

In other words, given the specifications (API?) of the
lathe, and the computer components and architecture, it
is simply a matter of applying the schooling. It is the
kind of problem an employer gives to his employees.

"Design me a web page." "Design me an app for barcode
scanning packages being delivered." "Design me a program
to keep my car in the middle of the lane given this
radar unit and pavement embedded stuff" "design me a
control system for this lathe."

This is what programmers do. Daily. Matter of course,
and business as usual.

It seems to me that the guy that invented C, may hve had
a patentable item under the present system. It then
follows that ANYTHING written in C is subject to his
patent. Wouldn't that be a pickle?

Can't happen? Well, I think this Oracle vs Google is
exactly that. If you can patent the API's, then in
effect the language, and by extension all the apps coded
with it are subject to licensing.

I think I will tell my grandson not to go to Computer
school. By the time he starts college, everything and
every language will be patented and all he could do is
work for commodity wages at some compound with barbed
wire around it.

Fine future for America. Home of the Braves (wait, is
Football Patented? Or some of the passes?), Land of
the Free (where did FOSS go?).


[ Reply to This | # ]

Myriad is like Bush v Gore II.
Authored by: Anonymous on Tuesday, March 27 2012 @ 02:34 AM EDT
OK I don't remember what it was called but I remember listening to oral
arguments in that case, and hearing Sandra Day O'Connor ask about the Florida
Supreme Court response to their original ruling.

Now all politics aside, I read the first ruling as "You've ( FSC) made a
mess. Here are some guidelines, now clean it up.".
Somehow the question slipped by most news people, except for one who briefly
metnioned it.

However when I heard the question I realised it was over. The way I heard it was
"We told them to clean it up and they blew us off." I knew then that
the SC would say ( politely ) "We are shutting you down. NOW."

Note: I remember later skimming through a book by Richard Posner in a bookstore
where he basically agreed with my assesment.

I think Myriad could be similar. The Appeals court can try to work around Mayo,
but if they do then I think that the Supreme Court will just can back and say
"You blew us off. We are shutting you down. Now."

This has seemed to be the trend of the court in recent times.

Mouse The Lucky Dog

[ Reply to This | # ]

How could software patents survive?
Authored by: Oliver on Tuesday, March 27 2012 @ 04:00 AM EDT
First lets assume that algorithms implemented in software are
still algorithms even if they "transform" the state of a
computer. As I understand it the Supreme Court has finally said
clearly that these are not patentable.

Next lets assume that there is sufficient inertia (or vested
interests) in the system to want to make software patents

The loophole left for patents is where they solve a problem. In
this sense the fact they solve it with software is irrelevant.
I can see that patents that say "Solve difficult problem A by
doing innovative thing X, where X is implemented on a computer"
could be valid. Even though X may be an algorithm, and hence a
law of nature and in itself not patentable, the fact that it is
being used in a clever and innovative way may add enough value
for the Supreme Court.

But now assume that difficult problem A is itself an algorithm.
Is that sufficient application of the natural law X to warrant a
patent? I.e. are software patents on improving software
sufficiently removed from the maths to make them patentable? I
can't really see that myself, although I'm sure it will be
argued in court somewhere.

The problem with software is not that the solutions are
difficult, but phrasing the problem is the hard bit. Once that
has been done then the solution is typically obvious, and hence
not patentable.

[ Reply to This | # ]

I find the Patents Bar's Attitude Disturbing
Authored by: rsteinmetz70112 on Tuesday, March 27 2012 @ 09:47 AM EDT
It seems many in the patent bar are expecting the Federal Circuit to somehow
undo the Supreme Court decision. I find that disturbing. Apparently many in the
patent bar think of the Federal Circuit as their own private court.

As I keep saying giving the Federal Circuit exclusive appeal of patent cases was
a major mistake and a major cause of the current patent mess.

Rsteinmetz - IANAL therefore my opinions are illegal.

"I could be wrong now, but I don't think so."
Randy Newman - The Title Theme from Monk

[ Reply to This | # ]

The Wall Street Journal joins ( in part ) the anti-patent parade.
Authored by: Anonymous on Tuesday, March 27 2012 @ 11:52 AM EDT
Seems that now event the WSJ has joined the perspective that patents as they are constituted don't work. The battle is almost over. Mouse The Lucky Dog

[ Reply to This | # ]

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