Just When You Thought Things Couldn’t Get Worse Via The Application Of 101

On Friday, in Cleveland Clinic Foundation v. True Health Diagnostics, Appeal no. 2016-1766 (Fed. Cir., June 16, 2017), a Fed. Cir. panels of Judges Lourie, Reyna and Wallach (Reyna writing) held that claims to a method of assessing a test subject’s risk of having atherosclerotic cardiovascular disease by comparing the levels of myeloperoxidase (MPO) in a sample from the test subject with predetermined levels of control subjects. In other words, the claims were drawn to a way to correlate MPO levels with the risk of developing cardiovascular disease.  Continue reading

Posted in Alice, Federal Court, Section 101 | 2 Comments

Exhausted by Exhaustion: Impression Products v. Lexmark

Please revisit Don Chisum’s and Janice Mueller’s comments on Impression Products v. Lexmark, No. 151189 (S. Ct. May 30, 2017), in which the Court held that a seller of a patented printer cartridge had exhausted its patent rights, so that a “refurbisher” could obtain the empty cartridges from the original buyers, re-fill them with toner, and sell them (again). The Court held that the patentee’s rights to sue the infringer had been exhausted when they made the first sale, even though it sold cartridges only after the buyer agreed to not resell or refurbish them for further use. (I am using the term the Court used: “refurbish” and you will see why.) Continue reading

Posted in Govt Policy/PTO Policy, Litigation Issues | Leave a comment

Chisum Patent Academy – Commentary on Impression Products v Lexmark International

This is a repost of commentary by Donald Chisum and Janice Muller of Chisum Patent Academy.

In Impression Products, Inc. v. Lexmark International, Inc., No. 15-1189, — S. Ct. —-, 2017 WL 2322830 (May 30, 2017), the Court, in an opinion authored by Chief Justice Roberts, held that a patent owner’s sale of a product exhausts its U.S. patent rights in the product “regardless of any restrictions” the patent owner “purports to impose or the location of the sale.” Continue reading

Posted in Federal Court, Jurisdiction | Leave a comment

USPTO Management Changes – Who’s on First?

After USPTO Director Michelle Lee resigned quite suddenly on Tuesday, rumors and speculation have been the only constant. Early speculators bet that Drew Hirschfeld, current Commissioner of Patents, would get the job. (He is best known to me as the one who opened the Pandora’s box of s. 101 Guidelines in 2014.) However, on June 7th, the Commerce Dept. has announced that Joseph Matal, current Associate Solicitor General in the PTO, would become the Interim USPTO Director. However, even more recently, commentators have noticed that his position is not in line for succession to the Director’s job. Continue reading

Posted in USPTO Practice and Policy | Leave a comment