USPTO Holds First Roundtable on “Subject Matter Eligibility Guidelines”
On November 14th, the PTO hosted a roundtable discussion in Alexandria on s. 101 issues in which both industry reps and practitioners were invited to dissect the current Office guidelines. The...
View ArticleAthena Diagnostics, Inc. v. Mayo (D. Mass., August 4, 2017) –“That’s all,”...
Please read my recent post about stage 1 of this proceeding, in which the Judge in 2016 found that the claims to diagnosing Myasthemia Gravis (MG) by adding MuSk to a patient sample and detecting any...
View ArticleFederal Circuit Circumvents Mayo/Alice Rule in Vanda v. West-Ward
After Cleveland Clinic, IP practitioners were left to speculate about the fate of claims directed to methods of medical treatment. These claims seemed next in line for extinction by the Mayo/Alice...
View ArticleInterval Licensing v. AOL — Judge Plager’s Concurring Dissent
The majority of the panel in Interval Licensing v AOL, Appeal no. 2016-2502, -05, -06, -07 (Fed. Cir., July 20, 2018) affirmed the district court’s finding that claims 15-18 of U.S. Pat. No. 6,788,314...
View ArticleEx Parte Nagy – The Reach of the Mayo/Alice Rule Exceeds Its Grasp?
The final rejection of the claims of Nagy’s application Serial No. 14/223,113 was affirmed by the PTAB on July 30, 2018 (Appeal 2017-008793). One of the “representative” claims was directed to the holy...
View ArticleBhagat v. Iancu – Did the Myriad Decision Overrule Funk Bros.?
A September 6th post by Dennis Crouch at PatentlyO (“A Mixture of Known Compounds is Unpatentable without a Transformation“) led me to a closer reading of the cert. petition filed in Bhagat v. Iancu,...
View Article“Big Data” Claims Meet Mayo/Alice Rule
I am going to try to discuss two recent decisions by the PTAB, Ex parte Fiesner, Appeal 2018-00530 (9-10-18) and Ex parte Lehrer, Appeal 2016-007941 (8-29-2018). Both have claims that employ computers...
View ArticleThe Abstract Idea Defense in a Patent Infringement Suit Jumped the Shark in...
Guest Post from Janal Kalis. Nike sued Puma for infringing its fly knit shoes. Puma filed a motion to dismiss because the patents asserted by Nike are directed to an abstract idea. As can be seen...
View ArticleLife Science Patenting to Iancu – “We need help too!”
In his remarks presented at the recent 10th Annual Patent Law & Policy Conference at Georgetown University Law School, USPTO Director Andrei Iancu outlined the analytical framework for the new,...
View ArticleLegal Wiggle Room in the Joint AIPLA-IPO Proposal on Patentability?
I recently took another look at the Joint AIPLA-IPO Proposal on Patent Eligibility that was prompted by the scheduling of a discussion meeting by the Minnesota Intellectual Property Law Association. I...
View Article