Fractured CAFC panel again affirms patent eligibility of isolated DNA, and applies Mayo
| 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.
Tags: §101 > bilski > biotech > cDNA > DNA > law of nature > Myriad > patent eligible subject matter > Supreme Court
Supreme Court Sides with Inventors in Kappos v. Hyatt
| May 16, 2012
David J. Kappos v. Gilbert P. Hyatt
April 18, 2012
Affirmed 9-0 (CAFC en banc 7-2 decision). Opinion by Justice Thomas. Concurring opinion by Justice Sotomayor joined by Justice Breyer.
Summary:
The Hyatt decision is a victory for patent applicants. Any patent applicant dissatisfied with a decision of the Board of Patent Appeals and Interferences (or Patent Trial and Appeal Board after enactment of the AIA) may file a civil action against the Director of the PTO in federal district court and introduce new evidence beyond what was submitted to the PTO. The new evidence is subject to de novo review.
Tags: appeal > de novo > evidence > procedural issues > standard of review > Supreme Court
MAYO v. PROMETHEUS 米国最高裁判決
| 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。
Tags: §101 > bilski > biotech > diagnostics > law of nature > patent eligible subject matter > Supreme Court
Supreme Court strikes down diagnostic method claims as non-patent-eligible subject matter
| 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.
Tags: §101 > bilski > biotech > diagnostics > law of nature > patent eligible subject matter > Supreme Court
