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AUTHOR
Douglas Panzer
(610)797-9000
dpanzer@flblaw.com
April 9, 2015

DietGoal Patent is Abstract Under Alice, Bravo!

Posted By Douglas Panzer @ 10:33 am
Filed under: Alice,Eligibility,Patent Litigation

THIS CAUSE having been heard and considered, it is
ORDERED and ADJUDGED:
PER CURIAM (DYK, MAYER, and REYNA, Circuit Judges).
AFFIRMED. See Fed. Cir. R. 36.

That’s all she wrote.  Literally.  So read the entire order of The Court of Appeals for the Federal Circuit yesterday affirming the Southern District of New York’s summary judgment determination that a patent owned by seeming patent troll DietGoal represents an abstract idea, unpatentable under Section 101.  This can’t bode well for DietGoal’s dozen or so other suits against website owners and app producers.  The patent in suit is the latest to fall to the Supreme Court’s Alice standard.

The Abstract of the ’516 patent, while not determinative of the scope of the patent, certainly couldn’t have helped the plaintiff’s cause.  It reads:

The method can include the following steps. First, the Meal Database and the Food Database can be prepared. Second, the user can use the Picture Menus to choose meals for a particular time period to correspond to a customized eating plan. Third, the user can decide whether or not to change one or more of the meals he has chosen for the particular time period. If the user decides to change his chosen meals, the user can edit or create new meals using the Meal Builder. If the user decides not to change his choices, or after the user changes his choices, the user can save the meals for the particular time period.

So…yeah.  Make a list of meals (with pictures), pick one or more of those meals that you like and either change them or save them.  That’s some innovative stuff right there.  Judge Engelmayer of the Southern District of New York didn’t think so either, opining on summary judgment that “[t]he claims of the ’516 patent recite nothing more than the abstract concept of selecting meals for the day, according to one’s particular dietary goals and food preferences.”  This suit, filed in 2012, likely would never have made it to court post-Alice.


June 14, 2013

SCOTUS Says Human Genes Not Patent Eligible

Posted By Douglas Panzer @ 5:40 pm
Filed under: Eligibility,Invalidity,Litigation,Patents

At first glance, it’s a simple question: Are human genes patentable? So, why is The Supreme Court’s decision on the question this week in Association for Molecular Pathology v. Myriad Genetics the subject of extensive federal litigation, addressed by greater than 45 amicus curiae (third party “friends of the Court”) briefs and reported in health, science and legal media across the country? The answer is anything but simple, spanning issues of statutory interpretation, public health concerns and billions of dollars in corporate interests.

Scientists for Myriad Genetics were the first, in 1994, to isolate and sequence two human genes dubbed BRCA1 and BRCA2. These genes, first identified in 1990 by scientists at UC Berkley, contain mutations and identifying markers of certain types of cancer. After isolating the genes Myriad applied for and was granted several patents covering the isolated genes themselves as well as products and methods for identifying those genes in patients. (U.S. Patents: 5,747,282; 5,837,492; 5,693,473; 5,709,999; 5,710,001; 5,753,441; 6,033,857.)

US patent law states that “[w]hoever invents or discovers any new and useful process, machine, manufacture, or composition of matter…may obtain a patent therefor.” (35 USC 101) A patent grants to the holder a limited 20-year monopoly on the patented subject matter, a grant which the Constitution confers in order to “promote the progress of science and the useful arts.” It is well-settled, however, through decades of patent litigation that one may not receive a patent covering a product of nature. This is aimed at striking a balance between providing researchers and investors with incentive to commit time and money to advancing science through new research and simultaneously preventing profiteers from simply identifying a natural process or substance and suing others for their use of it.

Based on its patents, Myriad held the exclusive right in the US to isolate the BRCA1 and BRCA2 genes.

In this case, the Supreme Court looked to whether Myriad’s isolation of BRCA1 and BRCA2 transformed those genes from a product of nature to a new scientific discovery. Myriad argued that it did. In the first battle in the case, the US District Court for the Southern District of New York rejected Myriad’s argument, writing:

DNA’s existence in an ‘isolated’ form alters neither this fundamental quality of DNA as it exists in the body nor the information it encodes. Therefore, the patents at issue directed to ‘isolated DNA’ containing sequences found in nature are unsustainable as a matter of law and are deemed unpatentable under 35 U.S.C. 101.

