Posts Tagged: "patent eligibility"

Killing Industry: The Supreme Court Blows Mayo v. Prometheus

The sky is falling! Those who feel the Supreme Court’s decision in Mayo Collaborative Services v. Prometheus Laboratories, Inc. is terrible are right, although many won’t likely fully apprehend the gravity of the situation at first. Those in the biotech, pharmaceutical and chemical industries have just been taken out behind the woodshed and summarily executed by the Supreme Court this morning. An enormous number of patents will now have no enforceable claims. Hundreds of billions of dollars in corporate value has been erased. But that might be a good thing. Immediate attention now must turn to Congress. Thank goodness that the technical amendments to the America Invents Act are outstanding. This will provide a perfect opportunity for Congress to save an industry that employs many millions of people, while at the same time undoing a pathetic, narrow-minded decision of the Supreme Court.

The Law of Recipes: Are Recipes Patentable?

In most cases the typical recipe for a “killer Margarita” or “the best barbeque sauce ever” will not be patentable, but the only way to know for sure is to understand how the Patent Office reaches its conclusions relating to what can and cannot be patented. It is possible to obtain a patent on a recipe or food item if there is a unique aspect to the recipe, there is something counter-intuitive or a problem (such as self live or freshness) is being addressed. The trick will be identifying a uniqueness that is not something one would typically think to try.

Supreme Court Tackles §101 in Mayo v. Prometheus

This was a very interesting discussion, although I was surprised at how little Bilski was mentioned. Although the hearing did digress on some tangents, the Justices’ questioning was generally on point and indicative of the difficult questions a case like this presents. Surely, the Court will be thinking of the impact a decision might have on the healthcare industry, as well as the information technology industry. Also, Justices are no doubt aware of other pending cases which may find their way to the Supreme Court, such as AMP v. USPTO, Classen v. Biogen, and the divided infringement cases of McKesson and Akamai. I will leave the reader to reach their own conclusions, but my best guess is that the Court is leaning toward the position that §101 should be a coarse filter and that §102 and §103 would be more appropriate to challenge the validity of the claims in this case. We will learn the answer in the spring.

Supreme Court Hears Oral Argument in Mayo v. Prometheus

All in all it seemed to me that the majority of the court seemed more skeptical about the Mayo position and more supportive of the Prometheus position. That being said, it is extremely troubling to contemplate the possibility that Chief Justice Roberts was more in tune with the thinking of Justice Breyer. It is also disheartening to see such a fundamental misunderstanding of patent law on the part of the Chief Justice. At the end of the day the Justices of the Supreme Court will say what the law is on this issue, but sometimes it is hard to imagine a less qualified bunch to opine on a patent issue.

Insurance Company Invents Faster Way To Deliver Life Insurance

Yesterday The Hartford announced via press release that it had invented a faster way to deliver life insurance, which is now patent pending. Can you that be true? As with many things associated with the law, particularly patent law, a simple, straightforward answer is not possible. In a nutshell, it is possible that one could patent a method of more quickly delivering life insurance if the process is new and non-obvious. However, given the law that the United States Patent and Trademark Office is required to apply there will need to be much more than a real world business method, or “pure business method” as they are sometimes referred to.

Throwing Down the Gauntlet: Rader Rules in Utramercial that Breadth and Lack Specificity Does Not Make Claimed Method Impermissibly Abstract*

Some will undoubtedly view the Chief Judge’s basis in Ultramercial for distinguishing the ruling in CyberSource as being “slight of hand” and using “mirrors,” but it certainly illustrates the wide gulf of views between the various members on the Federal Circuit on the patent-eligibility question. I wouldn’t be surprised (and frankly it needs to happen) if both Ultramercial and CyberSource ended up before the en banc Federal Circuit. As I’ve noted previously, we’ve currently got what appear to be irreconcilable decisions in the Classen, Prometheus, and AMP cases in determining the patent-eligibility of certain medical (e.g., diagnostic) methods. With what appears to be similarly conflicting decisions in Ultramercial and CyberSource, the gauntlet has truly been thrown down. An en banc Federal Circuit needs to step in soon, or the conflagration that currently exists in the patent-eligibility “war” might soon consume us all.

