Posts Tagged ‘Warren Woessner’

Mayo Meet Alice Meet Myriad – Fed. Cir. Appreciates “Abstract Art”

Thursday, December 18th, 2014

On December 20th, a panel of the Fed. Cir. of Judges Dyk, Clevinger and Prost – Dyk writing – found that six claims in Myriad’s dwindling arsenal of BRACA1 and 2 patents were invalid as claiming non-statutory subject matter. (University of Utah Res. Foundation et al. v. Ambry Genetics Corp., Appeal No. 2014-1361, -1366 (Fed. Cir., Dec. 20, 2014)). (A copy of the decision is found at the end of this post.) The decision makes more sense than some commentators have given it credit for, but it still reads like the plot of the last Matrix installment.

First, the panel invalidated four composition of matter claims directed to ssDNA segments useful to amplify the BRACA genes or portions thereof, when used as PCR primers, or to identify specific areas of the genes if used as probes. These were claims in US Pat. Nos. 5,747,282 and 5,837,492.

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Revised 2014 Interim Guidance on Patent Subject Matter Eligibility Released by PTO

Tuesday, December 16th, 2014

On Monday, December 15th, the Patent Office released revised “Guidance” on the evaluation of subject matter patent-eligibility under s. 101. (A copy is available at the end of this post.) The “Guidance” is an attempt to unify the analyses that were set forth in earlier Guidelines post-Mayo and post-Alice, and apply to all classes of inventions. After stripping away the introductory material, and the case law summaries, there are only a few pages of substantive guidance.

The most important change to the notorious March 4th “Life Sciences Guidelines” is summarized in the Flowchart on page 9 and in section 3B. If a composition is a “nature-based product,” it is analyzed in step 2B to see if it is “markedly different” from “its naturally occurring counterpart in its natural state.” However, the revised Guidance pointedly drops the requirement that the product be structurally different. Now “markedly different characteristics can be expressed as the product’s structure, function and/or other properties and will be evaluated based on what is recited in the claim on a case-by-case basis.” That is a big “or”:

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Supreme Court to Review Post-Expiration Date Royalties in Kimble v. Marvell

Friday, December 12th, 2014

Despite a negative brief from the Solicitor General’s Office, on Friday the Supreme Court granted cert. in Kimbell v. Marvell, 727 F.3d 856 (9th Cir. 2013) (a copy can be found at the end of this post). The single question presented is “Whether the Court should overrule Brulotte v. Thys” (379 U.S. 29 (1964)). This decision held that a patentee’s use of a royalty agreement extending royalty payments beyond the expiration date of the patent is unlawful per se. This decision had, in some cases, been extended to void licensee’s contract obligations when “hybrid royalty payments” where involved, e.g., when royalties due to both the use of patent and non-patent rights were involved but had not be clearly delineated, and in the case of deferred payments for profits obtained before patent expiration, but paid after expiration. On the other hand, cases like Aronson, which provided for reduced royalties after a fixed period of time if no patent ever issued, were found to be enforceable, since such agreements did not involve patent licenses.

Brulotte has been widely criticized since it issued – after all, expired patents can be practiced for free by any and all – unless a licensee sees something of value and contracts away its rights – and the Supreme Court may well have taken this case due to the cogent summary of the issues by the 9th Circuit. The decision, due in 2015, will be of particular interest to the “patent and licensing offices” of universities, which have long struggled with questions of best practices in obtaining some royalty stream from early-stage technologies whose maximum earning potential may not be realized until the patents covering them have expired, or are about to expire.

Kimble v Marvel

Commil USA v. Cisco Systems – Induced Infringement In For Clarification

Monday, December 8th, 2014

Supreme Court granted cert. to resolve the question of whether or not a defendant’s belief that a patent is invalid is a defense against a charge of inducing infringement. The question appears to rest on Judge Newman’s characterization given in her dissent from the majority opinion (Proust, O’Malley). (A copy of this decision can be found at the end of this post.) However, the majority opinion appears more nuanced to me:

“Under our case law, it is clear that a good-faith belief of non-infringement is relevant evidence that ends to show that an accused infringer lacked the intent required to be held liable for induced infringement.”

I read this as simply stating that the belief can provide evidence of lack of specific intent to induce acts of infringement. The evidence may be “strong,” such as a competent opinion rendered before the offending acts, or “weak,” e.g. the opinion of a non-attorney or a just incompetent opinion. In fact, the majority makes an effort to “spank”‘ Judge Newman in footnote 1:

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