Ex Parte Buck: Can a Composition Claim be a Natural Phenomenon?

In a recent decision, Ex Parte Buck, Appeal no. 2017-005470 (PTAB, April 20, 2018), the Board affirmed the examiner’s ruling that a composition claim reciting two natural products was patent-ineligible as an attempt to claim a natural phenomenon:

7. A kit comprising multiple, separate weekly or
monthly doses of
a) Vitamin D, and
b) 25-OH D3 [a metabolite of Vitamin D],
wherein a dosage ratio of the Vitamin D3 to the 25-OH D3
is from about 6:1 to 1:6; a single weekly dosage contains from
7 μg to 350 μg each of Vitamin D and 25-OH D3; and a single
monthly dosage contain from 30 μg. (The last 4 words are not a [typo; they were construed to read “contain at least 30 μg.”)

Before I dig into this decision, please re-read my March 19, 2018 post on In re Bhaghat, where I attempt to set out the rules of  101 inquiries for claims directed to “natural products.” In brief, if a claim is directed to two or more natural products, the nature-based combination is examined to see if the combination of components has “markedly different” characteristics due to the interactions of the components of the composition. Continue reading

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Upcoming Webinar: Top 5 Court Decisions Impacting Future IP Litigation

Within the last few years, the Federal Circuit and Supreme Court have handed down decisions that altered the landscape of both patent prosecution and enforcement, ranging from venue and attorneys’ fees to the standards for obviousness and patent eligibility. Please join me for a complimentary webinar on May 17, as I take a look back at the five most important IP decisions of 2017-2018 and evaluate their effect on practice in the life sciences arena.

Register Today

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Fed. Cir. Affirms Unclean Hands Defense in Gilead v. Merck

Unclean Hands Doctrine On April 25th, a Fed. Cir. panel of Judges Taranto, Clevenger and Chen affirmed the unenforceability of two Merck patents covering a drug presently marketed as Sovaldi(r) to treat hepatitis C, sofosbuvir. Gilead Sciences, Inc. v. Merck & Co., Appeal Nos. 2016-2302, 2016-2615 (Fed. Cir., April 25, 2007).

For a detailed discussion of the background and the rationale of the lower court decision, please re-read my posts of June 13, 2016 and June 16, 2016. The district court found that Merck had unclean hands, precluding patent enforcement against Gilead, based on its findings of both pre-litigation business misconduct and litigation misconduct attributable to Merck.

Discussing the law of unclean hands, the Fed. Cir. panel made it clear that “this is [not] a case involving alleged deficiencies in communications with the PTO during patent prosecution” [citing Therasense]…we see no genuine issue about the governing legal standard, but only its application. Footnote 3 reads:  Continue reading

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Supreme Court Decides Oil States – Inter Partes Review Does Not Violate Article III or the 7th Amendment

justice scaleThe Supreme Court issued its long-awaited opinion in Oil States Energy Services v. Greene’s Energy Group, Appeal No. 16-712 (April 24, 2018), holding 7/2 that inter parties review was an appropriate exercise of the power of Congress to assign adjudication of public rights to the USPTO, and is not required to assign such adjudications to Article III courts for resolution by a jury trial. To reach this conclusion, the Court held that the grant of a patent falls within the public rights doctrine, as a matter “arising between the government and others” and that IPR is “simply a reconsideration of that grant” that Congress has reserved to the PTO.

The Court minimized the procedures unique to IPR by reasoning that IPR involves the same interests as the original grant of a patent, and analogized the grant or cancellation of a patent to the qualification of other “public franchises” by Congress.  Continue reading

Posted in Alice, Federal Court, Patent Reform Legislation, Post-Grant Issues, Post-issuance procedures, PTAB | Tagged , , , , | 1 Comment