If At First You Don’t Succeed, (Don’t) Try, Try Again?: Myriad Genetics Lost More Claims To 35 U.S.C. §101.
| January 29, 2015
In re BRCA1- and BRCA2-Based Hereditary Cancer Test Patent Litigation, also known as University of Utah Research v. Ambry Genetics Corp.
December 17, 2014
Panel: Prost, Clevenger, and Dyk. Opinion by Prost.
Summary
A year after Association For Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107 (2013), in which Myriad saw its isolated DNA claims being invalidated by the Supreme Court for patent ineligibility, Myriad found itself once again trying to defend the patent eligibility of its patent claims. This time, the claims were directed to isolated single-stranded polynucleotides and the use of those polynucleotides to detect the presence of genetic mutations. Different claims, but the outcome was the same as the Federal Circuit, following the Supreme Court and its own precedents, invalidated Myriad’s claims as being directed to patent ineligible subject matter under 35 U.S.C. §101.
The fate of Software inventions related to information processing
| January 28, 2015
Content Extraction and Transmission LLC v. Wells Fargo Bank, N.A. et al.
December 23, 2014
Panel: Chen, Dyk and Taranto. Opinion by Chen.
Summary
The Federal Circuit held that the claims of the asserted patents were invalid as patent-ineligible under 35 U.S.C.S. § 101 because none of asserted claims amounted “to ‘significantly more’ than the abstract idea of extracting and storing data from hard copy documents using generic scanning and processing technology.”
Tags: 35 U.S.C. § 101 > abstract ideas > computer > computer memory > laws of nature > patent eligible subject matter > physical phenomena > scanner > software
Ecommerce Patent found to have patent eligible subject matter under Alice.
| January 27, 2015
DDR Holding, LLC v. Hotels.com, L.P.
December 5, 2014
Panel: Wallach, Mayer, and Chen (Circuit Judges). Precedential Opinion by Chen, Dissenting Opinion by Mayer.
Summary
While not all claims purporting to address Internet-centric challenges are eligible for patent, a claimed solution that is necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks constitutes patent eligible subject matter.
Tags: 35 U.S.C. § 101 > patent eligible subject matter > patent ineligible abstract idea
Surviving Alice Gone Wild
| November 26, 2014
Before the Supreme Court’s decision in Alice Corp. v CLS Bank Int’l [1], Judge Moore said “this case is the death of hundreds of thousands of patents, including all business method, financial system, and software patents as well as many computer implemented and telecommunications patents.”[2] This concern is premised on about twenty years of patent practice grounded in the en banc 1994 Federal Circuit decision in In re Alappat which previously established the “special purpose computer” justification for patent eligibility under 35 USC §101 for computer-implemented inventions.[3] The Alice decision essentially eliminated the “special purpose computer” bright line rule as applied generally to computer-implemented inventions. The new Mayo 2-part §101 test for computer-implemented inventions is, however, fraught with issues from the lack of guidance on how to properly apply it. Some strategic arguments for surviving a §101 attack are presented in this article, as well as a new way to address what is “significantly more.”
Tags: 101 > abstract idea > Alice > CLS Bank > computer > means plus function > patent eligible subject matter > preemption > Section 101 > software
In the wake of Alice Corp. v. CLS Bank Int’l, the Federal Circuit strikes down another patentee’s claims for reciting patent ineligible abstract idea
| August 18, 2014
Digitech Image Technologies v. Electronics For Imaging, Inc.
July 11, 2014
Panel: Moore, Reyna, Hughes. Opinion by Reyna.
Summary
Digitech is the assignee of U.S. Patent No. 6,128,415 (the ‘415 patent) directed to a device profile for a digital image reproduction system and a method of generating a device profile in a digital image reproduction system. Digitech sued 32 defendants for infringement in the U.S. District Court for the Central District of California. Several defendants filed summary judgment motions seeking to invalidate the asserted claims of the ‘415 patent under 35 U.S.C. §101. The district court granted the defendants’ motions and found all of the asserted claims to be subject matter ineligible. On appeal, the Court of Appeals for the Federal Circuit (CAFC) affirmed.
PTAB Finally Considers “Processor” As Clearly Structure
| June 19, 2014
Ex Parte Cutlip
June 2, 2014
Panel: Lorin, Mohanty and Hoffman.
Summary:
After the debacle of three March 2013 PTAB decisions by a five judge PTAB panel relying on a strange American Heritage dictionary definition of “processor” as being software, this PTAB decision sets the record straight about a “processor” as clearly being structure.
Tags: §101 > 112 sixth paragraph > 112(f) > abstract idea > algorithm > Alice Corp. > CLS Bank > computer > CPU > indefiniteness > MPF > patent eligible subject matter > processor > software
CAFC holds “Dolly the Sheep” claims ineligible, but leaves door open to claims reciting clones “markedly different” from nature
| May 21, 2014
In Re Roslin Institute (Edinburgh)
May 8, 2014
Panel: Dyk, Moore, Wallach. Opinion by Dyk.
Summary
Although the method of creating a cloned animal was patent eligible, the CAFC held that claims directed to the clone itself were not patent-eligible. The court further holds that simply because something is made by man is insufficient to render it patent-eligible, absent a showing that the claimed composition is markedly different from that found in nature. Although a cloned animal may have some differences from the DNA donor animal, unless these differences are claimed, the CAFC will not consider them.
Specific application of an abstract idea may be patent eligible
| June 26, 2013
Ultramercial, Inc. v. Hulu, LLC.
June 21, 2013
Panel: Rader, Lourie and O’Malley. Opinion by Rader. Concurrence by Lourie
Summary
Ultramercial, Inc. sued Hulu, LLC for infringement of U.S. Patent 7,346,545 (the ‘545 patent) directed to a method of monetizing and distributing copyrighted products over the Internet. The district court dismissed the patent suit by holding that the patent claims an abstract idea; therefore, it is not a process under 35 U.S.C. §101. In an earlier decision, the Federal Circuit reversed the district court’s holding and remanded. The Supreme Court of the United States vacated the earlier decision by the Federal Circuit. The Federal Circuit again holds that the patent does not claim an abstract idea because the claims are not drawn to a mathematical algorithm or a series of purely mental steps because the claims require, among other things, a particular method for collecting revenue from the distribution of media products over the Internet by way of controlled interaction with a consumer over an Internet website. Therefore, the Federal Circuit again reversed the district court’s holding and remanded for further proceeding.
Tags: §101 > abstract idea > mathematical formula > mental process > patent eligibility > patent eligible subject matter > process
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
CAFC reiterates patent eligibility of isolated DNA in the Myriad case
| 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
Tags: §101 > biotech > Myriad > patent eligible subject matter
