Genotyping Patent Claims Do Not Escape The Reach of s. 101

In Genetic Veterinary Sciences, Inc. v. Laboklin GMBH & Co., the University of Berlin, App. No. 2018-1565 (Fed. Cir., Aug. 9, 2019), a Fed. Cir. panel affirmed the district court’s JMOL ruling that the claims of the University’s U.S. Pat. No. 9,157,114 were patent-ineligible because they merely involved the discovery of a natural phenomenon. Interestingly, the Judges on the panel were Wallach, Hughes and Stoll, all of whom dissented from the refusal of the Fed. Cir. to rehear the Athena decision en banc. However, Athena was a straightforward “If A, then B” diagnostic test, while the claims of the ‘114 patent were not written as diagnostic claims, but as “method of genotyping” claims:

  1. An in vivo method for genotyping a Labrador Retriever comprising:                                     a) obtaining a biological sample from the Labrador Retriever,                                              b) genotyping a SUV39H2 gene encoding the polypeptide of SEQ ID NO:1[;] and           c) detecting the presence of a replacement of a nucleotide T with a nucleotide G at position 972 of SEQ ID NO:2.

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USPTO Proposes Fee Increases Across the Board

Predictably, the USPTO has proposed increasing fees for about every piece of “paper” they receive/require. While most of the increases are in the 5-10% range for routine prep/pros matter, some of the increases are much larger. These often seem strategic, in the sense that they are intended to alter behavior by the patent bar or, at least to cover unanticipated expenses due to post-examination proceedings and greater use of the low-fee microentity category.

For example, the fee for an IPR request encompassing up to 15 claims and one encompassing more than 20 claims will each increase by about 25%. Late payment of PCT filing documents, such as the search and examination fee or the oath and declaration will increase by 14%.

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Wide-Ranging Senate Bill Aims to Streamline Post-Grant Proceedings and Block Trolls

On Wednesday, Senator Coon—of 101 hearings fame—and five co-sponsors introduced the Stronger Patents Act in the Senate (“Support Technology & Research for Our Nation’s Growth and Economic Resilience”). About 22 of the bill’s 40 pages involve amendments to IPR, PGR and ex parte rexamination that limit appeals and clarify overlapping court and PTO actions. These provisions have been ably summarized by Joshua Rich in a post at PatentDocs, but there are other interesting amendments to 35 U.S.C. so I thought I would start toward the last half of the bill.

Section 106 of the bill, entitled “Restoration of Patents as Property Rights,” amends section 283 to require that a court that finds infringement to presume that further infringement would cause irreparable injury and that remedies available at law are inadequate to compensate for that injury. These are the circumstances that encourage the court to issue an injunction against the infringer.

Section 42 of 35 U.S.C. would be amended to end USPTO fee diversion into the general fund by providing that any fees collectable by the Director shall be “available to the Director” and used to operate the PTO. Remaining unobligated funds are to be maintained in the “USPTO Innovation Promotion Account.”

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Federal Circuit Denies En Banc Review of Athena v. Mayo

On July 3rd, the Fed. Cir. denied Athena’s petition for rehearing en banc. The three-page order is a 7/5 denial accompanied by more than 80 pages of concurrences and dissents. Concurring in various combinations are Judges Lourie, Hughes, Dyk, Reyna, Prost, Hughes and Taranto, with Dyk and Chen doing most of the writing. The dissenters were Judges Newman, Moore, Wallach, Stoll and O’Malley with Moore and Newman as the main authors.

I wish I had the staff to provide you with a condensed account of the opinions, but they draw the lines between the Judges who believe that denial was required because they could not distinguish (or did not think that the S. Ct. would distinguish) Prometheus v. Mayo from the facts of Athena v. Mayo and the dissenters who think the Fed. Cir. can and should.

Part I. The Concurrences

One theme, succinctly summarized by Judge Lourie appears to be shared by all of the Judges:

“If I could write with a clean slate, I would write an exception to patent eligibility [“PE”], as respects natural laws, only claims directed to the natural law itself, e.g., E=mc2, F=ma…etc. I would not exclude uses or detection of natural laws. The laws of [102, 103 and 112] provide other filters to determine what is patentable….because the claims recited only what the [S. Ct.] called a natural law together with well understood, conventional activities, the Court concluded the claims were ineligible under s. 101.”

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