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:
Guest post from The Hill, written by Russ Slifer of Schwegman Lundberg & Woessner.
Inventors like Thomas Edison and Nikola Tesla obtained patents to protect their many inventions, which in turn grew the U.S. economy. Today their inventions would easily be dismissed by courts as not even eligible for patenting. The lightbulb and alternating current generators would be characterized as either abstract, a law of nature or a building block of technology. Modern critics would minimize the magnitude of their inventions by saying that these great inventors simply had a good idea and told the world to apply it.
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:
- 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.
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%.