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Patent Litigation United States Patent and Trademark Office Mayo v. Prometheus

Fish & Richardson

The Patent Eligibility Eras Tour: 11 Years Of Post-Alice Tumult

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Following the June 19 anniversary, it's now been 11 years since the U.S. Supreme Court's decision in Alice Corp. v. CLS Bank International — a case that declared a new test for when claims are ineligible for being directed to...more

McDonnell Boehnen Hulbert & Berghoff LLP

Patent Eligibility Reform Introduced in Congress Once Again: Is the Second Time the Charm?

In an ideal world, patent eligibility would be a simple, clear, and non-controversial inquiry.  After all, the purpose of 35 U.S.C. § 101 is to inform the public which types of inventions are eligible for patenting and which...more

Knobbe Martens

Federal Circuit Review - July 2019

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Broad Claim Language and Unpredictability in the Art Lead to Non-Enablement - In Enzo Life Sciences, Inc. v.  Roche Molecular Systems, Inc., Appeal Nos. 2017-2498, -2499, -2545, -2546, broad patent claims were invalid as...more

Foley & Lardner LLP

Only The Law Is Hazy For CBD Patent Eligible Under Section 101

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In United Cannabis Corp. v. Pure Hemp Collective, Inc., Judge Martinez of the U.S. District Court for the District of Colorado determined that UCANN's CBD patent was not invalid under 35 USC § 101. The court reached its...more

Knobbe Martens

Legislators Propose “Section 101 Reform”

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Yesterday Democrat and Republican legislators from both the Senate and the House of Representatives released a one page outline of a proposal to change the law of patent eligibility. The legislators supporting this proposal...more

Foley & Lardner LLP

Federal Circuit Finds Endo Method Of Treatment Claims Satisfy 35 USC 101

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In Endo Pharmaceuticals Inc. v. Teva Pharmaceuticals USA, Inc., the Federal Circuit distinguished method of treatment claims that involve personalized dosing from the claims invalidated in Mayo v. Prometheus, and found them...more

Blank Rome LLP

Out of Wonderland from Diehr to Aatrix: 3 Steps to Overcoming 101 Rejections

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Post-Alice, the United States Patent and Trademark Office (“PTO”) is aggressively rejecting software claims under the Alice two-part test, the parameters of which many examiners are still trying to understand. Not...more

McDonnell Boehnen Hulbert & Berghoff LLP

Exergen Corp. v. Kaz USA, Inc. (Fed. Cir. 2018)

The tortured path that the Federal Circuit has taken (a path also trodden by the U.S. Patent and Trademark Office and the district courts) of applying the patent eligibility decisions under Mayo Collaborative Services v....more

Foley & Lardner LLP

New Year's Resolutions For The U.S. Patent System

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It’s that time of year when we make resolutions to improve our health, our relationships, our careers, or other areas of our lives. I’m not starting a new diet today (although if I were, the invention described in this patent...more

Fish & Richardson

Mayo at Five: Are Traditional Method of Treatment Claims in Danger Under Section 101?

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Just over five years ago, the Supreme Court began reshaping the concept of patent-eligible subject matter in the life sciences with its decision in Mayo v Prometheus. The Mayo case introduced a new two-step test for patent...more

Fish & Richardson

Mayo at Five: Eligibility of Diagnostic Method Claims

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Just over five years ago, the Supreme Court began reshaping the concept of patent-eligible subject matter in the life sciences with its decision in Mayo v Prometheus. Decisions following Mayo – from the Supreme Court to the...more

BakerHostetler

USPTO Report on Patent Eligible Subject Matter

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On July 25, the USPTO published a new report titled “Patent Eligible Subject Matter: Report on Views and Recommendations From the Public.” The report attempts to synthesize public comments on the appropriate boundaries of...more

Sheppard Mullin Richter & Hampton LLP

Federal Circuit is In Sync with Patent’s Validity Under Section 101

The Federal Circuit overturned a District Court ruling that a patent directed to automated lip synchronization and manipulation of animated characters’ facial expressions was invalid under Section 101 as being an abstract...more

