Patent Law Weblog
Category: Patentable Subject Matter
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By Joshua Rich — Less than two years ago, in Return Mail, Inc. v. U.S. Postal Service, 139 S. Ct. 1853 (2018), the Supreme Court held that a government entity — in that case, the U.S. Postal Service — is not a "person" under the America Invents Act, and therefore unable to avail itself of…
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By Donald Zuhn –- Last month, in Boehringer Ingelheim Pharmaceuticals Inc. v. Mylan Pharmaceuticals Inc., the Federal Circuit reversed a decision by the U.S. District Court for the District of New Jersey finding certain claims of U.S. Patent No. 8,853,156 to be directed to ineligible subject matter under 35 U.S.C. § 101, and remanded for…
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The Naples Roundtable, a 501(c)(3) non-profit organization whose primary mission is to explore ways to improve and strengthen the U.S. patent system, will on Monday, March 23rd file a Request with the U.S. Patent and Trademark Office, to designate Ex parte Olson (Appeal 2017-006489), and Ex parte Fautz (Appeal 2019-000106) as precedential. Both were designated…
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By Kevin E. Noonan — Mallinckrodt filed a certiorari petition with the Supreme Court last week, over the Federal Circuit panel decision (by Chief Judge Prost joined by Judge Dyk; Judge Newman dissented on the issue before the Court in this petition) affirming dismissal of a suit by Mallinckrodt's subsidiary, iNO Pharmaceuticals, in iNO Therapeutics…
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By Kevin E. Noonan — The latest Federal Circuit decision on subject matter eligibility in the life sciences came down (by a divided court) in favor of eligibility, in Illumina, Inc. v. Ariosa Diagnostics, Inc. The claims at issue fell into the third "bucket" of eligibility, being neither diagnostic method claims (always ineligible at the…
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By Michael Borella — In 2014's Alice Corp. v. CLS Bank Int'l case, Justice Thomas famously wrote, "we need not labor to delimit the precise contours of the 'abstract ideas' category in this case." Instead, he found the claims of patentee Alice to have "no meaningful distinction" under 35 U.S.C. § 101 from those the…
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By Kevin E. Noonan — There is a belief in some quarters that the most significant barrier to patent subject matter eligibility reform is an implacable opposition by companies in the high tech sector because those companies are convinced that the recent Supreme Court precedent (Bilski/Mayo/Alice) as interpreted by the Federal Circuit has resulted in…
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Claims Directed to Capture and Output of Digital Content Held Patent Ineligible By James Korenchan — A few weeks ago, the U.S. District Court for the District of Delaware granted Defendants' Rule 12 motions in three different cases, each naming Pebble Tide LLC (hereinafter, "Pebble") as Plaintiff. The Defendants in the three cases were Arlo…
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By Kevin E. Noonan — Ever since the Supreme Court's decision in Mayo Collaborative Services v. Prometheus Laboratories was handed down in 2012, diagnostic method claims have been routinely invalidated by the district courts and those decisions upheld by the Federal Circuit. Indeed, in her recent dissent of the Court's denial of patentee's petition for…
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By Michael Borella — The hopes of anyone in favor of patent reform targeting 35 U.S.C § 101 have been official dashed — or at least put on hold. In an interview with the Intellectual Property Owner's association (IPO) last week, Senator Thom Tillis (at right), Chair of the Senate's Subcommittee on Intellectual Property, indicated…
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