Last Thursday, I managed to miss the webinar sponsored by the Federal Circuit Bar Association on Alice v. CLS Bank, post-oral argument. However, I just finished listening to the audio transcript. It is not easy to summarize an hour-long discussion debate with a moderator and four participants, but it is not every day that you get to hear the attorneys for the two parties, Carter Phillips (Sidley Austin) for CLS, Mark Perry (Gibson Dunn) for Alice, along with Scott Weidenfeller, Senior Counsel in the Office of the Solicitor, USPTO, and John Whelan, Dean of IP Law at George Washington Law School (moderator was Aldo Noto (Andrews Kurth). Mr. Perry provided the slides. Even though it was not always possible to tell who was speaking, there was a lot of agreement, and I will try to summarize and comment on themes that ran through the program. Comments in brackets are my thoughts.
Posts Tagged ‘Bilski’
Which actually seems a bit surprising, since this life sciences blog is pretty much the observations of one patent attorney – me - on developments in IP law. I do want to take the time to thank my fairly regular guest commentators – particularly Stephan Danner, Bill Bennett, Ron Schutz and Paul Cole. But, apart from Bryan Ness and Mary Hirsch here at SLW, who do a great job of getting posts up there quickly, often before some of “bigger” blawgs can react, I am pretty much the only “journalist”—as one young interviewer called me—on the staff.
I was thinking of how to summarize the last half decade of IP law in a few paragraphs, but it’s really not possible. Most of the important judicial decisions, as well as the AIA, have amounted to cut-backs – or at least, sequestrations – of patent rights. I think that the PTO does not want to be judged or legislated out of business, and I have to give them credit for not over-reacting to largely policy driven decisions like Bilski, Mayo, and Myriad. But give a workman, or a bureaucrat, a new tool and they are probably going to use it. Ariad is such a tool and both the PTO and the courts have been using the WDR like Thor’s hammer to crush patents with both “mechanism of action” claims and ill-defined elements. Of course, a bright spot among this carnage was the Thersense decision that obliterated Rule 56(b) – but where are the final rules? The administration of the PTO is on hold as 2014 begins.
On March 24th, Patents4Life forgot to celebrate its 4th anniversary. On March 24, 2009, I started the blog (or is it “blawg”) by posting three articles on fairly recent Fed. Cir. decisions. One of the articles discussed the application of the then-recent “Bilski test” to the claims in suit in Classen v. Biogen (2008 WL 5273107) which involved a method of developing improved immunization schedules. The summary affirmance of the district court’s decision was based on the “machine or transformation test” developed in Bilski. Since at least one of the claims recited immunizing subjects, I wrote:
“The Bilski standard, now being applied in the area of biomedical technology, poses a significant threat to the viability of patents claiming diagnostic methods.”
I admit, I am a sucker for lists, esp. Top Ten Lists, and a few days ago, sat through a half hour of “local news” wherein the anchors breathlessly related the Top Ten Rhode Island News Stories of 2012. Well, readers, you deserve no less that my Top Ten List of IP “Stories” that broke, sometimes over us, in 2012. So that this post is not endless, I will write it from very abbreviated notes and leave it to you to dig the details out of the patents4life archives – or to just back up through the posts of 2012. Also, past Prometheus and Myriad, the list does not mean to prioritize the events reported.