Posts Tagged ‘ip’

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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Sequenom Files Petition for Cert. After Invalidation of Cff Patent

Tuesday, March 22nd, 2016

supreme-courtSequenom, the loser in “Ariosa,” has filed a petition seeking Supreme Court review of the Fed. Cir.’s invalidation of the claims of US Pat. No. 6,258,540 as an attempt to claim a natural product, cffDNA. While there is no dispute among the commentators that this decision was flat-out wrong, the majority of the panel seemed to agree that it was compelled by the “Mayo/Alice Rule” (after they spotted the natural product, cffDNA, and ignored the other claim steps as conventional). (A copy of the Petition can be found at the end of this post.)

As previously noted by me, this is not a great case to settle the issue of whether or not claims based on biomarkers are patent-eligible. All of the claims on appeal, except for claim 21, are simply directed to methods for detecting cffDNA in a maternal serum or plasma sample. These claims are as patentable as a method of testing transgenic potatoes for the level of the precursor to acrylamide – a carcinogen that you do not want in your chips. The claim is a method claim, even if the precursor enzyme is a natural product. Even the ACLU in Myriad argued that, while a new method of mining gold would be patentable subject matter, a gold nugget is not.

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Takeaways From Chisum Patent Academy March 2016 Seminar

Thursday, March 17th, 2016

Takeaways from Our March 2016 Cincinnati Seminar

By Donald S. Chisum and Janice M. Mueller

Copyright 2016 Chisum Patent Academy, Inc.

On Marcchisum march 2016h 10-11, 2016 the Chisum Patent Academy held a small-group seminar at the 21C Museum Hotel in Cincinnati, Ohio to discuss and debate current developments in U.S. patent law. Our theme was “Obviousness in the Time of IPR.” The roundtable seminar group was limited to ten persons; treatise authors and educators Donald Chisum and Janice Mueller led each of four discussion sessions. Our Cincinnati participants were experienced patent litigators and prosecutors from law firms and corporations in Cincinnati, Cleveland, Minneapolis, New York City, and Pittsburgh.

Here’s a recap of our takeaways from the Cincinnati seminar:

TakeAways CIN 2016 Seminar 031716

Ohio Willow Wood’s Appeal of IC Finding Goes Up In Smoke

Tuesday, February 23rd, 2016

iStock_000062460636_SmallOn February 19th, the Fed. Cir. affirmed a District Court’s finding of inequitable conduct in Ohio Willow Wood Co. (OWW) v. Alps South (Alps), LLC, following the Fed. Cir.’s remand of summary judgment of no inequitable conduct in 2013. (Ohio Willow Wood Cr. v. Alps South LLC, 2015 U.S. App LEXIS 2864 (Fed. Cir. 2016).) (A copy is available at the end of this post.)

The facts of the case are complex, and involve two reexaminations of U.S. Pat. No. 5,830,237, claiming a cushioning device for amputees, “SSGL.”

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