Archive for the ‘Uncategorized’ Category

Ariosa v. Sequenom – Novel Genetic Analysis Fails The Mayo Test

Friday, June 12th, 2015

3d render of dna structure, abstract  backgroundToday, the Fed. Cir. affirmed the district court’s holding that the method for detecting paternally inherited nucleic acid of fetal origin in a sample of the mother’s blood was a patent-ineligible natural phenomenon. Ariosa Diagnostics, Inc. v Sequenom, Inc., Appeal No. 2014-1139, 2014-1144. (Fed. Cir. June 12, 2015). (A copy is available at the end of this post.)  Although commentators have already begun to lament that this decision puts a stake in the heart of claims to diagnostic methods (what I call “If A, then B” claims), I am going to do my best to resist this conclusion.

Of the claims asserted in the case, only one (claim 21) recites “providing a diagnosis based on the presence and/or quantity and/or sequence of the foetal nucleic acid,” and no dependent claim identified what specific diagnosis (e.g., increased likelihood of Down’s syndrome) was provided (or to whom it was provided). Claim 1 was broadly directed to a method for detecting a paternally inherited nucleic acid of fetal original performed on a maternal serum or plasma sample from a pregnant female by amplifying a paternally inherited nucleic acid and detecting its presence in the sample.

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Allvoice Decision Provides Roadmap For Software-based Inventions

Friday, May 29th, 2015

iStock_000034528996_SmallGuest post from Greg Stark, attorney at Schwegman Lundberg & Woessner.

In a refreshing break from Alice/Mayo abstract idea based 35 U.S.C. § 101 rejections, the Federal Circuit released a decision invalidating certain claims of U.S. Patent No. 5,799,273 as not being directed to one of the four statutory categories of inventions (see Allvoice Developments US, LLC, v. Microsoft Corp., CAFC 2014-1258, decided May 22, 2015 – a copy is available at the end of this post). The matter was on appeal, by Allvoice, from a district court decision invalidating claims 60-68 as non-statutory subject matter. The decision also affirms a non-infringement decision by the district court, while interesting that that portion of the decision is not the focus of this post.

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Takeaways from Chisum Patent Academy 2015 Seminar in Cincinnati

Wednesday, March 11th, 2015

Guest Post from Don Chisum

iStock_000017522821_SmallOn March 5-6, 2015 the Chisum Patent Academy held a two-day seminar at the 21C Museum Hotel in downtown Cincinnati, Ohio to discuss and debate current developments in U.S. patent law. The roundtable seminar group was limited to ten persons; sessions were led by treatise authors and educators Donald Chisum and Janice Mueller.

Attendees included experienced patent litigators and prosecutors from law firms and corporations in Detroit, Chicago, Phoenix, Cincinnati, Cleveland, St. Louis, and the Washington, DC area. Participants enjoyed the 21C’s Museum Hotel’s provocative modern art collection, innovative food and accommodations, and lively seminar discussion.

Here’s our recap of the takeaways from the seminar:

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Chisum Patent Academy Close To Full

Monday, January 5th, 2015

The Chisum Patent Academy has three seats remaining in its March 5-6, 2015 Advanced Patent Law Seminar in Cincinnati, Ohio. The two-day roundtable seminar is limited to a total of ten participants to maximize opportunities for interactive discussion and debate.  All sessions are led by treatise authors and educators Donald Chisum and Janice Mueller. Coverage focuses on recent significant patent decisions of the Federal Circuit and U.S. Supreme Court. Topics currently planned for discussion include:

  • The Supreme Court’s Alice Corp. decision on patent-eligible subject matter and Federal Circuit decisions applying Alice Corp.;
  • The Supreme Court’s grant of certiorari in Commil USA concerning the intent requirement for inducing infringement;
  • The Supreme Court’s grant of certiorari in Kimble v. Marvel to review the propriety of post-patent expiration royalties;
  • The Supreme Court’s pending decision in Teva v. Sandoz on standard of review for patent claim construction;
  • The Federal Circuit’s grant of en banc review in SCA Hygiene to determine whether the Supreme Court’s Petrella decision changed the law of laches as a defense to patent infringement;
  • “Patent Practice Gone Wrong”:  Lessons from Patent Malpractice, Exceptional Case and Rule 11 Sanctions, and Inequitable Conduct Cases;
  • Patent Claim Construction and Definiteness in the Wake of Nautilus (and Anticipating Teva); and
  • Inter Partes Review: Two-Year Snapshot and Lessons from Case Studies.

No advance preparation is expected or required. The Supreme Court of Ohio Commission on Continuing Legal Education has approved the seminar for 12.0 hours CLE instruction.

For additional details on the venue, topics, and registration form, click here or e-mail info@chisum.com