Supreme Court Will Not Review Therasense Standards – Yet

Posted on October 16, 2013 by Warren Woessner

On October 15, 2013, after reviewing the Government’s Amicus Brief (a copy is available at the end of this post), the Supreme Court denied the petition for cert. filed by Sony Computer Entertainment, one of the defendants in 1st Media, LLC v. Electronic Arts Inc., App. No. 2010-1345 (Fed. Cir. Sept. 13, 2012). Sony had alleged inequitable conduct due to the inventor’s and the patent attorney’s failure to disclose relevant references during prosecution of a chain of applications relating to multi-media entertainment systems. Pre-Therasense, the district court had tried the IC charges prior to the case-in-chief, and found IC without deciding if there was “but-for” materiality. The Federal Circuit reversed due to the failure of the district court to prove the element of specific intent to deceive the PTO. The Fed. Cir. decision contains this memorable quote: “Moreover it is not enough to argue carelessness, lack of attention, poor docketing or cross-referencing, or anything else that might be considered negligent or even grossly negligent.” Slip op. at 12-13. [Ed.’s note: These factors are starting to sound like the elements of a defense against a charge of IC.]

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Cert. Denied in Intema Ltd. v. PerkinElmer, Inc.

Posted on October 11, 2013 by Warren Woessner

On October 7, 2013, the S. Ct. denied cert., ending Intema’s appeal of the Fed. Cir. decision that its patent claims on a method to determine the level of risk of a Down syndrome pregnancy were not patent-eligible subject matter under s. 101. (Supreme Court No. 12-1372). Although a high court ruling on the patent-eligibility of the claims of U.S. Pat. No. 6,573,103 might have clarified the confused state of the law regarding diagnostic method claims, the questions presented by Intema, as set forth in its petition were quite narrow.

Intema argued that measuring two different biomarkers at two different times should meet the Mayo standard for “inventive concept”, because these data gathering steps were per se novel and not routine. Intema also argued that a diagnostic claim should not be required to end with an “action step” such as, what, the patient being advised to, or actually terminating the pregnancy? Finally, Intema spent some space in its brief arguing, half-heartedly it seemed to me, that there was enough transformation of sampling data, as by displaying an ultrasound on a monitor, for the claims to pass the M or T test.

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Case Law of the EPO Boards of Appeal Released

Posted on October 10, 2013 by Warren Woessner

Thanks to correspondent Paul Cole of Lucas &Co. for sending us the below notice.

Students of patent law will welcome the 7th edition of this well-known compilation which went live on the EPO website on 4th October. It is now available both online in HTML here and in hardback, but not yet as a pdf. Such works grow with time: the 5th (2006) edition ran to some 746 pages including the index, the 7th (2010) edition was of 1091 pages and the present edition is of some 1200 pages.

A foreword by Wim van der Eijk, Chairman of the Enlarged Board, records that the first appeal decision, J 2/78, issued on 1 March 1979 and was followed in 1981 by 16 technical appeal decisions. The number of technical appeals has grown from 8 in 1980 to 2659 in 2012. It is recorded that over the past 34 years the boards of appeal have settled more than 34 000 cases and that more than 90 decisions or opinions of the Enlarged Board covering legal points of fundamental importance have been handed down.

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Skinmedica, Inc. and, i.e., Disclaimer

Posted on October 2, 2013 by Warren Woessner

The Fed. Cir. has been pretty hard on defendants alleging disclaimer of claim scope in recent decisions but that was not the case here. But what caught my attention is that Judge Prost spent four pages of his opinion on the effect of the abbreviation, “i.e..”(Slip op. at 22-26). Early in the detailed description, Skinmedica stated: “The cells are cultured in monolayer, beads (i.e., two-dimensions) or, preferably, in three dimensions.” After finding that this list includes the disjunctive (“or”) “as the coordinating conjunction that…plainly designates that a series describe alternatives,” Judge Prost agreed with the district court that the “phrase ‘beads (i.e., two-dimensions)’ explicitly define[s] beads in a two-dimensional culture method, despite that culturing cells in three-dimensions on beads was known to the art.” Judge Prost was just getting started:

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