RyanChirnomas : CAFC Alert

CAFC Draws a Line in the Sand as to Adding “Boundary” Lines; PTO recants earlier design practice

Ryan Chirnomas | April 3, 2013

In re Owens

March 26, 2013

Panel:  Prost, Moore and Wallach.  Opinion by Prost.

Summary

Although a practice previously endorsed by the USPTO, the CAFC now holds that the addition of a “boundary” line to a design application constitutes the addition of new matter.  Since the parent application gave no indication of one portion of the design being separable from the remainder, the CAFC held that there was no “possession” of the later modification in the original application.


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Saved by Therasense: Deliberate decision to withhold references not found where art was cited in foreign counterpart and domestic co-pending applications

Ryan Chirnomas | October 10, 2012

1st Media v. Electronic Arts et al.

Decided  September 13, 2012

Panel: Rader, Linn and Wallach.  Opinion by Rader.

Summary

This case demonstrates how Therasense has changed the inequitable conduct analysis.  Although the individual inventor and sole practitioner knew of references which were probably material, and did not submit the references, this is now insufficient to demonstrate inequitable conduct.  It must additionally be shown that there was a specific decision to withhold the documents from the USPTO, in order to show an intent to deceive.  This can be demonstrated, for example, by selective disclosure.  However, no such evidence was presented, and thus an intent to deceive, the first part of the inequitable conduct analysis, was not found.


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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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CAFC reiterates patent eligibility of isolated DNA in the Myriad case

Ryan Chirnomas | August 16, 2012

Less than a month after hearing oral arguments, the CAFC panel has issued a 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.

We will provide further analysis of the decision in the coming days, including the panel’s reasoning why the Mayo holding is limited to method claims, and does not affect composition claims.  Readers should be aware that this is likely not the last word on this case…An en banc rehearing and/or another petition to the Supreme Court are very likely.

The full opinion can be read here:

http://www.cafc.uscourts.gov/images/stories/opinions-orders/10-1406.pdf

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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CAFC defines “common sense” and warns against impermissible hindsight

Ryan Chirnomas | June 6, 2012

Mintz and Jif-Pak Manufacturing v. Dietz & Watson and Package Concepts and Materials

May 30, 2012

Rader, Newman, Dyk.  Opinion by Rader.

Summary

This case highlights the important point that obviousness cannot be established by vague and unsubstantiated reliance on “common sense.”  Rather, Judge Rader defines the term “common sense” as “knowledge so basic that it certainly lies within the skill set of an ordinary artisan.”  The CAFC also warns against hindsight due to defining the problem to be solved based on the solution found by the inventors.   Furthermore, the CAFC reminds us that when references from a secondary technical field are used in a rejection, the person of ordinary skill in the art is not a person familiar merely with this secondary technical field, but rather a person familiar with at least the primary technical field.


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In a dispute over a patent licensing agreement, CAFC refuses to deny enforcement of an arbitration clause based on a technicality

Ryan Chirnomas | March 29, 2012

Promega Corporation et al. v. Life Technologies Corporation et al.

March 28, 2012

Panel:  Newman, Dyk.  Opinion by Dyk.  Dissent by Moore.

Summary

Despite an oversight relating to transfer of a patent licensing agreement during a licensee’s merger proceedings, the Federal Circuit held that the licensee retained its right to demand arbitration in a dispute with a sub-licensee. Although the licensee ultimately did not suffer any negative legal consequences due to this oversight, this case provides a good reminder to corporate IP counsel to carefully review all tech transfer agreements during mergers or reorganizations.  Here, a single letter to the sub-licensee could have saved the licensee from significant distraction.


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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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