Posts Tagged ‘Federal Circuit’

USPTO Forum to Discuss the Guidance on Subject Matter Eligibility of Claims Reciting Laws of Nature

Wednesday, April 16th, 2014

On May 9th the Patent Office is hosting a forum to receive public feedback from organizations and individuals on the “Guidance”(link below). As followers of Patents4Life are well aware, I have not been shy in posting my opinions regarding patenting inventions based on a number of the “Laws of Nature.” Below is my attempt to summarize some of the points of my commentary as written feedback to the PTO. If you invent or prosecute in this arena, you are already aware that Examiners are locating laws of nature, natural products, etc. in claims of all sorts, stripping away the other claim elements as conventional procedures and rejecting the claims as attempts to monopolize “natures handiwork.”

The Guidelines Contravene Decisions of the Fed. Cir./CCPA That Should Guide the Patenting of “Natural Products”

The extension of the Myriad Supreme Court decision barring patents on fragments of DNA isolated from the human genome did not require the formulation of PTO Guidelines barring patents on “Natural Products” unless they are structurally altered from their condition in nature (e.g., in their natural source). In re Bergy and In re Bergstrom make it clear that isolation alone can impart s.101 novelty to natural products that are isolated and purified from their natural sources. (Bergy is precedential, Judge Lourie’s opinion notwithstanding, as can be ascertained from the description of the history of the Bergy and Chakrabarty cases as it is reproduced in Chakrabarty. What the Office should be “measuring” in the extent in change in physical properties and/or practical utility that results from the isolation/purification. A gold nugget may be minimally changed from its physical properties and/or practical utility when it is panned out of a stream. However, the microorganisms in question in Bergy and the prostaglandins in Bergstrom were of no practical use in their natural state, but became valuable biofactories or drugs following extraction and purification. (The ACLU also conceded that the isolation of a drug that occurred in a very low concentration in a tree could render it patentable, since a controlled dosage could be given.)


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.


Cert. Granted In Teva V. Sandoz (“April Fool” Lightning Ballast!)

Wednesday, April 2nd, 2014

On Monday, the Supreme Court granted cert. in the somewhat overlooked panel decision, Teva Pharm., Inc. v. Sandoz, Inc., 727 F.3d 1363 (Fed. Cir. 2013)(Sup. Ct. 13-854) (a copy can be found at the end of this post). Most commentators had predicted that the Supreme Court would review the en banc decision in Lightning Ballast, but it is not to be.

The panel, Judge Moore writing (who at least has taken some chemistry courses), reviewed a district court decision that had found two groups of claims from eight Teva patents on Copaxone valid. Defendants in this Hatch-Waxman litigation had argued that both the Group I and Group II claims failed s.112(2) as insolubly ambiguous due to multiple definitions of the molecular weight in the specification. The district court, construed the term “molecular weight” as determined by a single methodology and so disagreed as to both sets of claims.


Oral Arguments – Can Alice Get Out Of “Wonderland”?

Tuesday, April 1st, 2014

And by “Wonderland” I am referring to the maze of hypotheticals and questions that were thrown at Carter G. Phillips by the Justices during his opening argument for Alice Corp. (A copy of the transcript can be found at the end of this post.)  Tasked with the seemingly impossible role of defending both business method patents and software patents, Mr. Phillips hardly got a word in edgewise. (He was first interrupted after only 8 lines of his argument.) One of the first questions was, “How is an intermediate settlement a less abstract [idea] than hedging”? Mr. Phillips only argument seemed to be along the lines: Alice just doesn’t claim a concept as simple as “intermediated settlements” – Alice claims a remarkably complex method of managing transactions in a modern economy that has to be computer-implemented.  He had to concede that programming a computer would not imbue the claims with that “something more” that Mayo requires and things went downhill from there, as he was hit with a hail of simple analogies relating to methods to assure solvency.