In re: Board of Trustees of Stanford: “Big Data” Personalized Medicine is an Abstract Idea

In re: Board of Trustees of the Leland Stanford Junior University, Appeal no. 2020-1012 (Federal Circuit, March 11, 2021) a three judge panel of Prost, Lurie and Reyna affirmed the ruling by the Board of Appeals that the claims of U. S. Serial No. 13/445,925 are patent ineligible, as directed to an abstract idea with no further inventive step. I tend to think of Judges Reyna and Prost as being in favor of a broad interpretation of the Mayo/Alice test and Judge Lourie as being less happy with the test but bound to apply it. However in American Axle, Lourie and Chen voted to rehear the appeal en banc while Judge Prost voted not to. Here, Judge Reyna wrote for the panel.

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Announcing “Mueller on Patent Law” from Fastcase

Guest post from Chisum Patent Academy:

The Chisum Patent Academy is pleased to announce the January 2021 publication of the two-volume practitioner treatise, Mueller on Patent Law, in print and electronic formats. The treatise is authored by our co-founder, Janice M. Mueller, and updated annually. A comprehensive yet accessible two-volume work, this well-organized resource provides concise and timely access to U.S. patent law in the twenty-first century. Rather than a historical encyclopedia, Mueller’s treatise is a carefully curated guide to understanding the current state of patent law and how it has developed during the Federal Circuit’s tenure.

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Upcoming AUTM Webinar Examines Avoiding the Trap of Inequitable Conduct

On March 4, an AUTM webinar will discuss, “Inequitable Conduct: How to Protect Your Patents from this Unenforceability Trap”. This presentation will take place from 12 p.m. to 1:30 p.m. Eastern time this Thursday. Panelists will include David Hricik of Northwestern University’s Mercer Law School, William Covey of the USPTO’s Office of Enrollment Discipline, and Warren D. Woessner, Schwegman Lundberg & Woessner. If this topic piques your interest, please join us for this discussion.

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Amgen v. Sanofi – How Wands Factors make Biotech Claims “Magically” Disappear

While this recent Fed. Cir. decision – Amgen Inc. v. Sanofi, Appeal No. 2020-1074 (Fed. Cir., Feb. 11, 2021) seems predictable, given the fate of antibody claims that recite the target and the function of antibody binding thereto, there are a few interesting wrinkles to comment on. A Fed. Cir. panel of Judges Lourie, Prost and Hughes, Lourie writing, affirmed the district courts finding that Amgen’s claims failed the enablement test of s. 112. Evaluating the Wands factorsthere are seven of them—to determine whether or not the claimed antibodies would require undue experimentation to locate ones falling within the scope of the claims, the panel relied on its fairly extensive precedent, most of it unfavorable to Amgen, and concluded that “lack of enablement [was found] due to the undue experimentation required to make and use the full scope of the claimed compounds that require a particular structure and functionality.” As the panel noted, citing McRO 959 F.3d at 100:

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