Posts Tagged ‘Bilski’

Happy Birthday to Us! We are 7 Years Old!

Monday, April 4th, 2016

7th birthdayIn fact, Patents4Life’s birthday was in late March of 2009, but the earliest posts were short papers I wrote for an IP newsletter that no longer exists. However, the s. 101 storm clouds were gathering even then. One article (in the archives for March 2009) was on how the Fed. Cir. affirmed the invalidation of immunization claims in Classen, using the Bilski machine-or-transformation standard for patent eligibility. (When Classen was revisited after the S. Ct. repudiated the M or T test, the claims reciting immunization were found to meet the requirements of s.101, while the claims that were directed to selection of the optimal immunization schedule did not make it through the coarse filter of 101.)

However, my co-author on this paper, an M.D., saw the threat to diagnostic claims pretty clearly:

“[Unlike diagnostic method claims that alter the body – like immunization] many diagnostic claims do not require the conversion of substance A into substance B. For example, consider claims to a simple blood test in which the presence of a particular substance predicts or diagnoses a disease. [Myriad-type diagnostic claims] involve ‘comparing’ genetic sequences and ‘diagnosing’ the presence of mutations… However, courts may not recognize a molecular transformation such as [the steps necessary to isolate the gene and detect it], or they may not consider it ‘central to the purpose of the claimed process’, as required by Bilski. Thus, Bilski could turn out to be quite problematic for comparison-type diagnostic claims.”

Even though the S. Ct. replaced the M&T test with the Mayo/Alice Rule, the language of this passage could have been written about Ambry (“Myriad II”) or Ariosa. I was going to write an April Fool post in which the Fed. Cir. affirms the patent-ineligibility of a basic chemical composition or treatment method of some sort but how does one top gunpowder or the incredibly convoluted PTO analysis of “amazonic acid?” Maybe I could sing a few verses of “Send in the Clowns” (“Don’t bother, they’re here.”)

PLANET BLUE v. NAMCO – Abstract at the “Point of Novelty”

Monday, September 29th, 2014

In McRO, Inc. d.b.a. Planet Blue v. Namco Bandai Games America, civ. No. CV 12-10322-GW (FFMx) (C. D. Cal., Sept. 22, 2014), the granted Defendant’s motion for judgment on the pleadings that US Patent numbers 6,307,576 and 6,611, 278, were invalid as attempts to claim an abstract idea. (A copy of the decision is available at the end of this post.)

The claims were directed to automatically animated lip synchronization and facial expression of 3D animated characters. The court read the claims in view of the admitted state of the prior art and located a single “point of novelty”: “[T]he idea of using rules, including timing rules, to automate the process of generating keyframes.” “So what the claim adds to the prior art is the use of rules, rather than artists to set the morph weights and transitions between phonemes [e.g., the change in the shape of the lips as words are spoken.]”

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Advocates in Alice v. CLS Bank Debate “In the Cloud” in FCBA Webinar

Friday, April 11th, 2014

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.

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Happy Birthday To Us – Patents4Life Is Five!

Tuesday, March 4th, 2014

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.

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