bilski : CAFC Alert

Fractured CAFC panel again affirms patent eligibility of isolated DNA, and applies Mayo

Ryan Chirnomas | August 21, 2012

Association for Molecular Pathology et al. v. U.S.P.T.O. et al.

August 16, 2012

Panel:  Lourie, Bryson and Moore.  Majority opinion by Lourie, concurrence by Moore, dissent by Bryson.

Less than a month after hearing oral arguments, the CAFC panel of Judges Lourie, Bryson and Moore last week issued an updated decision in the controversial AMP v. USPTO (Myriad genetics) case. The CAFC reached the same conclusion as they did last year: (1) the Plaintiffs do have standing, (2) the isolated DNA and cDNA claims are patent eligible, (3) the “analyzing” and “comparing” method claims are not patent eligible and (4) the screening method claim is patent eligible.

As with the decision last year, the panel reached a unanimous conclusion with respect to the issues of standing, subject matter eligibility of the cDNA claims, and subject matter eligibility of the method claims.  However, the panel reached different conclusions with respect to the composition claims which recite isolated DNA.  Since the opinions of the Court are very similar to the opinions issued in 2011, this article will focus on the Judges’ views with respect to the impact of Mayo v. Prometheus (English summary; Japanese summary) on the claims in question, and particularly with respect to the isolated DNA claims.


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Summary of Oral Arguments in AMP v. USPTO remand

Ryan Chirnomas | July 20, 2012

July 20, 2012

In the immortal words of baseball great Yogi Berra, “It’s déjà vu all over again”.  A little more than a year after they previously heard AMP v. USPTO, the CAFC panel of Judges Lourie, Bryson and Moore have once again taken up the question of whether isolated DNA and related methods are patent eligible subject matter under 35 U.S.C. §101.


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CLS Bank v. Alice Corporation: An attempt in formulating the abstractness of the “abstract ideas” test to patent eligibility

Rob Raheja | July 18, 2012

CLS Bank v. Alice Corporation

July 9, 2012

Panel:  Linn, Prost and O’Malley. Opinion by Linn.  Dissent by Prost.

Summary

The district court for the District of Columbia held that claims to computer systems, computer readable medium and claims to methods of using a computer of the asserted patents were all invalid as “abstract ideas.” In so holding, the district court ignored the limitations recited in the claims and boiled the invention down to a mere abstract concept “of employing an intermediary to facilitate simultaneous exchange of obligations in order to minimize risk.” On appeal, the Federal Circuit reversed the district court’s judgment of invalidity under 35 U.S.C. § 101. The Federal Circuit, after considering each asserted claim “as a whole”, found that it was not “manifestly evident” that the claims of the asserted patent were drawn to “abstract ideas.” Therefore, the Federal Circuit held that claims must not be deemed inadequate under 35 U.S.C. § 101.


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USPTO issues Interim Procedure for §101 examination after Prometheus v. Mayo

WHDA Blogging Team | July 3, 2012

Since the Supreme Court issued their decision in Mayo v. Prometheus (English discussion here; Japanese discussion here), rejections of claims based on failure to comply patent-eligible subject matter requirements of §101 seem to be on the rise.  Until now, Examiners had been given only very little guidance (see here), resulting in Mayo being cited inconsistently.  However, today, the USPTO has provided Examiners with additional guidance about how to handle this issue.  Please click below for more information:

2012 Interim Procedure for Subject Matter Eligibility Analysis of Process Claims Involving Laws of Nature

Memo Cover Letter

These guidelines should improve consistency of the manner in which Mayo and related cases are relied upon by the Examining Corps, as well as provide practitioners with a basic framework for responding to such rejections.

Keep in mind that as the CAFC (and perhaps the Supreme Court, eventually) continues to address this issue in other pending cases such as Myriad and Ultramercial, these guidelines may be revised by the USPTO.

MAYO v. PROMETHEUS 米国最高裁判決

Yoshiya Nakamura | March 23, 2012

No. 10–1150. Argued December 7, 2011—Decided March 20, 2012

For an English discussion of Mayo v. Prometheus, please click here.

背景

Prometheus Laboratories(以下、Prometheus)は、自己免疫疾患を治療するためのチオプリン(thiopurine)ドラッグに関する2つの特許(U.S. Patent No. 6,355,623、No.6,680,302)の独占的使用権を有する。特許クレームは、チオプリンが投与された患者の血中の代謝物量を測定し、それに合わて投与量を調整する方法に関するものである。


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Supreme Court strikes down diagnostic method claims as non-patent-eligible subject matter

Ryan Chirnomas | March 20, 2012

Mayo Collaborative Services v. Prometheus Laboratories

March 20, 2012

Supreme Court, 9-0, opinion by Justice Breyer

Summary

Although we typically cover the CAFC in this blog, today we will be visiting the Supreme Court.  The Supreme Court unanimously ruled that the diagnostic method claims in this highly-anticipated case were invalid as failing to comply with 35 U.S.C. §101.  In short, the Court ruled that a claim reciting a diagnostic method (which is inherently based upon a law of nature) that applies only conventional, known steps is invalid.


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CAFC invalidates claims directed to a method of creating a real estate investment instrument as unpatentable abstract idea

Bill Schertler | March 7, 2012

Fort Properties, Inc. v. American Master Lease LLC

February 27, 2012

Panel:  Prost, Schall and Moore.  Opinion by Prost

Summary

American Master Lease (“AML”) threatened Fort Properties with an infringement lawsuit for infringement of U.S. Patent No. 6,292,788 (the ‘788 patent) and Fort Properties filed an action in the U.S. District Court for the Central District of California asking for a declaratory judgment of invalidity.  In a decision prior to the Supreme Court’s Bilski v. Kappos decision, the district court granted summary judgment in favor of Fort Properties, finding all claims of the ‘788 patent invalid for failing the machine-or-transformation test.  On appeal, the Federal Circuit affirmed – finding the claimed invention unpatentably abstract.
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CAFC provides guidance for patent eligibility of computer aided methods

Andrew Melick | February 1, 2012

Dealertrack v. Huber

January 20, 2012

Panel:  Linn, Plager Dyk. Opinion by Linn.  Dissent by Plager.

Summary

The CAFC affirmed the district court’s grant of summary judgment of invalidity for patent ineligibility under § 101.  The CAFC stated that the claim at issue recited a “computer aided method” without reciting how the computer aids the method, the extent to which a computer aids the method, or the significance of a computer to the performance of the method.  The claims are invalid as being directed to an abstract idea preemptive of a fundamental concept or idea that would foreclose innovation in this area.  Other issues were addressed in the opinion; however, this discussion only addresses the issue of patent eligibility under § 101.


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