In the 2003 panel decision in Schering Corp. v. Geneva Pharm., Inc., the panel rejected “the contention that inherent anticipation requires recognition [of the claim element not found] in the prior art.” The claims were directed to a bioactive metabolite of an earlier patented drug that was not mentioned in the earlier patent. Hearing en banc was denied, but Judges Lourie and Newman dissented. Continue reading
Ariosa was a decision that essentially held that the novel discovery of a naturally-occurring phenomenon could not per se meet the Mayo/Alice requirement for an inventive concept, even though it was of “groundbreaking importance” in advancing medicine. The claims appealed in Ariosa were not directed to specific diagnostic conclusions, so I continued to cling to the possibility that the Fed. Cir., faced with a simple “If A, then B” diagnostic claim, might rule differently. Of course, the holding in Cleveland Clinic erased that hope. Continue reading
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
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
