Tag Archives: Utility

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