Last week, the Board of Patent Appeals and Interferences (BPAI) at the PTO reversed a rejection that the claims in a reexamination proceeding were invalid for obviousness in Ex parte Competitive Technologies, Inc. Normally, this would not be especially interesting news, but the patent is one that’s been heard from before.
This is the same patent that was at issue in the Supreme Court’s infamous dismissal of a grant of certiorari in LabCorp v. Metabolite Labs in 2006. In LabCorp, the Federal Circuit had ruled that the claims were valid and infringed. The Supreme Court granted certiorari, but then dismissed the case as improvidently granted, presumably because the issue that the Court was to decide in the case had not been considered by the lower courts. Justices Breyer, Stevens, and Souter filed a vigorous dissent from the dismissal, where they argued that the patent claimed unpatentable subject matter, namely that it claimed a “phenomenon of nature.”
A few months after this dissent, a defendant in another case involving the patent, General Atomics, filed a request for reexamination of the patent at the PTO. The examiner rejected the famous claim 13, cited in the Supreme Court’s dissent as being obvious. Claim 13 reads:
A method for detecting a deficiency of cobalamin or folate in warm-blooded animals comprising the steps of:
assaying a body fluid for an elevated level of total homocysteine; and
correlating an elevated level of total homocysteine in said body fluid with a deficiency of cobalamin or folate.
The BPAI reversed the examiner’s rejection by finding that the the examiner failed to provide sufficient factual basis for the conclusion of obviousness. The prior art did not teach or suggest all of the claim limitations. In ex parte reexamination proceedings, the requester does not have any right to appeal.
The BPAI did not address the question of whether the patent claimed unpatentable subject matter; indeed, the issue was not raised during the reexamination. The requester did cite to Justice Breyer’s dissent in the request for reexamination, but in general, reexamination requests are limited to substantial new questions of patentability based on “patents and printed publications.” This does not, however, stop the examiner or BPAI from raising the issue sua sponte. The Federal Circuit rejected a similar claim in December, and the BPAI has not been shy about rejecting computer claims. They typically cite Bilski.
What does any of this mean for Bilski at the Supreme Court? Probably nothing. Of the “Breyer Three,” Justice Souter will not hear the case. We’ll have to wait and see.
Kevin Noonan of Patent Docs provides further analysis.
