The Federal Circuit affirmed a decision by the U.S. Patent and Trademark Office Patent Trial and Appeal Board (PTAB) rejecting claims for failure to satisfy the subject matter eligibility standard under 35 U.S.C. § 101, in ex...more
Senator Thom Tillis (R-NC) has been busy letter writing lately (see "Sen. Tillis Sends Letter to President Regarding Next USPTO Director"), and spent a good portion of 2019 being busy trying to convince his colleagues in...more
The transcendental conundrum in patent law in these times is how to overcome the misinterpretation of the Supreme Court's decisions on patent eligibility law by district courts and the Federal Circuit. That these courts...more
12/17/2020
/ Abstract Ideas ,
Biotechnology ,
CLS Bank v Alice Corp ,
DNA ,
Intellectual Property Protection ,
Mayo v. Prometheus ,
Natural Products ,
Patent Litigation ,
Patent-Eligible Subject Matter ,
Patents ,
Section 101
Federal Circuit Refuses to Issue Stay in Mandate Pending Certiorari Decision -
One of the most interesting (albeit troubling) decisions by the Federal Circuit in the past year or so was its decisions, by a panel and then...more
The Federal Circuit's inchoate attempts to fashion a consistent, rational application of the Supreme Court's recent subject matter eligibility jurisprudence, while understandably Herculean in view of the difficulties inherent...more
8/26/2020
/ Abstract Ideas ,
Appeals ,
Claim Construction ,
Denial of Rehearing ,
Dissenting Opinions ,
Judges ,
Patent Invalidity ,
Patent Litigation ,
Patent-Eligible Subject Matter ,
Patents ,
Product of Nature Doctrine ,
Reaffirmation ,
Section 101
Federal Circuit (Again) Hands Down Revised Opinion in Response to Petition for Rehearing -
Recently the Federal Circuit has begun a practice of withdrawing an original opinion and handing down a substitute opinion in...more
8/11/2020
/ Abstract Ideas ,
Appeals ,
CLS Bank v Alice Corp ,
En Banc Review ,
Mayo v. Prometheus ,
Partial Reversal ,
Patent Litigation ,
Patent-Eligible Subject Matter ,
Patents ,
Petition For Rehearing ,
Product of Nature Doctrine ,
Reaffirmation ,
Remand ,
Section 101 ,
Summary Judgment ,
Vacated
Federal Circuit Hands Down Modified Opinion in Illumina, Inc. v. Ariosa Diagnostics, Inc.
Earlier this year, the Federal Circuit (somewhat surprisingly) found claims of two Sequenom patents directed to methods for...more
8/6/2020
/ Appeals ,
Diagnostic Method ,
DNA ,
Life Sciences ,
Patent-Eligible Subject Matter ,
Patents ,
Petition For Rehearing ,
Product of Nature Doctrine ,
Reversal ,
Section 101 ,
Treatment Method Patents
Last week, the Federal Circuit took the opportunity presented in an appeal from judgment on the pleadings in XY, LLC v. Trans Ova Genetics, LC to distinguish claims directed toward a patent-eligible invention from...more
8/4/2020
/ Abstract Ideas ,
Appeals ,
CLS Bank v Alice Corp ,
Judgment on the Pleadings ,
Patent Invalidity ,
Patent-Eligible Subject Matter ,
Patents ,
Popular ,
Remand ,
Reversal ,
Section 101
There is little rhyme nor reason in the cases the Supreme Court decides to review. But the Court has patterns in its case selection that do (to some degree) probe what the Justices think are important questions. One pattern...more
6/25/2020
/ America Invents Act ,
Constitutional Challenges ,
Denial of Certiorari ,
Fifth Amendment ,
Inter Partes Review (IPR) Proceeding ,
Life Sciences ,
Patent Invalidity ,
Patent Trial and Appeal Board ,
Patent-Eligible Subject Matter ,
Patents ,
Post-Grant Review ,
Retroactive Application ,
SCOTUS ,
Takings Clause
There are (at least) two ways of looking at the course of the Federal Circuit's evolving interpretation of the Supreme Court's subject matter eligibility jurisprudence under Mayo Collaborative Services v. Prometheus Labs.,...more
4/20/2020
/ Abstract Ideas ,
Appeals ,
CLS Bank v Alice Corp ,
Dismissals ,
Dissenting Opinions ,
Mayo v. Prometheus ,
Mobile Health Apps ,
Patent Litigation ,
Patent-Eligible Subject Matter ,
Patents ,
Prior Art ,
Remand ,
Reversal ,
Section 101
