Patent Law Practice Center

Supreme Court Grants Certiorari In Prometheus V. Mayo (Again)

On Monday, the United States Supreme Court agreed to consider whether to set limits on when inventors can patent medical diagnostic tests.  Our friends at Foley & Lardner sent in this article discussing the history of the case, the issues being considered by the Court and the potential impact this case may have on intellectual property in the personalized medicine space.

On June 20, 2011, the United States Supreme Court granted Mayo’s petition for certiorari in Prometheus Laboratories, Inc. v. Mayo Collaborative Services, 628 F.3d 1347 (Fed. Cir. 2010), a case addressing patent eligibility under 35 U.S.C. § 101 of certain method claims relevant to personalized medicine. While the issue under consideration here does not relate to whether isolated genes and other alleged “products of nature” are patent-eligible, the Court in Prometheus will likely address whether and how one can claim methods that take advantage of correlations between an individual’s personal health/genetic make-up and possible health care options.

As discussed in postings on Foley’s Personalized Medicine Bulletin and PharmaPatents blogs, Mayo Collaborative Services filed a second petition for certiorari with the Supreme Court after the Federal Circuit upheld the claims (for a second time) on remand after the Supreme Court’s decision in Bilski v. Kappos (2010). Representative claims in Prometheus include: (more…)

Institute Live Blog: Reactions To Bilski

Next panel  – “What Hath Bilski v. Kappos: Fallout in the Courts and the USPTO”.  The panel includes, Gary Hoffman of Dickstein Shaprio, David M. Rosenblatt of Thomson Reuters and Associate Prof. Michael Risch of Villanova School of Law.

– Gary Hoffman began with a discussion on how the Courts have reacted to Bilski.  The Federal Circuit has cited Bilski 7 times: 2 cases with substantive post-Bilski analysis: Prometheus (Court held MOT test is relevant but not the only test) & Research Corp. Tech (Court focused on whether the subject matter fails s 101’s requirement that it not be “abstract”); 2 references to the recency of the decision, 1 citation to the Supreme Court’s instruction that formulaic rules should be avoided,  1 metnion in dissent (Intervet), 1 case (King Pharma) where s101 analysis was passed over because the Fed Circ had already found the claims anticipated. (more…)

Hoffman & Baron: The Current State of Patent Law

During late 2009 – 2010, we saw a significant number of remarkable decisions from the Supreme Court and the Federal Circuit that impacted the patent community.  From Bilski v. Kappos, to Forest Group v. Bon Tool, to Wyeth v. Kappos, to Ariad Pharmaceuticals v. Eli Lilly, just to name a few.  The following article discussing these decisions was written by Robert Neuner, Partner with Hoffman & Baron and presenter at PLI’s upcoming 5th Annual Patent Law Institute.  Here is an excerpt and a link to the article.

This paper discusses a range of cases decided in late 2009 and 2010 that reflect the current state of the law on issues with which each of us should have at least some familiarity.  Having decided Bilski, the Supreme Court has one again exercised its oversight over the Federal Circuit.  It will review three Federal Circuit decisions concerning the Bayh-Dole Act and the proofs necessary to establish (a) inducement of infringement and (b) patent invalidity.  There is also the blockbuster Myriad case now wending its way to a decision by the Federal Circuit. (more…)

Bilski’s Lessons: Three Months Later

Kenneth W. Brothers, a Partner at Dickstein Shapiro LLP and a presenter at PLI’s upcoming 5th Annual Patent Law Institute, sent in this article he wrote along with Philip G. Hampton, II wherein they discuss what has happened since the Supreme Court’s Bilski decision.  Here is an excerpt and a link to the full article.

After the Supreme Court issued its decision on Bilski v. Kappos, we predicted that much ink would be spilled analyzing the fractured opinions and opaque basis for the majority decision.  While the PTO has issued interim guidelines, since June, only one district court has attempted to apply the Bilski decision and the decision has only been mentioned in two Federal Circuit decisions.

Applying Bilski. The patent bar will devote years deciphering this decision, since the majority decision failed to enunciate either a clear standard for patentability under §101 or clear guidelines for determining what is a valid business method patent.  We expect that lower court decisions likely will fall into three general categories:  (1) adherence to the Federal Circuit’s machine-or-transformation test; (2) seat-of-the-pants determinations of whether the patent-in-suit is directed to abstract; or (3) a genuine attempt to weigh multiple factors to determine patentability. (more…)

RCT v. Microsoft – Fed. Cir. Attempts to Shift Focus Away from MOT Test

The following post comes from Clement S. Roberts (Partner at Durie Tangri and Practice Center Contributor).

On December 8 the Federal Circuit issued its first post-Bilski opinion on patentable subject matter when it decided Research Corporation Technologies Inc. v. Microsoft .

In RCT the court was asked whether RCT’s patents on digital image halftoning were directed to patentable subject matter.  Digital image halftoning is a technique for displaying tones (either shades of grey or colors) that lie between those that a monitor or printer can natively produce by creating a matrix of dots that blur together when viewed from a distance.  The patent was directed to a method for creating a halftoned image using a mask (essentially a series of prearranged dots of known values which can be compared to the pixels in a given image) and, in particular, for creating an improved mask through the use of a particular kind of mathematical operation.  For example, claim 1 of one of the two relevant patents called for:

A method for the halftoning of gray scale images by utilizing a pixel-by-pixel comparison of the image against a blue noise mask in which the blue notice mask is comprised of a random non-deterministic, non-white noise single valued function which is designed to produce visually pleasing dot profiles when thresholded at any level of said gray scale images. (more…)