PTAB Changes Begin To Help Inventors

This is a guest post from Russ Slifer and was originally posted on Law360.

The past year has seen significant changes to all practice areas before the U.S. Patent Trial and Appeal Board. Many of these changes are positive for patent owners, innovators, inventors and the U.S. patent system. Several issues that have plagued patent owners in post grant trials were addressed in 2017; claim amendments, serial petitions and petitions based on art already considered by the U.S. Patent and Trademark Office. The Federal Circuit, sitting en banc, addressed patent owner claim amendments during PTAB trials, while the PTAB continued its recent trend of issuing more precedential and informative decisions. Several of these decisions are first steps in the right direction and, if applied properly, should begin to balance PTAB trials while providing more guidance to its 272 administrative patent judges. Continue reading

Posted in Post-Grant Issues, PTAB | Leave a comment

Ex Parte Patterson: Assay Based on Two “Natural Phenomena” Does Not Equal One “Inventive Concept”

Cotton-Tipped ApplicatorAccording to the “Mayo/Alice” rule, if a claim is directed to a “natural phenomena” such as the relationship between the a drug’s metabolite concentration following administration of an immunosuppressive drug and the therapeutic window of efficacy of the drug, the claim is patent ineligible unless there is some further inventive concept in the claim. The Board in Ex parte Patterson, Appeal no. 2016-001355 (Bd. App., Dec. 4, 2017) found that a claim to determining the presence of cancerous cervical cells in a sample and of predicting whether a subject has a cervical intraepithelial neoplasia (CIN) lesion that is a CIN2+ lesion (“bad’), was patent ineligible as claiming a natural phenomenon.

Claim 1 read:

1. A method of predicting whether a subject has a cervical intraepithelial
neoplasia (CIN) lesion that is a CIN2+ lesion, the method comprising:
obtaining data from a labeled liquid sample of cervical
cells in suspension from the subject, wherein the data are
obtained by analyzing the liquid sample with a flow cytometric
device and comprise per cell morphometric data and data
selected from the group consisting of: per cell biomarker data,
per cell DNA content data, and combinations thereof; and
predicting from the per cell morphometric data and from
the data selected from the group consisting of: per cell
biomarker data, per cell DNA content data, and combinations
thereof; whether the subject has a CIN2+ lesion. Continue reading

Posted in Alice, Appeals, Obviousness, Section 101 | Tagged , , , | Leave a comment

“An Unusual Case” – Promega Corp. v. Life Technologies Corp.

I am going to try to summarize the Fed. Cir.’s holding and reasoning in Promega Corp. v. Life Tech Corp., Appeal No. 2013-1011 et al. (Fed. Cir., November 13, 2017), without burying you in the procedural details, but it won’t be easy.

In Promega I, 773 F.3d at 1341, the Fed. Cir. reversed a district court verdict that Promega was entitled to $52 million in lost profits for Life’s worldwide and/or U.S. sales of a test kit Life put together in England using one component imported from the United States. The only foundation under the damages calculation was the worldwide sales figures (about $708 million). Continue reading

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Things to be Thankful for in IP Wonderland

Apart from the carnage wrought by the ever-expanding scope of s. 101 rejections and the tightening of the written description requirement, there were still a number of events/trends in 2017 to applaud or at least to note as “worthwhile.” I am going to run through a brief summary of significant IP progress pretty much off the top of my head, without citing much case law, so this post does not become a law review article. Please refer to my 2017 posts to get the case cites and more context. Continue reading

Posted in FDA, Federal Court, Miscellaneous | Leave a comment