“TC Heartland” Supreme Court Limits Venue in Patent Suits

Monday, in a unanimous opinion (Goresuch did not participate), the Supreme Court interpreted the patent venue statute (28 USC s. 1400(b)) to require that the phrase “where the defendant resides” be limited to the defendant’s state of incorporation, not to a state where a district court could exercise personal jurisdiction over the defendant TC Heartland LLC v. Kraft Foods Group Brands, Inc., No. 16-341 (May 22, 2017). Thus, the Court reaffirmed its decision in Fourco Glass Co. v. Transmirra Prods. Corp., 353 U.S. 222 (1957), in which the Court had ruled that for the purposes of s. 1400(b), a domestic corporation “resides” only in its state of incorporation. Continue reading

Posted in Federal Court, Jurisdiction | Leave a comment

IPO, AIPLA and ABA IP Section Propose Legislative Fixes for Section 101

Between February and May of this year, IPO, AIPLA and the ABA IP Section have released proposals for amendments to 35 U.S.C. s. 101 to void the Mayo/Alice Rule and to clarify the definition of an “abstract idea” as it relates to patent-eligibility. This is a topic I have followed closely since the March 2004 “Guidance” from the USPTO, particularly with respect to how Mayo, Myriad and Ariosa have made it nearly impossible to get claims allowed to diagnostic methods and to putative “natural products.” While the USPTO has noted that methods of medical treatment are outside of the Mayo/Alice Rule, the major question of how to patent a simple “If A, then B” diagnostic test has remained clouded, particularly since at least some of the Federal Circuit judges and Supreme Court justices believe that discovery of the utility or “correlation” by the inventor of a naturally-occurring relationship cannot provide the additional inventive step beyond the natural law required by Mayo. The “marked difference” requirement promulgated by the PTO to limit patenting natural products is so poorly shaped that drugs in an aqueous carrier are being rejected on the basis that water is a natural product.  Continue reading

Posted in Govt Policy/PTO Policy, Patent Reform Legislation, Section 101 | 2 Comments

Fed. Cir. in Helsinn v. Teva Declines Limiting the Requirements of the “On Sale” Bar

In Pfaff v. Wells Electronics, 525 US 55 (1988), the Supreme Court attempted to focus the factors invoking the on-sale bar of s.102, by holding that the claimed invention must both be the subject of a “commercial sale”(including offers for sale) and “ready for patenting” prior to the critical date of one year prior to filing an application on the invention, e.g. a new drug or drug formulation. The AIA added a phrase to s. 102(a) that the bar applied if the invention was “…on sale, or otherwise available to the public prior to the effective filing date of the claimed invention”. The one year grace period was retained for disclosures of the invention by the inventor(s). s. 102(b).  Continue reading

Posted in 102 Patentability, Hatch-Waxman, Licensing, Litigation Issues | Leave a comment

Manhattan March for Science

March For Science - Dog

Unfortunately I could not bring my dog  but he was there in spirit.

This following is a recap of the Manhattan March for Science by Robin Chadwick.

The March for Science in Manhattan was smaller than the January 2017 Women’s March in Washington, but large enough that the “entry point” for us was changed from 62nd Street to 64th and then to 68th Street as we moved up Broadway to get over to Central Park West.

The signs at the Manhattan March for Science were less inflammatory and more scientifically quirky than those at the Women’s March. Examples:

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Posted in Govt Policy/PTO Policy | 1 Comment