Patent law (and, consequently, patent lawyers) can be viewed as having at least a slightly tighter tether on concrete, factual reality than other areas of the law, at least to the extent that making patent-related legal...more
Mallinckrodt filed a certiorari petition with the Supreme Court last week, over the Federal Circuit panel decision (by Chief Judge Prost joined by Judge Dyk; Judge Newman dissented on the issue before the Court in this...more
The latest Federal Circuit decision on subject matter eligibility in the life sciences came down (by a divided court) in favor of eligibility, in Illumina, Inc. v. Ariosa Diagnostics, Inc. The claims at issue fell into the...more
3/20/2020
/ Appeals ,
CLS Bank v Alice Corp ,
Life Sciences ,
Mayo v. Prometheus ,
Myriad ,
Patent Litigation ,
Patent-Eligible Subject Matter ,
Patents ,
Pharmaceutical Patents ,
Popular ,
Product of Nature Doctrine ,
Reversal ,
Section 101
There is a belief in some quarters that the most significant barrier to patent subject matter eligibility reform is an implacable opposition by companies in the high tech sector because those companies are convinced that the...more
2/19/2020
/ Biotechnology ,
CLS Bank v Alice Corp ,
Legislative Agendas ,
Mayo v. Prometheus ,
Myriad ,
Patent Infringement ,
Patent Reform ,
Patent Trolls ,
Patent-Eligible Subject Matter ,
Patents ,
Pharmaceutical Patents ,
SCOTUS ,
Technology Sector ,
Treatment Method Patents
Ever since the Supreme Court's decision in Mayo Collaborative Services v. Prometheus Laboratories was handed down in 2012, diagnostic method claims have been routinely invalidated by the district courts and those decisions...more
2/13/2020
/ Appeals ,
Diagnostic Method ,
Dissenting Opinions ,
Life Sciences ,
Mayo v. Prometheus ,
Patent Invalidity ,
Patent-Eligible Subject Matter ,
Patents ,
Pharmaceutical Patents ,
Product of Nature Doctrine ,
Section 101
The Supreme Court entered orders denying certiorari in all five cases having petitions on subject matter eligibility, including Athena Diagnostics, Inc. v. Mayo Collaborative Services, LLC; Hikma Pharmaceuticals USA Inc. v....more
Last year, Judge Illston gifted patentees with a proverbial lump of coal with her decision in Illumina, Inc. v. Ariosa Diagnostics, Inc. by invalidating on summary judgment claims directed to methods for isolating cell-free...more
The BRCA2 gene is one member of a pair of genes that changed the patent landscape several years ago, when the Supreme Court ruled that "mere" isolation was insufficient to render genomic embodiments thereof patent eligible,...more
On October 18th, Junior Party (the University of California, Berkeley; the University of Vienna; and Emmanuelle Charpentier (collectively, "CVC") filed its authorized opposition to Substantive Motion No. 1 from Senior Party...more
It would be understandable to have the impression that Congress is considering patent eligibility reform as the major (or even sole) patent-related legislation this session....more
Albert Einstein once famously (albeit perhaps apocryphally) said that "[c]ompound interest is the most powerful force in the universe." Not to contradict the creator of 20th Century physics, but it is just as likely that the...more
Last week, the Federal Circuit affirmed a decision by the Patent Trial and Appeal Board (PTAB) finding claims of U.S. Patent No. 7,064,197 to be invalid for anticipation or obviousness, in Enzo Life Sciences, Inc. v. Becton,...more
There has been much commentary, some of it incendiary, regarding whether the Court of Appeals for the Federal Circuit is fulfilling its responsibilities under its enabling statute or failing to provide the proper pro-patent...more
With great fanfare (and a seeming exercise of appropriate diligence), Senators Thom Tillis (R-NC) and Chris Coons (D-DE), chair and ranking member of the Intellectual Property Subcommittee of the Senate Judiciary committee,...more
It is perhaps not surprising that several medical groups, as well as other organizations with little regard for the patent system, and their legal accomplice, the American Civil Liberties Union, would oppose the recent...more