Federal Circuit Finds Detection Claims Invalid Under 101

In Roche Molecular Systems, Inc. v. Cepheid, the Federal Circuit affirmed the summary judgment decision of the U.S. District Court for the Northern District of California that held nucleotide primer claims and detection method claims invalid under 35 USC § 101. This decision may be at odds with USPTO guidance that claims directed to a method of detection without a diagnostic correlation are patent-eligible. Judge O’Malley’s concurrence highlights the problem of giving precedential effect to patent eligibility decisions rendered on limited factual records.
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Federal Circuit Takes A Narrow View Of Reasonable Expectation Of Success

The Federal Circuit decision in Acorda Therapeutics, Inc. v. Roxane Laboratories, Inc. addressed several aspects of obviousness doctrine. We previously wrote about the impact of a blocking patent on consideration of objective indicia of non-obviousness. Here, we look at the court’s treatment of the requirement for a reasonable expectation of success.

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Blocking Patent Discounts Objective Indicia Of Non-Obviousness

In Acorda Therapeutics, Inc. v. Roxane Laboratories, Inc., the Federal Circuit affirmed the district court decision finding four Acorda Orange Book-listed patents for Ampyra® invalid as obvious. Acorda raised a number of arguments on appeal, but this article focuses on the impact of a blocking patent on consideration of objective indicia of non-obviousness.

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USPTO Director Iancu Reveals Proposed New Patent Eligibility Guidelines

In his keynote address at the Intellectual Property Owners Association Annual Meeting, USPTO Director Iancu revealed that the USPTO is working on revised patent eligibility guidelines he hopes will help keep patent eligibility issues and conditions-for-patentability issues “in their own distinct lanes.” While that goal sounds like a good one, we all know the devil will be in the details. According to Director Iancu, it could be several months before those have been worked out enough to be fit for public consumption.

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Federal Circuit Outlines Four Options For Overcoming Obviousness Rejections Based On Routine Optimization

In E.I. DuPont De Nemours & Co. v. Synvina C.V., the Federal Circuit reversed the decision of the USPTO Patent Trial and Appeal Board (PTAB) that had upheld Synvina’s chemical process patent against an obviousness challenge brought in an Inter Partes Review (IPR) proceeding. In so doing, the court outlined four ways to prevail against an obviousness rejection based on routine optimization.

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