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CPLRG™ 0076 - America Invents Act No1 - Sep. 16, 2011

Introduction to AIA

On September 16, 2011, President Obama is scheduled to sign into law the “Leahy-Smith America Invents Act” (hereafter “the Act” or “AIA”).  The Act makes numerous changes to the governing United States patent statutes, which are codified in United States Code Title 35.

The Act is from a bill of the House of Representatives,  112th Cong., H. R. No. 1249.  AmericanInventsActHR1249

Pertinent to the interpretation of the Act is the House Report on the Bill, 112th Cong., H.R. Report 112-98.  HouseReportonAmericanInventsAct

Information on the legislation can be found at a U.S. Patent and Trademark Office (PTO) website here.

A series of Chisum Patent Law Reference Guides will address specific changes, issues, and developments on the AIA.

CPLRG 076:  Introduction to AIA

CPLRG 077: What the Reform Act Does NOT Reform

CPLRG 0078: Section-by-Section Analysis

CPLRG™ 0074 - Cybersource Corp. v. Retailed Decisions, Inc - Aug. 16, 2011

Cybersource Corp. v. Retailed Decisions, Inc., 2011 U.S. App. LEXIS 16871 (Fed. Cir. 2011) (DYK, Bryson & Prost). Cybersource08162011

Major issues: mental steps as unpatentable methods; Section 101; Bilski; claims to computer readable medium with executable programs instructions; Beauregard claims

A Federal Circuit panel, in an opinion by Judge Dyk, held that method claims to a credit card fraud prevention system, which could be carried out by a human mentally or with the aid of pencil, were unpatentably abstract in the Bilski sense.  The panel also held claims to “computer reaable medium” for carrying out the methods to be unpatentable.

Cross Reference. For a discussion of the “mental steps” doctrine, see Chisum on Patents Sec. 1.03[6]. Read CPLRG™ 0074

CPLRG™ 0073 - Ass'n for Molecular Pathology v. United States Patent and Trademark Office - Jul. 29, 2011

Ass’n for Molecular Pathology v. United States Patent and Trademark Office, 2011 U.S. App. LEXIS 15649 (Fed. Cir. July 29, 2011) (LOURIE, MOORE, concurring in part; BRYSON, concurring in part and dissenting in part)  MyriadGenetics07292011.fc

Major issues:  claims to isolated genes; claims to comparing gene sequences to detect cancer; Bilski; patent eligible subject matter

In a much-watched case, known generally by the name of the patent owner, Myriad Genetics, a Federal Circuit panel addressed Section 101 issues concerning claims to isolated DNA and to methods of screening for cancer by DNA testing.  The panel also addressed the issue whether the plaintiffs, “an assortment of medical organizations, researchers, genetic counselors, and patients” had “standing under the Declaratory Judgment Act to challenge Myriad’s patents.”
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On standing, the Federal Circuit held that “at least one plaintiff,” a doctor, had standing.  On the merits, the majority distinguished between claims to isolated genes and screening by cell growth rates and claims to methods of comparing DNA sequences.  The former but not the latter were for patent eligible subject matter.

Pertinent to this decision is the Supreme Courts June 20, 2011 grant of certiorari in Prometheus Laboratories, Inc. v. Mayo Collaborative Services, 628 F.3d 1347, CPLRG 0071 (Fed. Cir. 2010), which involves Section 101 issues on patent claims concerning medical diagnostics.

UPDATE: The Supreme Court reversed in the Prometheus case.  See CPLR 0079.    On March 26, 2012, the Supreme Court remanded the Myriad Genetics case.  Thereafter, on August 16, 2012, the Federal Circuit, in a divided panel decision, affirmed its prior approach.  Myriad2012.fc Thus, applying Mayo, the majority held that the “composition claims to `isolated” DNA molecules” did not “cover patent-ineligible products of nature under § 101 because each of the claimed molecules represents a nonnaturally occurring composition of matter.”  It also held that the “method claim to screening potential cancer therapeutics via changes in cell growth rates of transformed cells” as not “directed to a patent-ineligible scientific principle.”  However, it held that the “method claims directed to `comparing’ or `analyzing’ DNA sequences are patent ineligible” because the “claims include no transformative steps and cover only patent-ineligible abstract, mental steps.”

Read CPLRG™ 0073

CPLRG™ 0069 - Microsoft Corp. v. i4i Limited Partnership - Jun. 9, 2011

Microsoft Corp. v. i4i Limited Partnership, — U.S. —- (June 9, 2011) (SOTOMAYOR, Scalia, Kennedy, Ginsburg, Breyer, Alito, & Kagan; BREYER, Scalia & Alito, concurring; THOMAS, concurring judgment) Microsofti4i.ussc

MAJOR ISSUES: invalidity defenses; clear and convincing evidence standard of proof; Section 282 as codification of common-law heightened proof standard; jury instruction when accused infringer relies on new evidence not considered by PTO during examination

COMMENTS: The Court, in a well-crafted opinion by Justice Sotomayor, confirms the Federal Circuit’s position, consistently maintained for almost 30 years, that one challenging the validity of a patent claim bears a proof burden of clear and convincing evidence and not the general civil burden of a preponderance of the evidence. This heightened standard is not lowered even when the challenger relies on “new” evidence, that is, evidence that was not presented to or considered by the PTO during examination of the claim. However, the Court, like the Federal Circuit, cautioned that a challenger may more easily carry the heightened burden by relying on new evidence. And the Court directed that a cautionary instruction to a jury on new evidence will be proper.

Cross References: For a discussion of the proof burden, as applied to obviousness invalidity defenses, see Chisum on Patents § 5.06[2]. See also Chisum on Patents § 19.02. For cases on the presumption of validity, see Chisum Patent Law Digest § 1562, § 5663.

For a summary of the Court’s decision, see below. Read CPLRG™ 0069

CPLRG™ 0070 - Board of Trustees of the Leland Stanford Junior Univ. v. Roche Molecular Sys. - Jun. 6, 2011

Board of Trustees of the Leland Stanford Junior Univ. v. Roche Molecular Sys., 131 S. Ct. 2188 (June 6, 2011) (ROBERTS, Scalia, Kennedy, Thomas, Alito & Kagan; SOTOMAYOR, concurring; BREYER & Ginsburg, dissenting) StanfordUniversityv.RocheMolecular06062011

MAJOR ISSUES: ownership of inventions and patent rights; initial ownership vesting in inventor; employee inventions; federally-funded inventions; universities as federal contractors

“Since 1790, the patent law has operated on the premise that rights in an invention belong to the inventor.” Read CPLRG™ 0070

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