Yesterday, the PTAB in interference 106,048 issued a short order finding no interference- in- fact between the claims of 12 Broad Institute patents (US Patent Number 8,697,359 et al.) and the application held by The Regents of the University of California (Application Number 13/842,859). The full 51 page Decision was released on February 15, 2017. Although California (Berkeley) filed first, and was the Senior Party, the Judges found that the California claims were essentially limited to gene-editing in bacteria, and that it was not reasonably predictable that the technology would work in mammals and plants. (ed. note: My words, the detailed reasoning for the short order was not explained by the Board.)
On Wed., February 8, 2017, IPO released the report of its legislation task force. Unlike the hundreds of academic analyses of the legislative history of s. 101 – and this report includes another – the Task Force took the further necessary and nervy step of proposing amendments to s. 101 to blunt the impact of the Mayo/Alice rules:
I have both been busy since the holiday season and frankly, uninspired by the case law that has appeared on the scene. Who can be enraptured by the fine points of standing when we are all speculating about whether Michelle Lee still has a job – along with a number of unfilled vacancies under her, or how sure-thing Gorsuch will rule on immigrants’ rights? (The three IP oriented decisions I have read that he generated are about as far from biotech as one can get.)
In the Catholic Church “transubstantiation” is the belief that the wafer and the wine become the actual body and blood of Christ during the communion ceremony. Recently, the PTAB went into the mystic to transform claims to a multi-station MRI apparatus into abstract ideas, and then to reject them under s. 101. Ex parte Hiroyuki Itagaki, Appeal No. 2015-002702 (PTAB 2016), application serial no. 12/598168.
And this rejection was entered after the panel found that the MRI apparatus was unobvious over the art cited by the Examiner.
This legal result requires us all to call the Alice/Mayo rule unworkable and to shout out that this is a claim to a machine, not to a conventional process carried out by a generic computer. Even the panel refers to claim 1 as an “apparatus” or as describing “a multi-station MRI.”