Posts Tagged ‘court of appeals’

CLS v. Alice Bank And The Cult Of The “Abstract Idea”

Monday, February 10th, 2014

Ex-Judge Michel’s compelling amicus brief – more on that in a future post—prompted me to take a quick look back at the evolution “abstract idea” as a patent-ineligible category of invention. This category of patent-ineligible invention is listed, along with laws of nature and physical phenomena, in Diamond v. Chakrabarty, but the Supreme Court, unfortunately did not provide any examples of abstract ideas.

Fast forward 28 years to In re Bilski, 545 F.3d 943 (Fed. Cir. 2008). The court was deciding whether or not a straightforward claim to hedging risk in commodity markets was patent-eligible subject matter. The divided majority held that the claim failed the machine-or-transformation test and so was not, but it is Judge Rader’s dissent that deserves attention. He concluded that Bilski’s claim fell outside of patent-eligible processes because it “facially abstract.” He wrote:


Federal Circuit Knocks Outside the Box’s Inequitable Conduct Charges Out of the Box

Tuesday, September 25th, 2012

The following is a guest post from Schwegman Lundberg & Woessner’s associate Ricardo Moran.

The issues on appeal were whether Travel Caddy, Inc. had committed inequitable conduct for: (i) not disclosing the existence of the litigation on U.S. Patent No. 6,823,992 (“the ‘992 patent”) during the prosecution of the application that matured into U.S. Patent No. 6,991,104 (“the ‘104 patent”; the ‘104 patent is a CON of the ‘992 patent; the ‘104 patent was filed shortly before the ‘992 patent issued); and paying small entity fees, even though Travel Caddy was not entitled to claim small entity status. (PDFs of both patents are available at the end of this post.)

Non-disclosure of the ‘992 patent litigation

To establish unenforceability based on inequitable conduct in the U.S. Patent and Trademark Office (PTO), it must be shown that (i) information material to patentability was withheld from the PTO, or material misinformation was provided to the PTO, with (ii) the intent to deceive or mislead the patent examiner into granting the patent. Therasense, Inc. v. Becton, Dickinson & Co., 649 F.3d 1276, 1290-92 (Fed. Cir. 2011) (en banc). Withholding of material information and intent to deceive or mislead must be established by clear and convincing evidence. Id. at 1287 (citing Star Scientific, Inc. v. R.J. Reynolds Tobacco Co., 537 F.3d 1357, 1365 (Fed. Cir. 2008)).


Lilly Files Amicus Brief in Myriad Remand – With Friends Like This…

Tuesday, June 26th, 2012

Following its reversal of the Fed. Cir.’s decision in Mayo v. Prometheus (“Mayo”), the Supreme Court GVR’d in response to AMP’s (read: ACLU’s) appeal of Myriad’s claims to isolated DNA sequences and to a method of screening potential anti-cancer drugs using cells transformed with BRCA DNA (“claim 20”). I have reviewed a number of the amicus briefs that were filed prior to the June 15th deadline (oral hearing at the Fed. Cir. is set for July 20th) and they prompted me to reflect on the magnitude of what has been lost and the potential for future judicial limits on patentable subject matter.

First, a quick look back at what was lost in Mayo. Certainly, going forward no one is going to draft claims like the main claims to giving an AZA-type drug, measuring the level of the 6-MP metabolite and drawing a conclusion about whether to adjust the dose. However, because the Prometheus claims were method-of-medical treatment claims in disguise, it seems to me that claims to dosing regimens of all types, for any purpose, are no longer patentable subject matter. Such claims are often used by NDA holders to obtain add-on patents, that are listed in the Orange Book as methods of using the approved drug. The Fed. Cir. has invalidated such claims as inherently anticipated or as obvious in view of the primary use of the drug, e.g., an effective dose treats cancer, but the court’s job just got a lot easier.


Sherley v. Sibelius – The Undead Threat To Stem Cell Funding

Thursday, April 26th, 2012
Green Energy Sources

When a three judge panel of the US Court of Appeals for the D.C. Cir. dismissed a preliminary injunction obtained by plaintiffs in April 2011, and the lower court judge then  dismissed plaintiffs’ suit to block the Administration’s guidelines permitting funding for embryonic stem cell research as violative of the Dickey-Wicker amendment banning funding that might destroy or harm a human embryo, I thought the issue had been laid to rest. However, plaintiffs – not the Government – have now appealed to the appeals court, arguing that the prior ruling overturning the injunction banning hESC research is not binding on the present panel.

The earlier panel had ruled that the  Dickey-Wicker amendment, that is tacked onto some bill sure to pass Congress each year, is ambiguous in view of the more precise policies urged by the Administration and the NIH, regulating hESC research. The plaintiffs argued that the earlier panel ruling simply involved injunctive relief and should not be “the law of the case” regarding the merits of their suit. Defendants and amici argued that the panel effectively analyzed the merits of the suit: the conflict or congruence between Dickey-Wicker and the NIH policy resuming funding for stem cell research.

If the current panel does not agree that it is bound by the earlier panel’s analysis and sides with the (anti-hESC research) plaintiffs, this case will wend its way to the Supreme Court. However, if the Administration changes in November, and a new Administration reinstates the “Bush ban,” the appeal will be moot. Those who support hESC research should hope that the stem cell researchers can get some grants funded and new cell lines approved  in the next six months or so. A pro-science door that has been open for about three years may be about to close.

Read the article from Regenerative Medicine Forum

Prior posts on this subject can be found here:

July 28, 2011

May 2, 2011