Posts Tagged ‘Intema’

Cert. Denied in Intema Ltd. v. PerkinElmer, Inc.

Friday, October 11th, 2013

On October 7, 2013, the S. Ct. denied cert., ending Intema’s appeal of the Fed. Cir. decision that its patent claims on a method to determine the level of risk of a Down syndrome pregnancy were not patent-eligible subject matter under s. 101. (Supreme Court No. 12-1372). Although a high court ruling on the patent-eligibility of the claims of U.S. Pat. No. 6,573,103 might have clarified the confused state of the law regarding diagnostic method claims, the questions presented by Intema, as set forth in its petition were quite narrow.

Intema argued that measuring two different biomarkers at two different times should meet the Mayo standard for “inventive concept”, because these data gathering steps were per se novel and not routine. Intema also argued that a diagnostic claim should not be required to end with an “action step” such as, what, the patient being advised to, or actually terminating the pregnancy? Finally, Intema spent some space in its brief arguing, half-heartedly it seemed to me, that there was enough transformation of sampling data, as by displaying an ultrasound on a monitor, for the claims to pass the M or T test.

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Intema Files Petition for Grant of Certification

Thursday, September 26th, 2013

Following the Fed. Cir. holding that the claims in Intema’s patent (U.S. Pat. No. 6,573,103) on an improved method for determining the risk of a Down’s syndrome pregnancy were patent-ineligible as directed to a law of nature and a mental step, Intema petitioned the Supreme Court to grant cert. on May 16, 2013 (2013 U.S. S. Ct. Briefs LEXIS 2395). Intema urged the Court to consider that the Intema panel holding that Mayo (“Prometheus”) compelled the ruling, was a “miscarriage of justice” and would “eviscerate” claims to diagnostic and screening tests and personalized medicine.

The heart of Intema’s thorough analysis of Mayo, and about every other major decision involving patentable subject matter in the life sciences area, is its argument that the Fed. Cir. has imposed a “rigid rule” (a popular term to get the S. Ct. interested in reviewing a Fed. Cir. decision) that (a) data gathering steps, even if they include novel and non-obvious combinations of known steps, may not be considered all or even part of the “inventive concept” required by Mayo, that ensures that the patent is significantly more that the natural law itself, and (b) that a claimed method that provides test results (Intema studiously avoids the term “diagnosis” for some reason) that determine a (potential) course of action must include a final step that involves physical activity (as opposed to mental activity, such as arriving at a diagnosis).

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