On October 1st, Athena filed a petition for a writ of certiorari to the Supreme Court following the Fed. Cir.’s fractured denial for its petition for rehearing en banc in Amgen v. Mayo. The original request for rehearing en banc posed two questions. In brief, whether the Fed. Cir. now has effectively created a per se rule that claims to diagnostic methods are not patent-eligible (PE) and whether courts may now exclude claim elements that they deem conventional in determining whether a claim is directed to PE subject matter.
This bill has been introduced into both houses of Congress in a bipartisan effort to curb the reach of inter partes review (IPR) proceedings and the broad four-factor analysis for injunctive relief set forth by the Supreme Court in eBay v. MercExchange. I originally posted on this bill and referenced other commentators here on May 25, 2019.
Senator Tillis opened the discussion by asserting that the present high standard for obtaining injunctive relief can discourage “patent trolls”, and that IPR can be an efficient way for small businesses to protect themselves from trolls. However he was concerned about the provisions limiting the number of petitions for IPR that a defendant can file, and the need to choose between conventional infringement litigation and the PTAB’s post-grant procedures called for in the bill. The hearing had six witnesses who were pretty much split on whether or not such broad amendments to the AIA were necessary, but almost all of them testified that some reforms were needed.
In Ino Therapeutics LLC v. Praxair Distrib., Inc., Appeal no.2018-1019 (Fed. Cir., August 27, 2019) a divided Fed. Cir. panel comprising Judges Dyk and Prost, Newman dissenting affirmed a district court decision that a number of INO’s patent claims were patent ineligible as attempts to claim a natural phenomenon. Five method-of-treatment patents were involved, including U.S. Pat. Nos. 8,282,966 and 8,795,741.
The relevant claims were directed to reducing the risk that inhalation of nitrous oxide (“iNO”) by neonatal patients identified having hypoxic respiratory failure, who also are identified as having left ventricular dysfunction, do not receive iNO, due to their increased risk of pulmonary edema. Claim 1 of the ‘741 patent reads as follows:
In Nalproprion v Actavis, App. No. 2018-1221 (Fed. Cir., August 15, 2019) a divided panel of Judges Prost, Lourie and Wallach – Prost dissenting – affirmed the district court’s ruling that claim 11 of U.S. Pat. No. 8,916,195 met the written description requirement of 35 U.S.C. 112(a). Claim 11 follows: