USPTO Issues New Patent Eligibility Examples

The USPTO has issued new patent eligibility examples, including several examples relating to diagnostic methods and “nature-based” products. Surprisingly, most of the claims are said to satisfy 35 USC § 101. The USPTO also published a Memorandum to the Examining Corps that provides guidance on how examiners should formulate subject matter eligibility rejections and evaluate applicant responses. Both documents have me wondering if the USPTO may be attempting to swing the patent eligibility pendulum back towards the center, but until the Federal Circuit–or the Supreme Court–provides more coherent guidance, § 101 will continue to impact the scope of diagnostic and “nature-based” product patents.

I’ll be sharing my initial thoughts on the new examples at the Kansas Bar Association’s Midwest Intellectual Property Institute on Friday, May 6, 2016, and will provide a more detailed analysis of the new examples in a future article.

District Court Applies Mayo To Treatment Claims But Denies Motion To Dismiss BMS Keytruda Litigation

The U.S. District Court for the District of Delaware accepted Merck’s arguments that method of treatment patents asserted by BMS against its Keytruda product “touch[] upon a natural phenomenon” such that they should be analyzed under the Mayo/Alice patent eligibility framework. However, in view of disputed issues of fact, the presumption of validity, and other presumptions arising from the Rule 12(b)(6) context, the court denied Merck’s motions to dismiss the Keytruda litigation.  Continue reading this entry

Having A Bad Hair Day? The Federal Circuit Agrees That Method Of Cutting Hair Is Invalid Under 101

While I do not usually write about non-precedential decisions, In re: Brown caught my eye as an interesting patent eligibility case. It does not relate to diagnostics or computer programs, but rather to the art of cutting hair. Continue reading this entry

Will The Celsis Appeal Put An End To 101 Rejections Of Laboratory Method Claims?

On April 5, 2016, the Federal Circuit heard oral arguments in Rapid Litigation Mgmt. Ltd. v. CellzDirect Inc., where the U.S. District Court for the Northern District of Illinois held invalid claims directed to a “method of producing a desired preparation of multi-cryopreserved hepatocytes.” While it is never a safe bet to predict the outcome of an appeal based on the judges’ comments at the oral hearing, the Federal Circuit judges hearing this case appeared to have little patience for the application of Mayo to the type of method claims at issue. Continue reading this entry