This decision held the Myriad patents in suit invalid. On appeal, the Court of Appeals for the Federal Circuit partially reversed the District Court’s decision, stating that, by isolating the genes, Myriad caused them to be “markedly different” from their natural state and therefore patentable. This analysis relied upon precedent of the Supreme Court indicating that “transformation” of a natural product may make it patent eligible

The Supreme Court’s unanimous June 13 decision reversed the CAFC finding and held that isolation of genes, like BRCA1 and BRCA2, does not transform the genes in a way that makes them patentable. Justice Clarence Thomas, on behalf of the Court, wrote, “[a] naturally occurring DNA segment is a product of nature and not patent eligible merely because it has been isolated” and that isolated DNA does not have a “markedly different chemical structure” from DNA occurring in its natural state. The Court also stated that Myriad’s process claims were to processes “well understood, widely used, and fairly uniform insofar as any scientist engaged in the search for a gene would likely have utilized” at the time of the patent application.

The Court expressly pointed out that this case does not preclude patenting “new applications of knowledge” about DNA sequences or novel and non-obvious processes, and does not address at all the patentability of “DNA in which the order of the naturally occurring nucleotides has been altered.”

While this opinion will invalidate numerous existing patents claiming isolated genes/DNA sequences, the field remains open for scientists and corporations to seek and monetize new methodologies and new, man-made genetic material (known as cDNA) for application in relevant medical areas. Myriad and similar gene patent holders will suffer in the short term, but the industry will otherwise likely be unaffected and the search for patentable products, processes and methods relating to genetic material will continue.


May 15, 2013

Not the End of Business Method Patents…But Could it Finally Be the End of Bad Business Method Patents?

Posted By Douglas Panzer @ 11:44 pm
Filed under: Business Method Patents,Eligibility,Invalidity,Patents

The debate continues to rage over the patent-eligibility of so-called business method patents. With each judicial installment from the Federal Circuit or the Supreme Court, legal pundits proclaim either that the latest opinion ensures business methods remain eligible for patent protection or that the opinion jeopardizes the validity of thousands of issued patents, casting peril upon the economic certainty of the industries related to those patents (frequently software and finance). With its May 10, 2013 opinion in CLS Bank Int’l. v. Alice Corp., the CAFC has taken a significant step toward proclaiming the continued patentability of business methods, while simultaneously reigning in the devious draftsmanship of patent attorneys/agents that floods the U.S. Patent Office and the patent system with paper-thin claims of method invention, thinly cloaked and uncomfortably shoehorned into nominal hardware and computer system language.

The CLS Bank opinion trails behind it all the above-referenced pundit commotion. One legal news outfit has even headlined it a “Nightmare Ruling” (subscription req’d.) that “Baffles [Attorneys].” But for those truly interested in innovation and those interested in coaxing the patent system into requiring that patents be not only formalistically acceptable, but innovatively worthwhile and not counter to the Constitutional goal of promoting science, CLS Bank is the closest the CAFC has come to returning the threshold question of patent eligibility to a true and common sense analysis of the claimed invention’s substance and closing the loophole that has allowed countless stifling, worthless patents to issue based on twists of cloaking claim language.

Patent attorneys, IP litigators, tech entrepreneurs and others have become accustomed to patents like the ones at issue in CLS Bank. These contain a set of method claims as well as system claims and computer readable medium (CRM) claims that purport to address physical articles of manufacture in an attempt to hurdle over the judicially fashioned abstract idea rejection that causes so many method-only claims to fall outside of the bounds of 35 USC 101. The court in CLS Bank however, has finally and directly addressed this clear ruse.

The court calls out the elephant in the room that patent practitioners have looked past for years and observed that the system and CRM claims of the Alice patents, though nominally claiming objects of manufacture, really re-claim the subject matter of the method claims, but formalistically mention physical articles that perform those methods, hoping to gain eligibility under Section 101. The system claims, the court says, by requiring a “computer” and a “data storage unit,” among other nominal physical objects, “provide for computer implementation at an incrementally reduced, though still striking level of generality.” Similarly, the CRM claims simply state “a computer readable medium” and instructions on that medium causing the method to be executed.

The CAFC has clearly stated in CLS Bank that business method and software patents remain patent eligible. However, the claimed method must be truly inventive, embodying “significantly more” than an abstract process. Further, the nominal addition of physical components does not gain eligibility for methods that do not otherwise meet this standard. The CAFC appears to have placed a great challenge before patent practitioners and inventors to improve the quality of business method inventions in exchange for the award of a patent monopoly. The next steps that we should watch with great interest will be: 1) whether the USPTO issues guidance to examiners based upon the CLS Bank holding; and 2) whether the Supreme Court chooses to review CLS Bank in order to cap its 40+ year old line of Section 101 cases. Hopefully both will occur, establishing without question the continued viability of business method patents as well as raising the bar to require true scientific progress in exchange for patentability.


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