Patentable Subject Matter at the Supreme Court

We didn’t really think that the issue of patentable subject matter was settled after Bilski.  The Supreme Court will be hearing another appeal in a patentable subject matter case in the current term.  Several others could be added to the docket as the losing parties will probably file cert. petitions to the Court.

Mayo v. Prometheus

The Court will hear argument in Mayo v. Prometheus on December 7.  This case concerns patent claims directed to methods of calibrating drug dosages.  The original district court opinion found the patent claims to be invalid as not directed to patentable subject matter.  In 2009, a Federal Circuit panel reversed the decision.  After the Supreme Court’s decision in Bilski, the Court ordered the Federal Circuit to reconsider this case.  The Federal Circuit did so and again confirmed the patentability of the claims.  The Supreme Court has again agreed to hear the case, presumably because the Federal Circuit disregarded the district court’s and Mayo’s extreme reliance on Justice Breyer’s dissent from the dismissal order in LabCorp.

Classen v. Biogen

Classen is a case that is similar to Mayo in that the claims are directed to immunization methods.  The Federal Circuit originally held that the claims did not meet Bilski‘s machine-or-transformation test.  After the Supreme Court’s decision in that case, the Federal Circuit had to reconsider its earlier opinion.  The court that included a largely reconstituted panel changed its position, holding that the claims are patent eligible.  Judge Newman and Chief Judge Rader held the claims to be patent eligible, while Judge Moore wrote an extensive dissent.  The opinions totaled 57 pages, potentially signalling that the case may be headed back to the Supreme Court.

A cert. petition is due in late November.  The Supreme Court may hold the petition until it decides the Mayo case since the cases are similar.  It could then tell the Federal Circuit to reconsider its opinion again.

Association for Molecular Pathology v. Myriad

After the district court held that Myriad’s patent to isolated genes were not patent eligible, the Federal Circuit reversed.  The court did hold that several claims to methods of comparing and analyzing gene sequences were not eligible since they are directed to abstract mental processes.  Another big issue in this case, ignored by the Federal Circuit, is that none of the plaintiffs have standing in the case anymore.  This could be a problem for Supreme Court review.

A cert. petition is due in December.  The ACLU originally filed this case with the expectation of High Court review, so a petition is expected to be filed.

CyberSource v. Retail Decisions

In CyberSource, the Federal Circuit repudiated tens of thousands of patents in holding that Beauregard-type claims may be considered as methods directed to abstract ideas.  Beuregard-type claims are claims that are directed to computer-readable media that include program instructions for performing a particular method.  The Patent Office has been granting such patents for years with the understanding that a computer-readable medium is a tangible object and not an abstract method.

If no rehearing petitions are filed in this case, a cert. petition would be due in December.

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2 Responses to “Patentable Subject Matter at the Supreme Court”

  1. Pharma & Biotech Global Week in Review 19 Oct 2011 from IP Think Tank Says:

    […] US: Patentable subject matter at the Supreme Court (Inventive Step) […]

  2. Litigation Update « INVENTIVE STEP Says:

    […] Supreme Court […]

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