Advocates in Alice v. CLS Bank Debate “In the Cloud” in FCBA Webinar

Posted on April 11, 2014 by Warren Woessner

Last Thursday, I managed to miss the webinar sponsored by the Federal Circuit Bar Association on Alice v. CLS Bank, post-oral argument. However, I just finished listening to the audio transcript. It is not easy to summarize an hour-long discussion debate with a moderator and four participants, but it is not every day that you get to hear the attorneys for the two parties, Carter Phillips (Sidley Austin) for CLS, Mark Perry (Gibson Dunn) for Alice, along with Scott Weidenfeller, Senior Counsel in the Office of the Solicitor, USPTO, and John Whelan, Dean of IP Law at George Washington Law School (moderator was Aldo Noto (Andrews Kurth). Mr. Perry provided the slides. Even though it was not always possible to tell who was speaking, there was a lot of agreement, and I will try to summarize and comment on themes that ran through the program. Comments in brackets are my thoughts.

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Cert. Granted In Teva V. Sandoz (“April Fool” Lightning Ballast!)

Posted on April 2, 2014 by Warren Woessner

On Monday, the Supreme Court granted cert. in the somewhat overlooked panel decision, Teva Pharm., Inc. v. Sandoz, Inc., 727 F.3d 1363 (Fed. Cir. 2013)(Sup. Ct. 13-854) (a copy can be found at the end of this post). Most commentators had predicted that the Supreme Court would review the en banc decision in Lightning Ballast, but it is not to be.

The panel, Judge Moore writing (who at least has taken some chemistry courses), reviewed a district court decision that had found two groups of claims from eight Teva patents on Copaxone valid. Defendants in this Hatch-Waxman litigation had argued that both the Group I and Group II claims failed s.112(2) as insolubly ambiguous due to multiple definitions of the molecular weight in the specification. The district court, construed the term “molecular weight” as determined by a single methodology and so disagreed as to both sets of claims.

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Oral Arguments – Can Alice Get Out Of “Wonderland”?

Posted on April 1, 2014 by Warren Woessner

And by “Wonderland” I am referring to the maze of hypotheticals and questions that were thrown at Carter G. Phillips by the Justices during his opening argument for Alice Corp. (A copy of the transcript can be found at the end of this post.)  Tasked with the seemingly impossible role of defending both business method patents and software patents, Mr. Phillips hardly got a word in edgewise. (He was first interrupted after only 8 lines of his argument.) One of the first questions was, “How is an intermediate settlement a less abstract [idea] than hedging”? Mr. Phillips only argument seemed to be along the lines: Alice just doesn’t claim a concept as simple as “intermediated settlements” – Alice claims a remarkably complex method of managing transactions in a modern economy that has to be computer-implemented.  He had to concede that programming a computer would not imbue the claims with that “something more” that Mayo requires and things went downhill from there, as he was hit with a hail of simple analogies relating to methods to assure solvency.

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USPTO s.101 Guidelines – How to “Eviscerate Patent Law”

Posted on March 27, 2014 by Warren Woessner

On March 19th, the USPTO released 93 slides as training materials to help Examiners navigate the lengthy ”Guidelines for Subject Matter Eligibility Analysis of Claims Reciting or Involving Laws of Nature,” et al. (A copy of the slides is available at the end of this post.) Although multiple law review articles and blog posts will surely be written about various features of these Guidelines and Training Materials, I would like to focus, fairly briefly I hope, on the two most ambitious, and egregious aspects of these materials.

The first is the unprecedented (literally) expansion of the definition of “natural product” to require that the claimed natural product must be structurally different from the product as it occurs in its natural source, and not simply be functionally changed or improved. See, e.g., slides 48-56. This heightened patent-eligibility requirement appears to have been extracted from Chakrabarty, which described the altered bacterium as having “markedly different characteristics from any found in nature, and one having the potential for significant utility.” However, I don’t see any requirement that the new bacterium be markedly structurally different than its naturally occurring cousins. In Myriad, the isolated genomic DNA was unquestionably structurally different, but the Court based its holding on its opinion that its primary data storing and transmitting properties were unchanged. The Court minimized the import of the structural changes: “Myriad’s claims…[do not] rely in any way on the chemical changes that result from the isolation of a particular section of DNA.”

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