Fenwick & West LLP

McRo: Preemption Matters After All

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The Federal Circuit has released its long-awaited opinion in McRo v. Bandai, reversing the lower court’s decision that the claims were ineligible subject matter. McRo’s invention in U.S. 6,307,576 was a method used in 3D...more

Foley & Lardner LLP

Supreme Court Declines to Review Sequenom Ruling

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The U.S. Supreme Court has denied certiorari in Sequenom, Inc. v. Ariosa Diagnostics, Inc. (No. 15-1182), declining to review the Federal Circuit’s June 12, 2015, decision that certain methods of detecting paternally...more

Foley & Lardner LLP

New USPTO Guidance On Patent Eligibility Of Diagnostic Methods

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The patent eligibility examples published by the USPTO on May 5, 2016 include two new examples relating to diagnostic methods and two new examples relating to “nature-based” products. This article will consider the diagnostic...more

Foley & Lardner LLP

Will The Celsis Appeal Put An End To 101 Rejections Of Laboratory Method Claims?

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On April 5, 2016, the Federal Circuit heard oral arguments in Rapid Litigation Mgmt. Ltd. v. CellzDirect Inc., where the U.S. District Court for the Northern District of Illinois held invalid claims directed to a “method of...more

Fenwick & West LLP

Vehicle Intelligence v. Mercedes-Benz: Ineligibility as a Proxy for Lack of Enablement

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The Federal Circuit has issued six decisions since December 1, 2015, all of course invalidating the patents in suit, four per curiam (Clear With Computers v. Altec Indus; Cloud Satchel v. Amazon.com; Wireless Media...more

McDonnell Boehnen Hulbert & Berghoff LLP

Top Five Stories of 2015

After reflecting upon the events of the past twelve months, Patent Docs presents its ninth annual list of top patent stories. For 2015, we identified twenty stories that were covered on Patent Docs last year that we believe...more

McDonnell Boehnen Hulbert & Berghoff LLP

Top Stories of 2015: #16 to #20

After reflecting upon the events of the past twelve months, Patent Docs presents its ninth annual list of top patent stories. For 2015, we identified twenty stories that were covered on Patent Docs last year that we believe...more

McDonnell Boehnen Hulbert & Berghoff LLP

Comments on the USPTO's Subject Matter Eligibility Guidance -- The ABA

On July 30, 2015, the U.S. Patent and Trademark Office updated its subject matter eligibility guidance ("July Update"). The update provided recommendations and resources for examiners in addition to those in the Office's...more

Fenwick & West LLP

Overview of Comments on the USPTO's July 2015 Update to the Interim Examination Guidance

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In late July, the USPTO issued its July 2015 Update to the 2014 Interim Section 101 Patent Eligibility Guidance (IEG). The July 2015 Update addresses a number of the issues and concerns raised in the public comments to the...more

Foley & Lardner LLP

Australia High Court Rules Against Gene Patents

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Colleagues in Australia have been spreading the bad news: The High Court of Australia followed the lead (?) of the U.S. Supreme Court and determined that Myriad cannot patent the isolated BRCA1 gene in Australia. Thanks to...more

McDonnell Boehnen Hulbert & Berghoff LLP

Amicus Briefs in Support of Sequenom's Petition for Rehearing En Banc: NYIPLA

Earlier this summer, in Ariosa Diagnostics, Inc. v. Sequenom, Inc., the Federal Circuit affirmed a decision by the District Court for the Northern District of California granting summary judgment of invalidity of the asserted...more

McDonnell Boehnen Hulbert & Berghoff LLP

Guest Post -- On Ariosa and Natural Products

Recently, I had the privilege of speaking at the annual meeting of the American Society of Pharmacognosy in Colorado. Members of this scientific association are dedicated to identifying and isolating natural products from...more

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