On June 12, 2015, the United States Court of Appeals for the Federal Circuit issued a decision in Ariosa Diagnostics, Inc. v. Sequenom, Inc. The Federal Circuit decision has been widely criticized (see here and here, for example). Sequenom has asked for reconsideration en banc, with 12 separate amici filers in support of Sequenom’s petition for reconsideration en banc.
The original panel decision dealt with whether a non-invasive method for detecting paternally inherited cell-free fetal DNA (“cffDNA”) from a blood sample of a pregnant woman was patentable. See U.S. Patent No. 6,258,540. The district court ruled that the method claims were patent ineligible and the Federal Circuit agreed. Judge Linn was uncomfortable with the decision, but wrote in a concurrence that he thought that the outcome was mandated by the “sweeping language of the test set out in Mayo.”
Sequenom has retained Tom Goldstein, co-founder of the SCOTUS blog, to handle the appeal. Goldstein has served as counsel in over 100 Supreme Court cases over the last 15 years. His presence sends a clear message that Sequenom is heading to the Supreme Court if they do not prevail in an en banc rehearing.
Earlier this fall, I had the opportunity to do a webinar conversation with Bob Stoll, former Commissioner for Patents at the USPTO and current partner at Drinker Biddle in Washington, D.C. Our wide-ranging discussion lasted for just over one hour. You can access the entire recording, free, at Patent Eligibility in a Time of Patent Turmoil.
What follows is a bit of our conversation to whet your appetite.
STOLL: As someone very interested in the patent arena and getting the standards correct, I’ve been really worrying about things. I think we are in a very confusing state at the moment. I think that the courts are actually undermining patent eligibility in many different areas. And the irony seems to be, Gene, that the Supreme Court and now this Court of Appeals for the Federal Circuit seem to be not considering the fact that the United States is leading in many of these emerging technologies and specifically thinking about software and diagnostic methods and personalized medicine and gene sequences….
Since the United States Supreme Court issued its decision in Alice v. CLS Bank, I have been arguing that the decision would have far reaching implications for software patents. Initially, many were skeptical, and surprisingly many still are, even with the Patent Office issuing Alice rejections like they are candy at Halloween, with the Federal Circuit invalidating software claims in case after case citing Alice, and with the PTAB likewise finding software patent claims of all types invalid. There is no doubt that things are different and a great many issued software patents and pending software applications will be worthless. Sure, moving forward, we have ideas about what needs to be in the disclosure, but you cannot add new matter to an application or issued patent, and software patents are now all about the technical disclosure.
Against this backdrop of disbelief and denial, I spoke with Professor Mark Lemley on August 28, 2014. Lemley shares my view, for the most part. I published our entire interview on IPWatchdog.com, The Ramifications of Alice: A Conversation with Mark Lemley. What follows are some of the highlights of our conversation.
Recently, I had the opportunity to sit down with Paul Michel, who we in the patent community know as the former Chief Judge of the United States Court of Appeals for the Federal Circuit. When Judge Michel stepped down as Chief Judge and retired several years ago, he told me that he decided to retire so he could say what needed to be said on behalf of the patent system, something he felt he couldn’t do while a member of the federal judiciary. Judge Michel has been true to his promise. He keeps an active schedule.
Judge Michel has been generous with his time over the past several years, and I have interviewed him on a number of topics. Most recently we discussed the Supreme Court’s patent decisions during the October 2013 term, spending most of our discussion on Alice v. CLS Bank.
Below are the highlights of my interview with Judge Michel. If you would like to read the entire interview, which lasted for approximately one hour and spans over 9,000 words, please see: Judge Michel says Alice Decision ‘will create total chaos’.
AT&T is seeking another patent on self-destructing e-mail messages. AT&T originally filed a patent application in January 2002 on this technology, which ripened into U.S. Patent No. 7,356,564. The latest patent application to publish in this family tree published on June 20, 2013 as U.S. Patent Application No. 20130159436. We profiled this back in August on IPWatchdog.com. See AT&T Seeks Patents on E-mail Self Destruct and 3D Media Content. Shortly thereafter, the United States Patent and Trademark Office issued a Non-Final Rejection of the application.
This application relates to e-mail, which virtually everyone reading will know is a messaging system used across the world to communicate information to other people. Indeed, so ubiquitous has e-mail become that it is hard to remember when electronic communications via e-mail did not exist. E-mail is so incredibly useful because it’s efficient and practically instantaneous. However, a sender has almost no way to protect confidential information once it has been sent across the Internet, and we have probably all sent one or more messages without thinking things through before clicking “send.” Many have also no doubt sent an e-mail by accident to someone who was not the intended recipient, which can range from a nuisance to embarrassing to completely catastrophic depending on the content.