Patent Law Practice Center

Litigation Funding in Uncertain Patent Eligibility Times

A patent is an exclusive right. This means that the owner of a patent can prevent others from engaging in activities that are covered by an issued patent. But as is true with any right, a patent is only worth something if the owner is willing to take action to preserve the rights and litigate against those who are treading on the rights granted. In the United States, that means litigation in federal district court, which can easily cost millions of dollars.

Today, given the climate within the industry, being willing to take action when infringement is suspected is only the first hurdle. Yes, the decision to undertake litigation is a difficult one regardless of whether it is made by a company or an individual. Attention is diverted from other endeavors and opportunities, and there is a very real financial cost associated with litigating a dispute. Litigation is not free.

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What’s the Harm in Allowing Software Patents?

As many of you undoubtedly already know, the United States Supreme Court will soon decide whether software is patent eligible in the United States. The fact that such a question needs to be addressed in the year 2014 would be comically funny if it were not so tragically sad. Software has been patented in the United States since 1968, which means software has been patentable in the United States for the last two generations. Yet the Supreme Court is poised to decide whether software is or should be patent eligible in Alice v. CLS Bank, which will be argued to the Court on March 31, 2014.

What is the harm in allowing software patents?  Saying that software is not patentable subject matter is akin to saying that a car battery is not patentable subject matter. No one could seriously argue that a new and non-obvious car battery would not be patentable subject matter. In fact, that is exactly what many researchers are trying to find right now, albeit not the same type of car battery that we are used to inserting under the hood.

Any car is itself just a bunch of pieces of metal that sit there fastened together to create a tangible shell that has taken on an identifiable structure. The car has lots of potential, but without some kind of fuel it doesn’t even have potential energy. It merely has potential to move from place to place under appropriate conditions. A car without a battery isn’t something that is useful in any real world sense of the word.

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Foley & Lardner On The ACLU/Myriad Decision

The following discussion comes from Courtenay C. Brinckerhoff and Jacqueline D. Wright Bonilla of Foley & Lardner.

Federal Circuit Decides Highly Anticipated “ACLU/Myriad” Gene Patenting Case – Subject Matter Patent-Eligibility of Isolated DNA and Diagnostic Methods Addressed Head-On

On July 29, 2011, in one of the most controversial and publicized biotech patent cases in many years, the Federal Circuit decided the “ACLU/Myriad” gene patenting case, formally known as Assn. Mole. Path. et al. v. USPTO et al. In a majority opinion by Judge Lourie, the Court addressed the case on the merits, after finding standing. The Court held all “isolated DNA” claims at issue patent-eligible, but held as patent-ineligible diagnostic method claims that in effect recite only “comparing” or “analyzing” DNA sequences. While it is anticipated that this ruling may be the subject of en banc review before the Federal Circuit and/or will ultimately find its way to the Supreme Court, today’s decision and its impact will undoubtedly be of great interest to everyone working in the biotechnology and diagnostic medicine fields.

Background

After hearing oral arguments on April 4, 2011, Judges Lourie, Bryson, and Moore issued opinions relating to the appeal of the March 29, 2010 summary judgment decision of the U.S. District Court for the Southern District of New York (Sweet, J.) that invalidated the challenged claims in seven Myriad patents as patent-ineligible under 35 U.S.C. § 101. (See Foley’s April 4, 2011 Legal News Alert: The Federal Circuit Hears Oral Arguments in Myriad Isolated DNA Case.) (more…)