Posts Tagged ‘Patent Law’

Federal Circuit flips on Ultramercial v. WildTangent

Friday, November 14th, 2014

After two trips to the Supreme Court and two remands, the Federal Circuit considered Ultramercial v. WildTangent for the third time—this time with Alice in hand—and ruled that the district court properly dismissed Ultramercial’s suit as failing to state a claim, since its patent (U.S. Pat. No. 7,346,545) does not claim patentable subject matter.

As you almost certainly recall, the patent was directed to a “method for distribution of products over the Internet” whereby a consumer was given access to “a media product” if the consumer viewed an ad. While the claim contained 11 steps, the court boiled it down to “showing an advertisement before delivering free content” or “using advertisement as an exchange or currency.” Under step (1) of the Mayo analysis, this was found to be an abstract idea.

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C.I.T. v. Hughes Comm. – Survival Guide for Software?

Thursday, November 13th, 2014

On November 3, 2014, in Cal. Inst. Of Tech. v. Hughes Communications., 2014 U.S.. Dist. LEXIS 156763 (C.D. Cal. 2014), Judge Mariana Pfaelzer penned the most thorough defense of software claims attacked under s. 101 that I have seen since State Street Bank. The opinion is also useful since it both continuously cites – and often distinguishes or explains Mayo—and because it is very critical of the analytical framework employed by the same court in McRO (Planet Blue) v Namco, a September decision on which I posted earlier. (A copy of this decision can be found at the end of this post.)

The heart and soul of the opinion is the Judge’s dismissal of the “point-of-novelty” approach that she finds was used in McRO, as opposed to “purpose” test that she applies in this opinion:

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Genetic Technologies v. Bristol Myers – 101 At Work

Wednesday, November 5th, 2014

In the recent memorandum opinion, the court invalidated claim 1 of U.S. Pat. No. 5,612,179, owned by Genetic Technologies, Ltd., as “impermissibly [claiming] a natural phenomenon.” (Genetic Technologies, Ltd. v. Bristol-Myers Squibb Company, C.A. No. 12-394-LPS (D. Delaware, Oct. 30, 2014), copy of which can be found at the end of this post).

If you have been following the Mayo/Myriad/Intema trail of tears, you could probably write 98% of this opinion “from memory.” A number of aspects of this very lengthy and predictable opinion stand out, however.

The claims were directed to a method of detection of at least one coding region allele of a multi-allelic genetic locus by amplifying genomic DNA via PCR, with a primer pair that spans a non-coding region sequence. The primer pair defines a DNA sequence which is in genetic linkage with the genetic locus and contains a sufficient number of non-coding region sequence nucleotides so that PCR produces an amplified DNA sequence characteristic of said allele; “and analyzing the amplified DNA sequence to detect the allele.” The claim was based on the discovery that there can be a correlation between variations in non-coding introns and coding region alleles; that is, that SNPs in non-coding DNA regions can also be in linkage disequilibrium with SNPs in coding regions of DNA . The genotypes of two SNPS in non-coding regions and two SNPs in a coding region are correlated so that the SNPs in the non-coding region can serve as “surrogate markers’ for the SNPs in the coding region.

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Section 101 at AIPLA

Friday, October 24th, 2014

The increasingly intense conversation about patentable subject matter post-Mayo, Myriad and Alice got off to a slow start at the “Partnering for Patents” meeting held at the PTO on Wednesday. The meeting was a scattering of in-house PTO reports and wish-lists, with some “outside presenters.” Alan Hirschfeld spoke briefly about the Alice decision and the first round of PTO Guidelines, but he offered nothing in the way of new insights, simply reminding the audience that the Guidelines should not be considered final and that the process would be reiterative.

Over at the big AIPLA Annual Meeting in DC, Karen Canady moderated a session today that covered topics ranging from post-grant proceedings under AIA to ethics. Of course the s. 101 presentation by Donna Meuth of Eisai and David Wille of BakerBotts was of the most interest to me. Donna used an example of the rejection of claims involving natural products that Hans Sauer of BIO posted on this website. The claims to the compound, a composition containing it, and its use to treat three types of cancer were all rejected as involving a natural product and as impermissibly tying up the building blocks of human ingenuity. Of course, many in the audience noted that that was what patents were intended to do, but that was cold comfort to the applicant, who failed every one of the test factors in the Guidelines but one.

David Wille attempted a look into the thought processes of the judges applying Alice in district court decisions. He felt that the key to “success” may lie in keeping the focus on the manipulation of real matter, like checks, and emphasizing that the focused claims are not directed to fundamental economic practices, but to the transformation of specific types of data. I think he referred to success as passing the “technological arts test.” The significance of these lessons is far from clear, but they are a start. Still, I feel like the narrator in the Dylan song who laments: “It’s not dark out yet, but its getting there.”