Posts Tagged ‘intellectual property’

Justice Breyer to Diagnostic Test Patentees – “Abandon Hope All Ye Who Enter Here.”

Friday, April 29th, 2016

danteKevin Noonan recently posted an article entitled “The Fantastical World of Justice Stephen Breyer” that demonstrates, via Breyer’s quotes during various oral arguments, his suspicion that the patent system is, for example, issuing broad, hard to understand, claims that lead to “national monopolies” and encourage trolls to  harass “small businessmen.” Breyer certainly appears to be leading the court in this area – he authored Mayo after all. No matter what Dr. Noonan thinks about his rhetoric, his anti-patent bias is clear, and has been for some time.

Noonan’s article encouraged me to re-read Breyer’s dissent from the Court’s refusal to decide whether or not the diagnostic claim at issue in Laboratory Corp. of Amer. Holdings v. Metabolite Labs., Inc. was patent-eligible under s. 101. (Breyer’s “Metabolite Labs. Dissent.”) (A copy can be found at the end of this post.) This remand occurred in 2006. The Fed. Cir. was still using the “useful, concrete and tangible result” test of State Street Bank, which morphed into the machine or transformation test by the time Bilski was decided. Both “tests” were urged to be applicable to the diagnostic claim at issue, but Breyer found no transformation recited in the claims and no precedent in the u-c-t test.

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Myriad vs. Mayo – Detection vs. Processing at the Fed. Cir.

Tuesday, April 26th, 2016

iStock_000005967663_SmallRapid Litigation Mgmt v. CellzDirect: Splitting Detection of a Natural Phenomenon from its Application to Yield a Product.

Courtenay G. Brinkerhoff at pharmapatentsblog.com summarized the oral arguments at the Fed. Cir. (App. No. 15-1570) conducted on April 5, 2016 in Rapid Litigation Mgmt Ltd. v. CellzDirect, Inc. (You can download an MP3 of the oral arguments here.) The district court invalidated claims directed to a method for isolating hepatocytes that can survive more than one freeze-thaw cycle as a patent-ineligible law of nature (US Pat. No. 7,604,929):

1.    A method of producing a desired preparation of multi-cryopreserved hepatocytes….comprising:

(A)  Subjecting hepatocytes that have been frozen and thawed to density gradient fractionation to separate viable hepatocytes from non-viable hepatocytes,

(B)  Recovering the separated viable hepatocytes, and

(C)  Cryopreserving the recovered viable hepatocytes to thereby form said desired preparation of hepatocytes without requiring a density gradient step after thawing the hepatocytes for the second time, wherein the hepatocytes are not plated between the first and the second cryopreservations, and wherein greater than 50% of the hepatocytes of said preparation are viable after the final thaw.

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Examining the Examiners – Knowledge is Power

Thursday, April 7th, 2016

ninjaA new website came across my inbox this week. It is called Examiner Ninja and provides analytics on patent examiners. The creator of the website, Justin Roettger, says the website is free and told me “I’m just looking to contribute something to the community that I am now a part of.” Looking at the website you can learn more about Justin:

“Hi! My name is Justin Roettger and I live in Los Angeles, CA. When I’m not fooling around with patent examiner websites, I like woodworking, tinkering with electronics, and ping pong. I built this site as a side project while waiting for the USPTO to complete my registration after passing the patent bar last October. I currently work in web development / IT but I’m hoping to transition into working as an EE/CS patent attorney soon. Feel free to shoot me an email at jlroettger@gmail.com for site feedback, questions, suggestions, etc.”

Take a look and see what you think.

Superman Breyer v. Batman Lourie Battle in the Sequenom Petition for Cert.

Sunday, March 27th, 2016

iStock_000087208111_SmallSince this is an amplification of my last post on the Sequenom petition for cert. in Sequenom v. Ariosa, please go back at read my first post on the petition. I have been arguing for some years that the patent world will never be at rest where diagnostic claims are concerned until the patent eligibility of a simple “If A, then B” claim is addressed by the Fed. Cir. and/or the Supreme Court.

This is the type of claim criticized by Justices Breyer, Souter and Stevens in the “Metabolite Labs dissent” of 2006, when the Court declined to decide the patent-eligibility of a method of detecting a deficiency of cobalamin or folate by assaying a body fluid for an elevated level of homocysteine and correlating the elevated level with a cobalamin or homocysteine deficiency.” Justice Breyer just called the claim a law of nature with a mental step.

Fast forward to 2012 and the Mayo decision (132 S.Ct. 1289), and the Supreme Court invalidated an awkwardly drafted claim that I will re-write here as a method of medical treatment claim:

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