On January 26, 2015, the Supreme Court granted certiorari, vacated, and remanded Shire Development LLC v. Watson Pharmaceuticals, Inc., to the Federal Circuit “for further consideration in light of Teva Pharmaceuticals USA, Inc., v. Sandoz, Inc.” But, if Teva v. Sandoz still calls for de novo review when the claim construction was based only on intrinsic evidence, the Federal Circuit will not have to revise its analysis on remand. Continue reading this entry
Although Sequenom has settled its dispute over U.S. Patent 6,258,540 with some parties (as I noted here), its case against Ariosa Diagnostics, Inc. remains active. Thus, we all should be waiting with bated breath to see whether the Federal Circuit determines that the claims of the Sequenom patent satisfy 35 USC § 101. Continue reading this entry
On January 20, 2015, the Supreme Court issued its decision in Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc., finding that the Federal Rules of Civil Procedure call for some deference in the claim construction standard of review. In particular, the Court held that when claim construction is based on external evidence, a district court’s findings of subsidiary facts are to be reviewed for clear error, while its ultimate claim construction is to be reviewed de novo. Although this decision changes the Federal Circuit’s nearly 20-year practice of applying full de novo review since the Supreme Court’s 1996 decision in Markman v. Westview Instruments, Inc., it is not surprising in view of the Court’s recent decisions that refuse to make exceptions to the usual rule for patent matters. Continue reading this entry
In a decision issued December 17, 2014, in In Re BRCA1- And BRCA2-Based Hereditary Cancer Test Patent Litigation (Myriad II), the Federal Circuit invalidated Myriad’s primer claims and detection method claims under 35 USC § 101. I first reported the decision here, and now revisit that decision and the Supreme Court decision in Association for Molecular Pathology v. Myriad Genetics, Inc. (Myriad I), to consider the patent eligibility of DNA claims, and identify the types of DNA claims that may survive the Myriad decisions. I’ll be presenting some of these views at the USPTO Eligibility Forum later today. Continue reading this entry
The USPTO issued interim guidelines on 101 (“Interim Guidance”) on December 15, 2014. We summarized the Interim Guidance in this post here, and now highlight five things practitioners and stakeholders need to know as they consider how to apply the Interim Guidance to specific claims.