News & Analysis as of

Patents Mayo v. Prometheus Patent Infringement

McDonnell Boehnen Hulbert & Berghoff LLP

A Step-by-Step Approach to Patent Subject Matter Eligibility Reform

There is a belief in some quarters that the most significant barrier to patent subject matter eligibility reform is an implacable opposition by companies in the high tech sector because those companies are convinced that the...more

Kramer Levin Naftalis & Frankel LLP

Supreme Court Won’t Take Up Patent Eligibility for Medical Diagnostics

The cloud of uncertainty over patent eligibility of patents for medical diagnostic methods remains. On Monday, the Supreme Court declined the opportunity to revisit patent eligibility under its two-step Mayo test when it...more

Knobbe Martens

Federal Circuit Review - October 2019

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The PTAB Cannot Approve or Deny Certificates of Correction - In Honeywell International, Inc. v. Arkema Inc., Arkema France, Appeal Nos. 2018-1151, -1153, the Patent Trial and Appeal Board (“Board”) does not have the...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

Knobbe Martens

The Impact of Fact Issues on Patent Eligibility after Berkheimer

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The Federal Circuit’s 2018 decision in Berkheimer v. HP Inc. was likely the most consequential development in patent eligibility since the Supreme Court introduced its two-part eligibility framework in Alice Corp. v. CLS Bank...more

Knobbe Martens

Federal Circuit Review - April 2019

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Just Because Something May Result From a Prior Art Teaching Does Not Make it Inherent in that Teaching - In Personal Web Technologies, LLC v. Apple, Inc., Appeal No. 2018-1599, the Federal Circuit clarified that the mere...more

Knobbe Martens

ENDO Pharmaceuticals Inc. v. TEVA Pharmaceuticals USA, Inc.

Knobbe Martens on

Before Wallach, Clevenger, and Stoll. Appeal from the United States District Court for the District of Delaware. Summary: Claims directed to a specific method of treatment for specific patients using a specific compound...more

Knobbe Martens

Chargepoint, Inc. v. Semaconnect, Inc.

Knobbe Martens on

Federal Circuit Summary - Before Prost, Reyna, and Taranto. Appeal from the U.S. District Court for the District of Maryland. Summary: An abstract idea cannot be used to supply an inventive concept that renders a claim...more

Knobbe Martens

Roche Molecular Systems, Inc. v. Cepheid

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Federal Circuit Summary - Before O’Malley, Reyna, and Hughes. Appeal from the District Court for the Northern District of California. Summary: Testing for the presence of a bacterium that causes tuberculosis and the...more

Bradley Arant Boult Cummings LLP

A Rare Win for a Medical Testing Patent in Exergen Corporation V. Kaz USA, Inc.

Inventors of methods of medical testing have had a rough time since the Supreme Court decided Mayo Collaborative Services v. Prometheus Labs. Inc. In the Mayo case, the Court considered whether a method of determining whether...more

Mintz - Intellectual Property Viewpoints

Personalized Medicine Gets a Boost from Federal Circuit’s Vanda Pharma Decision – Part II: Enforcement

The Federal Circuit’s decision in Vanda Pharm. Inc. v West-Ward Pharm. Intl. Ltd. (2016-2707, 2016-2708 April 13, 2018) provided some good news on the subject matter eligibility front for innovators and other stakeholders in...more

Fenwick & West LLP

Our Attention is Now Directed To: “Directed To”

Fenwick & West LLP on

My last post focused on definitions for the terms “well-understood,” “routine,” and “conventional”—or W-URC—from the subject matter eligibility test set forth in Mayo and further described in Alice. Those terms relate to one...more

McDonnell Boehnen Hulbert & Berghoff LLP

Prism Technologies LLC v. T-Mobile USA, Inc. (Fed. Cir. 2017)

An Obviousness Rejection in Patent-Eligibility Clothing? - In Mayo v. Prometheus, the Supreme Court wrote "[w]e recognize that, in evaluating the significance of additional steps, the § 101 patent-eligibility inquiry and,...more

Knobbe Martens

Determining Patent Eligibility Pre-Claim Construction May Be Premature

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For the third time in two months, the Federal Circuit took on patent subject-matter eligibility in Amdocs (ISRAEL) Ltd. v. Openet Telecom, Inc. In a divided opinion, the Federal Circuit reversed the district court and held...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Patent Rights in the U.S.: Is the Pendulum Finally Swinging Back to Center?

The U.S. patent system has long struggled to strike a balance that both encourages patent rights and prevents patent abuse. Finding that balance requires giving patent owners the right amount of patent enforcement power,...more

Proskauer - New England IP Blog

In Autoimmune Disorder Diagnosis Patent Case, Section 101 Motion to Dismiss Denied

In a recent decision from the District of Massachusetts, Judge Indira Talwani denied a motion to dismiss a patent suit under Rule 12(b)(6) for failure to state a claim due to patent ineligibility under 35 U.S.C. § 101 . In...more

Polsinelli

Automatic Animation Software Method Found Patentable under 35 U.S.C. § 101

Polsinelli on

Since the Supreme Court's decision two years ago in Alice v. CLS Bank, courts and the U.S. Patent and Trademark Office have found a large percentage of software and computer-related inventions to claim abstract ideas and not...more

Fenwick & West LLP

Bad Science Makes Bad Patent Law—No Science Makes It Worse (Part I)

Fenwick & West LLP on

I believe that the opinions of the Federal Circuit do not reflect a deep understanding of science and technology. In this blog I'll focus specifically on the issue of laws of nature. It appears that the Federal Circuit...more

Patterson Belknap Webb & Tyler LLP

Judge Pauley Holds That Administering a Test Using a Computer Is Not Patent-Eligible Under § 101

On July 29, 2016, S.D.N.Y. District Judge William H. Pauley III granted defendant PlayerLync, LLC’s (“PlayerLync”) motion for judgment on the pleadings and dismissed plaintiffs Multimedia Plus, Inc. and Multimedia...more

Weintraub Tobin

Why Business Methods Are Difficult to Patent

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Although the general rule (based on 35 USC section 101) is that anything made by humans is patentable, there are exceptions. Laws of nature, physical phenomena, and abstract ideas are not patentable. Inventions that fall in...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

McDonnell Boehnen Hulbert & Berghoff LLP

Natera Responds to Sequenom's Petition for Rehearing En Banc

Last week, Appellee Natera, Inc. filed its response to the petition for rehearing en banc filed by Appellants Sequenom, Inc. and Sequenom Center for Molecular Medicine, LLC in August (see "Sequenom Requests Rehearing En...more

McDonnell Boehnen Hulbert & Berghoff LLP

Ariosa Diagnostics Responds to Sequenom's Petition for Rehearing En Banc

On Monday, Appellee Ariosa Diagnostics, Inc. filed its response to the petition for rehearing en banc filed by Appellants Sequenom, Inc. and Sequenom Center for Molecular Medicine, LLC in August. In its response, Ariosa...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

Foley & Lardner LLP on

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

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