News & Analysis as of

Alice/Mayo Pharmaceutical Patents

McDermott Will & Schulte

Manufactured host cells markedly different from naturally occurring cells may be patent eligible

Addressing subject matter eligibility in the life sciences context, the US Court of Appeals for the Federal Circuit reversed a district court’s summary judgment ruling that certain claims directed to genetically engineered...more

White & Case LLP

Federal Circuit Clarifies Patent-Eligibility Under 35 U.S.C. § 101 For Claims Covering Recombinant DNA Molecules

White & Case LLP on

On February 20, 2026, in REGENXBIO Inc. et al. v. Sarepta Therapeutics Inc., et al., No. 2024-1408, the Federal Circuit reversed a district court decision which held that claims covering a cultured host cell containing a...more

Holland & Knight LLP

Section 101 Screens Out Claims of Using Biomarkers to Identify Drugs That May Cause Rare Disorder

Holland & Knight LLP on

Lysosomal storage disorders are a group of inherited diseases that range from treatable (Fabray Disease and Gaucher disease) to fatal (Niemann-Pick disease and Tay-Sachs disease). Drug-induced phospholipidosis (DIP) is...more

Knobbe Martens

Practical Application and Particular Treatment: What the USPTO’s December 4 Memorandum Means for Life Sciences §101 Eligibility

Knobbe Martens on

The USPTO’s December 4, 2025 memorandum on Subject Matter Eligibility Declarations (SMEDs) seeks to raise awareness of the “underutilized path” of submitting Rule 132 declarations, referred to as “SMEDs”, for supporting §101...more

McDonnell Boehnen Hulbert & Berghoff LLP

Subject Matter Eligibility in the 21st Century: Echoes of pre-§ 103 Obviousness*

The evolution of subject matter eligibility after the Supreme Court's decisions in Prometheus v. Mayo, Alice v. CLS Bank, and Association for Molecular Pathology v. Myriad Genetics has resulted in a regime of predictable...more

Dorsey & Whitney LLP

Common Sense Approach Prevails in Determining Subject Matter Eligibility of Compositions of Matter

Dorsey & Whitney LLP on

Over the last 15 years, the discussion over the types of subject matter that are considered patent eligible under 35 U.S.C. § 101 has been mostly focused on the software and biological fields. Several years ago, the Federal...more

Knobbe Martens

Federal Circuit Review | June 2024

Knobbe Martens on

Reliably Determining Reasonable Royalty Rates from Lump Sum Licenses - In Ecofactor, Inc. V. Google LLC, Appeal No. 23-1101, The Federal Circuit held that license agreements containing a lump sum payment “based on” a royalty...more

McDonnell Boehnen Hulbert & Berghoff LLP

RegenxBio Inc. v. Sarepta Therapeutics, Inc. (D. Del. 2024)

A consequence (predominantly negative) of the Supreme Court's recent foray into defining (however inadequately) the contours of patent-eligible subject matter is to give the district courts (and to a somewhat lesser extent,...more

WilmerHale

Recent Decision Raises Patent Eligibility Concerns Regarding Certain Gene Therapy-Related Inventions

WilmerHale on

This past Friday, a federal district court held that the mere fact of combining certain natural products – such as isolated, naturally occurring AAV sequences and a heterologous non-AAV sequence – and putting them into a...more

McDonnell Boehnen Hulbert & Berghoff LLP

Sanofi-Aventis Deutschland GmbH v. Mylan Pharmaceuticals Inc. (Fed. Cir. 2023)

In those (in retrospect) halcyon days more than a decade ago (before Mayo, Myriad, Alice, and the subject matter eligibility quagmire arose), perhaps the most significant Supreme Court decision was KSR Int'l Co. v. Teleflex...more

Holland & Knight LLP

Something New: PTAB Tackles Section 101 Patent Eligibility

Holland & Knight LLP on

It's not often that we write about pharmaceutical patents on this blog, and even less often that we blog here about PTAB decisions. The former is a function of the Federal Circuit's decision in Vanda Pharmaceuticals Inc. v....more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - October 2022

Provisur Technologies, Inc. v. Weber, Inc., Appeal Nos. 2021-1942, -1975 (Fed. Cir. Sept. 27, 2022) - In this week’s Case of the Week, the Federal Circuit reviewed an IPR decision and addressed the Patent Trial and Appeal...more

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