Tag Archives: 101

Federal Circuit Ignores Claim Language To Identify The Underlying Invention

At first glance, the Federal Circuit decision in Cybersource Corp. v. Retail Decisions, Inc. may not be of much interest to those in the pharmaceutical field. The patent at issue relates to a “method and system for detecting fraud in a credit card transaction” and the question before the court was whether various computer-related claim limitations … Continue reading this entry

Federal Circuit Upholds Many Classen Method Claims, Also Limits Reach Of Safe Harbor

On August 31, 2011, the Federal Circuit issued its second decision in Classen Immunotherapies, Inc. v. Biogen Idec, which was on remand from the Supreme Court after Bilski v. Kappos. Judge Newman wrote the opinion for the court, which was joined by Chief Judge Rader, and holds that two of the three asserted patents recite … Continue reading this entry

More On Myriad: Judge Moore's Concurrence

I wrote previously on the apparent scientific basis for the differing opinions of Judge Lourie and Judge Bryson on the patent-eligibility of isolated genomic DNA claims in Association for Molecular Pathology v. USPTO. Here, I look at Judge Moore’s concurring opinion, which appears to agree in principal with Judge Bryson’s legal analysis, but places more emphasis … Continue reading this entry

More On Myriad: The Chemical Divide--Judge Bryson

As I wrote previously, one interesting aspect of the recent Federal Circuit decision in Association for Molecular Pathology v. USPTO, is the apparent scientific basis for the differing opinions of Judge Lourie and Judge Bryson on the patent-eligibility of isolated genomic DNA claims. Unlike many concurring and dissenting opinions that are spurred by a different view of the law, Judge Lourie and Judge Bryson also appear to part ways based on different views of the science. In this second part of a three-part series, I focus on the views of Judge Bryson. … Continue reading this entry

More On Myriad: The Chemical Divide--Judge Lourie

One interesting aspect of the recent Federal Circuit decision in Association for Molecular Pathology v. USPTO, is the apparent scientific basis for the differing opinions of Judge Lourie and Judge Bryson on the patent-eligibility of isolated genomic DNA claims. Unlike many concurring and dissenting opinions that are spurred by a different view of the law, Judge Lourie and Judge Bryson also appear to part ways based on different views of the science. In this first part of a three-part series, I focus on the views of Judge Lourie. … Continue reading this entry

Federal Circuit Issues Mixed Decision On Myriad Claims

On July 29, 2011, the Federal Circuit issued its decision in Association for Molecular Pathology v. USPTO, also known as the ACLU/Myriad “gene patenting” case. In a mixed decision, the court held that “isolated DNA” claims are patent-eligible under 35 USC § 101, but that the “comparing” or “analyzing” method claims are not. With a … Continue reading this entry

Supreme Court Grants Cert In Mayo v. Prometheus

Today (June 20, 2011), the Supreme Court granted Mayo’s petition for certiorari in Prometheus Laboratories, Inc. v. Mayo Collaborative Services, which means that the Supreme Court will review the Federal Circuit decision that upheld the patent-eligibility of Prometheus’ personalized medicine claims against a Bilski-type challenge. As I wrote last week, it will be interesting to see … Continue reading this entry

Justice Breyer Resurrects Metabolite

Justice Breyer’s dissenting opinion in Board of Trustees of Leland Stanford Junior University v. Roche Molecular Systems, Inc. is interesting for more than his views on inventor rights and the Bayh-Dole Act. As I was reviewing it, I was struck by his negative comments about patents and his citation of his own 2006 opinion dissenting from … Continue reading this entry

Federal Circuit Upholds Personalized Medicine Claims

The Federal Circuit decided for the second time that the personalized medicine claims at issue in Prometheus Laboratories, Inc. v. Mayo Collaborative Services satisfy the requirements for patent-eligibility set forth in 35 U.S.C. ¬ß 101, even under the Supreme Court's decision in Bilski v. Kappos. In so doing, the court followed a two-part analysis that provides a framework for analyzing other method claims that may raise similar issues. … Continue reading this entry

Solving Utility Problems

The Federal Circuit decisions in Cancer Research Technolgoy Ltd. v. Barr Labs., Inc. (Nov. 2010) and In Re '318 Patent Infringement Litigation ("Janssen") (Sep. 2009) present an interesting contrast in utility issues. In Cancer Research, the USPTO raised utility rejections that the Applicant eventually overcame and the patent was found to be enforceable, while in Janssen, the USPTO never raised the issue but both the district court and the Federal Circuit found the patent invalid for lack of utility. The Federal Circuit may address the issue again this week, when it hears oral arguments in Eli Lilly & Co. v. Actavis on Thursday.bv … Continue reading this entry

When Words Matter: Drug Labels vs. Kit Labels

The Federal Circuit decision in AstraZeneca LP v. Apotex, Inc. reveals an interesting dichotomy in the role of printed material in pharmaceutical patent disputes. On the one hand, the court found that proposed labeling for Apotex’s drug product supported a claim of induced infringement, while on the other it confirmed that the labeling included in AstraZeneca’s kit … Continue reading this entry

Bilski Soundbites: Helping or Haunting for Years to Come

While the Supreme Court’s recent decision in Bilski v. Kappos is gaining more attention for what it doesn’t say than what it does, it doubtless will be quoted for decades to come.  Which passages gain the most foothold likely will depend on the direction the law takes in this area, but here are some that we are likely to … Continue reading this entry