CAFC on Patent-Eligibility: A Firestorm of Opinions in Classen*

That there was a majority (and a dissenting) opinion in the remand of Classen wasn’t surprising. But that there was yet a third “additional views” opinion would likely not have been predicted by anyone. And it is that “additional views” opinion, along with the majority and dissenting opinions, that will certainly generate a “firestorm” through the Federal Circuit, and which may eventually reach the Supreme Court. The judicial donnybrook on the question of what the standard is (or should be) for patent-eligibility under 35 U.S.C. §101 is about to begin in earnest.

Patenting Business Methods and Software in the U.S.

Any method claim that does not require machine implementation or does not cause a transformation will fail the test and will be rejected under § 101. The importance of this from a practical standpoint is that business methods not tied to a machine are going to be rejected under § 101 and the rejection will be difficult, if not impossible, to overcome.

5th Anniversary: Supreme Lab Corp. Non-Decision Revisited

In truth, the dissent of Justice Breyer is extraordinarily short-sighted. As is the case with many inventions that are foundationally important, many judges seem extremely willing to find such pioneering inventions invalid for one reason or another. Indeed, Justice Breyer even glowingly referred to the Supreme Court’s decision in Gottschalk v. Benson, the Supreme Court case that originally prevented the patenting of software. Today, the ruling in Gottschalk universally believed to be wrong, yet to some it still seems to remain the seminal case showing that pioneering inventions should not be patented.

Supreme Court Accepts Appeal on Patented Medical Diagnostics

Earlier today the United States Supreme Court granted certiorari in Mayo Collaborative Services v. Prometheus Laboratories, Inc., which sets up another foray into the patent eligible subject matter waters for the Supreme Court in the October 2011 term. This appeal by Mayo will challenge the December 17, 2010 decision of the United States Court of Appeals for the Federal Circuit, one of the first patentable subject matter cases for the Federal Circuit in the wake of the Supreme Court’s decision in Bilski v. Kappos. In fact, this case was returned from the Supreme Court to the Federal Circuit for further consideration in light of the Supreme Court ruling in Bilski v. Kappos.

Reviewing the ACLU and Myriad Oral Arguments at the CAFC

The ACLU lead plaintiffs have a real predicament relative to standing. It does not sound as if the Federal Circuit believed any single plaintiff could satisfy both prongs required to bring a Declaratory Judgment Action, and rather were trying to say we have some plaintiffs with first prong evidence and some with second prong evidence. Simply put, that dog doesn’t hunt, at least not under current law relative to standing. Thus, there seems a real chance that the entire case could be thrown out because no plaintiff has standing.

A Landmark Case: The Aftermath of Myriad Genetics

Richard M. Marsh, Executive Vice President and General Counsel for Myriad Genetics is on the panel. He started off his presentation explaining that he really wants to talk about the case and the issues, but given that the case is ongoing and the future is uncertain regarding whether it will continue to be appealed, go back to trial or be dismissed altogether he might be unable to answer all questions. He did say clearly that the biotechnology industry “is under attack.” Marsh explained that the industry needs to be proactive because “if we sit back and idly do nothing there could be grave consequences.” Marsh explained that Myriad was able to do what it did thanks to the patents by giving it the time, money and incentive to innovate. I couldn’t agree with him more.

Top 10 Patent, Innovation & IP Events of 2010

At this time of the year all typically sit back and reflect on the year that has been, spend time with family and friends, watch some football and set a course to follow into the new year. So here are the top 10 events that shaped the patent, innovation and intellectual property industry during 2010 — at least according to me, and with a heavy patent emphasis. What did you expect?

Jumping Down the Rabbit Hole: Federal Circuit Ducks the Patent-Eligibility Issue in King Pharmaceuticals

With an opportunity to render some order out of the Bilski chaos, the Federal Circuit instead completely ducked the patent-eligibility issue clearly presented in King Pharmaceuticals. The Federal Circuit then created (and I do mean “created”) the new “an anticipated method claim doesn’t become patentable if it simply includes an informing step about an inherent property of that method” doctrine. With this new “doctrine,” we have now “jumped down the rabbit hole” into a surreal “Bilski in Patentland” world.

Patent Office Releases Interim Bilski Guidelines

This morning the United States Patent and Trademark Office published Interim Guidance for Determining Subject Matter Eligibility for Process Claims in View of Bilski v. Kappos. The Interim Bilski Guidance is effective July 27, 2010, and applies to all applications filed before, on or after the effective date. Most noteworthy is that the Patent Office is encouraging examiners to issue 101 rejection in only “extreme cases” and allow patentability to be decided by sections 102, 103 and 112.


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