Podcast: Owner's Outlook: National Trends in Construction Claims - Diagnosing Health Care
The latest version of the CNIPA’s Guidelines for Patent Examination (hereinafter referred to as “the latest Guidelines”) came into force as of January 20, 2024. In comparison with the previous version of the Guidelines, there...more
The Federal Circuit held that two patents directed to methods of preparing samples for use in diagnostic methods are patent eligible under Section 101, reversing a decision from the District Court for the Northern District of...more
Ever since the Supreme Court's decision in Mayo Collaborative Services v. Prometheus Laboratories was handed down in 2012, diagnostic method claims have been routinely invalidated by the district courts and those decisions...more
In a remarkable collection of opinions that have no direct effect on the law, the Federal Circuit has implicitly given its support to efforts in Congress to override the Supreme Court’s decision in Mayo v. Prometheus, which...more
As discussed in a previous blog post, since Mayo v. Prometheus, critics of medical treatment patents have advocated that such patents should be banned from patenting. While such arguments seemed futile based on the consistent...more
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
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
In Athena Diagnostics Inc. v. Mayo Collaborative Services, LLC, the Federal Circuit has once again held that claims directed to a diagnostic method are invalid under 35 U.S.C. § 101 for being directed to ineligible subject...more
In a post-Mayo v. Prometheus opinion addressing the subject matter eligibility of diagnostic methods based on underlying natural laws, the US Court of Appeals for the Federal Circuit affirmed the district court’s conclusion...more
Federal Circuit Summaries - Before Judge Newman, Lourie and Stoll. Appeal from the United States District Court for the District of Massachusetts. Summary: Claims reciting only conventional steps to detect a natural...more
In Athena Diagnostics, Inc. v. Mayo Collaborative Services, a divided panel of the Federal Circuit has provided another guidepost in the search for patent-eligible subject matter in the diagnostic industry. The Court upheld a...more
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
Priority Claims Cannot Be Incorporated by Reference - In Vanda Pharmaceuticals Inc. v. West-Ward Pharmaceuticals International Limited, Appeal Nos. 2016-2707 and 2016-2708, the Federal Circuit held that when a patent for a...more
While the Supreme Court decisions in Myriad and Mayo have been applied to diagnostic-type claims, method of treatment patents were thought to be safe from the recent judicial expansion of the patent-(in)eligibility doctrine....more
The patent eligibility examples published by the USPTO on May 5, 2016 include two new examples relating to diagnostic methods and two new examples relating to “nature-based” products. This article will consider the diagnostic...more
It comes as no surprise that Sequenom has filed a petition for certiorari to the Supreme Court, asking the Court to review the Federal Circuit decision that upheld the district court decision that held its diagnostic method...more
Judge Gaughan of the U.S. District Court for the Northern District of Ohio granted the defendant’s motion to dismiss after finding three Cleveland Clinic Foundation diagnostic patents invalid under 35 USC § 101. While the...more
Under the Patent Act, one can patent “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” Common exceptions to what can be patented include laws of nature,...more
In Ariosa Diagnostics, Inc. v. Sequenom, Inc., Slip Op. 2014-1139, 2014-114 (Fed. Cir. June 12, 2015), the U.S. Court of Appeals for the Federal Circuit held that Sequenom’s U.S. Patent No. 6,258,540 (the ‘540 Patent) was...more
On Friday, June 12, 2015, the Federal Circuit issued its decision in Ariosa Diagnostics, Inc. v. Sequenom, Inc., affirming the district court's finding that Sequenom’s claims are invalid under 35 USC § 101. The court's...more