Posts Tagged ‘Supreme Court’

Genetic Technologies v. LabCorp. – Mayo Redux.

Tuesday, September 16th, 2014

It was Mayo redux with a vengeance in the September 23, 2014 decision in Genetic Technologies Ltd. v. Laboratory Corp. of Amer. Holdings et al., Civil Action No. 12-1736-LPS-CJB (D. Del. 2014).  Magistrate Judge Burke released an opinion invalidating claim 1 of Genetic Technologies U.S. Patent No. 7,615,342 as claiming non-patentable subject matter under s. 101 that could have been stenciled from the PTO s.101 Guidelines. Claim 1 was directed to a method to predict potential sprinting, strength or power performance in a human. The claim had an “analyzing step” to look for variations in the ACTN3 gene of the human, a “detecting step” to determine the presence of two 577R alleles at a loci of the ACTN3 protein and (c) a “predicting step” positively associating two copies of the allele with the performance elements.

Citing Mayo v. Prometheus and PerkinElmer v. Intema copiously, the correlation between the alleles and athletic performance was held to be a natural law and the analyzing and detecting steps were the “employment of … routine conventional process[es]” that were not sufficient to transform an unpatentable law of nature into a patent-eligible application of such a law. The “predicting step” was dismissed as “’no more than an instruction [to] apply the [natural] law.’ Prometheus, 132 S Ct at 1297.”

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Takeaways from Seattle Summer 2014 Seminars

Monday, August 25th, 2014

A guest post by Donald Chisum and Janice Mueller.

In August 2014 the Chisum Patent Academy held two back-to-back seminars in its Seattle, Washington facility to discuss and debate current developments in patent law. Each roundtable seminar group was limited to ten persons; sessions were led by treatise authors and educators Donald Chisum and Janice Mueller.

Attendees included experienced patent litigators and prosecutors from law firms and corporations in the U.S., Canada, Germany, and India. Each seminar met for three days. Seattle’s great summer weather, coffee, and lively discussion were enjoyed by all.

Here’s a recap of the takeaways from the seminars:

2014 Supreme Court Decisions: Moderation? The year 2014 was an undoubtedly high water mark in terms of the number of pertinent SCOTUS patent law decisions–six directly on patent law issues plus a copyright case (Petrella) that could alter the laches defense for patent infringement claims. Commentary and initial responses, including those by the PTO, suggest that the cases represent a significant move toward constricting the availability of patent rights. Yet, in-depth discussions of the cases during our seminars detected a tone of moderation. For example, Alice has been read as broadly precluding patents on “software.” However, language in Alice strongly suggests that claims to technical advances, even broad claims that involve computer implementation, remain patent eligible. Unfortunately for patent applicants and owners, it will take time and resources to establish such eligibility through appeals from PTO rejections and summary district court invalidations.

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Nautilus v. Biosig – Solving Insoluble Ambiguity?

Monday, June 2nd, 2014

Today the Supreme Court unanimously rejected the Fed. Cir.’s standard for resolving challenges to validity under s.112 para.2, based on whether or not a claim was “amenable to construction” and not “insolubly ambiguous”. Noting that Nautilus had urged that a patent is invalid when the level of ambiguity is such that “readers could reasonably interpret the claim’s scope differently” and that Biosig and the Solictor had argued s.112(2) is met when the patent provides “only” reasonable notice of the scope of the claimed invention, the Court attempted to reach a middle ground:

“Cognizant of the competing concerns, we read s. 112, para. 2 to require that a patent’s claims, viewed in light of the specification and prosecution history, inform those skilled in the art about the scope of the invention with reasonable certainty…[citing]” Markman, 517 U.S., at 389 (claim construction calls for ‘the necessarily sophistication analysis of the whole document,’ and may turn on evaluations of expert testimony.”

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USPTO Subject Matter Eligibility Guidance – 9th May Forum – Outcome and Opportunities

Friday, May 16th, 2014

Guest Post from Paul Cole, Lucas & Co., UK

As noted in postings in this and other blogs, controversy has been generated by the publication of new USPTO patent eligibility guidance for laws of nature, natural products and natural phenomena (Andrew Hirshfeld, 4th March). A forum hosted by the Office on 9th May provided an opportunity for feedback from organizations and individuals. Some 80 people attended in person and some 350 people watched via webcast. A replay is available via the USPTO’s webpage (http://www.uspto.gov/patents/announce/myriad-mayo.jsp) and slides from the presentations by the USPTO and by 9 of the 10 invited speakers are also available.

Perhaps the most important take-away message was that although the Office is unwilling to withdraw the guidance or to depart from the basic principles contained in it, it is recognised that development must be an iterative process. Until the end of June the public still has the opportunity to submit comments, suggest alternative interpretations and submit additional training examples. Andrew Hirshfeld went out of his way to say that he would love to see additional examples.

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