In Ino Therapeutics LLC v. Praxair Distrib., Inc., Appeal no.2018-1019 (Fed. Cir., August 27, 2019) a divided Fed. Cir. panel comprising Judges Dyk and Prost, Newman dissenting affirmed a district court decision that a number of INO’s patent claims were patent ineligible as attempts to claim a natural phenomenon. Five method-of-treatment patents were involved, including U.S. Pat. Nos. 8,282,966 and 8,795,741.
The relevant claims were directed to reducing the risk that inhalation of nitrous oxide (“iNO”) by neonatal patients identified having hypoxic respiratory failure, who also are identified as having left ventricular dysfunction, do not receive iNO, due to their increased risk of pulmonary edema. Claim 1 of the ‘741 patent reads as follows:
In Nalproprion v Actavis, App. No. 2018-1221 (Fed. Cir., August 15, 2019) a divided panel of Judges Prost, Lourie and Wallach – Prost dissenting – affirmed the district court’s ruling that claim 11 of U.S. Pat. No. 8,916,195 met the written description requirement of 35 U.S.C. 112(a). Claim 11 follows:
Guest post from The Hill, written by Russ Slifer of Schwegman Lundberg & Woessner.
Inventors like Thomas Edison and Nikola Tesla obtained patents to protect their many inventions, which in turn grew the U.S. economy. Today their inventions would easily be dismissed by courts as not even eligible for patenting. The lightbulb and alternating current generators would be characterized as either abstract, a law of nature or a building block of technology. Modern critics would minimize the magnitude of their inventions by saying that these great inventors simply had a good idea and told the world to apply it.
In Genetic Veterinary Sciences, Inc. v. Laboklin GMBH & Co., the University of Berlin, App. No. 2018-1565 (Fed. Cir., Aug. 9, 2019), a Fed. Cir. panel affirmed the district court’s JMOL ruling that the claims of the University’s U.S. Pat. No. 9,157,114 were patent-ineligible because they merely involved the discovery of a natural phenomenon. Interestingly, the Judges on the panel were Wallach, Hughes and Stoll, all of whom dissented from the refusal of the Fed. Cir. to rehear the Athena decision en banc. However, Athena was a straightforward “If A, then B” diagnostic test, while the claims of the ‘114 patent were not written as diagnostic claims, but as “method of genotyping” claims:
- An in vivo method for genotyping a Labrador Retriever comprising: a) obtaining a biological sample from the Labrador Retriever, b) genotyping a SUV39H2 gene encoding the polypeptide of SEQ ID NO:1[;] and c) detecting the presence of a replacement of a nucleotide T with a nucleotide G at position 972 of SEQ ID NO:2.