On December 7th at 10:05 a.m., the Supreme Court heard oral arguments (transcript at end of this post) in the “Prometheus case,” presented by Stephen M. Shapiro of Meyer Brown (Mayo) and Richard P. Bess of Latham & Watkins. Solicitor General Verrilli also argued. In earlier posts on this appeal, e.g., on November 7th, I noted that Mayo’s brief de facto asks the Court to follow the “LabCorp dissent” (548 U.S. 132, 136). In this dissent from a dismissal of cert. as improvidently granted, Justice Breyer, joined by Souter and Stevens, urged the Court to consider that all simple diagnostic tests that correlate a level of a chemical marker (like homocysteine) to a pathology (like a vitamin deficiency) are no more than impermissible attempts to patent natural phenomena: “[T]he process is no more than an instruction to read some numbers in light of medical knowledge.”
Posts Tagged ‘patent attorney’
Oral Argument in Mayo v. Prometheus – Why Mayo Will Lose
Friday, December 9th, 2011Cordis v. BSC – Therasense at Work
Monday, October 3rd, 2011
Last week the Fed. Cir. affirmed the district court’s finding of no inequitable conduct, due to the failure of the applicant or his attorney to cite a relevant prior art reference in a parent application that yielded the two patents-in-suit. Cordis Corp. v. Boston Scientific Corp., App. No. 2010-1311, -1316 (Fed. Cir. Sept. 28, 2011). (A copy of the decision is found at the end of this post.) In the earlier proceeding the district court, in a bench trial, found that BSC had proved the threshold levels of materiality of the reference and intent regarding nondisclosure by clear and convincing evidence. The court went on to hold that applicant had not purged the fraud (my term) by merely citing the reference in the “child application” in a “normal IDS” and that both patents were unenforceable due to IC (ed. note – remember “the fruit of the poisonous tree”).
On appeal, the Fed. Cir. agreed that the reference was material but remanded for additional, more specific findings on intent to deceive, e.g., whether or not the inventor in fact read the search report or the reference. Cordis Corp. v. Boston Scientific Corp., 188 F. App’x 984, 988 (Fed. Cir 2006). The district court, did not make these findings but, rather, reconsidered the evidence of record and found that the “clear and convincing standard” had not been satisfied regarding deceptive intent. The court based its new finding on its opinion that “the inferences argued by plaintiff are supported by evidence of record and are as reasonable as those inferences argued by defendants.” [641 F. Supp. At 359; citing Scanner Techs. Corp. v. ICOS Vision Sys. Corp., 528 F.3d 1365 (Fed. Cir. 2008)].
Myriad Petition For Rehearing Denied
Wednesday, September 14th, 2011
On September 13, 2011, the Fed. Cir. panel in AMP v. Myriad denied AMP’s (read ACLU’s) petition for rehearing by the panel. (A copy of the petition can be found at the end of this post.) In challenging the holding that the claimed isolated DNA molecules are not products of nature, AMP argued that “the language of the patents defines the function, not the structure of the patented genes and gene fragments…the composition claims in the patents are not defined by chemical structure. They are defined by function.” The success of this argument would require the panel to read the term, “[a]n isolated DNA” out of claim 1 of the ‘282 patent:
- An isolated DNA coding for a BRCA1 polypeptide, said polypeptide having the amino acid sequence set forth in SEQ ID NO:2.
Clearly, that was not going to happen, although it appears to be an attempt to riff on dissenter Bryson’s conclusion: “What is claimed in the BRCA genes is the genetic coding material, and that material is the same, structurally and functionally, in both the native gene and the isolated form of the gene.” Slip op. at 13. However, even “markedly different” Judge Moore, who presented the best “chemical” analysis of the claims, had no reason to change her views.
AMP’s second argument was hard to follow, but seemed to be based on its opinion that the claimed BRCA1 and 2 gene fragments are inherently present in the body e.g., in the blood of cancer patients, and so are patent-ineligible natural products. This may be an attempt to reopen the purification vs. isolation argument that held appeal for some of the panel, but arguing that the claimed fragments must arise in vivo “at least some of the time” is not going to carry the day as an inherent anticipation argument, much less as a product of nature argument.
The panel left pending Myriad’s petition for rehearing that challenges AMP et al.’s standing to bring suit, although AMP argued that the American College of Medical Genetics has organizational standing and an additional plaintiff, Ellen Matloff, had conversations about possible infringement with Myriad. AMP may not be in the bottom of the 9th inning yet, but they are in the bottom of the 8th. The panel did such a thorough analysis of the issues that I just don’t see a petition for rehearing en banc getting on base.
Cybersource Corp. v. Retail Decisions, Inc.
Friday, August 19th, 2011
In recent posts, I have worried, then warned, the Fed. Cir. holding that the Myriad “analyzing” or “comparing” diagnostic claims were invalid as abstract ideas, would cloud the IP future of “modern” claims to personalized medicine (see posts of July 29 and 31, 2011 and Oct. 29, 2010). To refresh our collective memories, here is a shortened version of one of the Myriad method claims:
1. A method for screening a tumor sample from a human subject for a somatic alteration in a BRCA1 gene in said tumor which comprises comparing a first sequence…[of] a BRCA1 gene from said tumor sample…with a second sequence …[of] a BRCA1 gene from a nontumor sample of said subject, wherein a difference in the sequence of the BRCA1 gene…indicates a somatic alteration in the BRCA1 gene in said tumor sample.
