Although SmartGene, Inc. v. Advanced Biological Laboratories, SA is a non-precedential Federal Circuit decision, it could be interesting for that very reason, if it is a reflection of what the court sees as settled aspects of patent eligibility jurisprudence. Viewed in that light, this case could reflect the court’s confidence with at least the “abstract … Continue reading this entry
In a fractured en banc decision, the Federal Circuit affirmed the district court’s holding that the claims at issue in CLS Bank v. Alice Corporation are invalid under 35 USC § 101. The multiple opinions reveal the judge’s fundamental differences as to the meaning and role of the statute, and the difficulty of applying Supreme … Continue reading this entry
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
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.
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Last week, Dennis Crouch highlighted recent decisions from the Patent Office Board of Appeals and Interferences that evaluated the patent-eligibility of claims under 35 USC § 101. One case with relevance to biotech and pharmaceutical applicants upheld the § 101 rejection of IBM claims directed to methods for clustering genes having potential functional similarity by comparing gene expression profiles based on … Continue reading this entry