In doing so, the Court has introduced new avenues for challenging the validity of patents. [1] 561 U.S. 593 (2010). [2] 132 S. Ct. 1289 (2012).
Although Mayo is the most immediate source of confusion, the uncertainty ultimately stems from the broader framework articulated in the Court's recent Section 101 decisions. The Court's reconceptualization in Bilski v. Kappos, 561 U.S. 593 (2010), of inherent, long-recognized limitations on Section 101's affirmative scope as freestanding, atextual "exceptions," id. at 601, has given rise to an array of difficult questions. The confusion created by this Court's recent Section 101 precedents warrants review in an appropriate case.
1 Funk Brothers Seed Co. v. Kalo Inoculant Co., 333 U.S. 127, 130 (1948). 2 561 U.S. 593, 649 (2010) (rejecting the Federal Circuit’s machine-or-transformation test). 3 Mayo Collaborative Servs.
Conference 1/22/10; cert. petition granted on 6/29/10; judgment vacated and case remanded for further consideration in light of Bilski v. Kappos, 561 U.S. __ (2010).Classen Immunotherapies, Inc.,v. Biogen Idec, Glaxosmithkline and Merck & Co, Inc., No. 08-1509Question Presented:Is the CAFC's test for patentability under 35 U.S.C. §101, as defined in Bilski, the "machine or transformation test" appropriate for determining patentability of a method of using pharmaceuticals and "medical activities"?
Conference 1/22/10; cert. petition granted on 6/29/10; judgment vacated and case remanded for further consideration in light of Bilski v. Kappos, 561 U.S. __ (2010).Classen Immunotherapies, Inc.,v. Biogen Idec, Glaxosmithkline and Merck & Co, Inc., No. 08-1509Question Presented:Is the CAFC's test for patentability under 35 U.S.C. §101, as defined in Bilski, the "machine or transformation test" appropriate for determining patentability of a method of using pharmaceuticals and "medical activities"?
Conference 1/22/10; cert. petition granted on 6/29/10; judgment vacated and case remanded for further consideration in light of Bilski v. Kappos, 561 U.S. __ (2010).Classen Immunotherapies, Inc.,v. Biogen Idec, Glaxosmithkline and Merck & Co, Inc., No. 08-1509Question Presented:Is the CAFC's test for patentability under 35 U.S.C. §101, as defined in Bilski, the "machine or transformation test" appropriate for determining patentability of a method of using pharmaceuticals and "medical activities"?
The contours of these sections of the Patent Act are discussed below. § 101 Patent eligibility under § 101 is traditionally understood as a “threshold” test: the first of multiple challenges to the sufficiency of a patented invention. See Bilski v. Kappos, 561 U.S. 593, 602, 130 S. Ct. 3218, 3225 (2010). Section 101 defines patent eligible subject matter as “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.”
"29 In particular, there is a persistent view that automation of existing processes is per se ineligible, as opposed to being simply obvious.30 On Monday I'll review the impact of AlicesStorm at the USPTO. ________________________________________ Footnotes:1134 S.Ct. 2347 (2014).2Bilski v. Kappos, 130 S.Ct. 3218 (2010).3Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289 (2012).4134 S. Ct. at 2355.
Opinion BelowWilmerHale filed an amicus brief in support of petitioner on behalf of Cisco Systems, Inc., et al.Mayo Collaborative Services (d/b/a Mayo Medical Laboratories) and Mayo Clinic Rochester v. Prometheus Laboratories, Inc., No. 09-490Question Presented:Whether 35 U.S.C. § 101 is satisfied by a patent claim that covers observed correlations between patient test results and patient health, so that the claim effectively preempts all uses of these naturally occurring correlations?Cert. petition filed on 10/22/09.Conference 1/22/10; cert. petition granted on 6/29/10; judgment vacated and case remanded for further consideration in light of Bilski v. Kappos, 561 U.S. __ (2010).Classen Immunotherapies, Inc.,v. Biogen Idec, Glaxosmithkline and Merck & Co, Inc., No. 08-1509Question Presented:Is the CAFC's test for patentability under 35 U.S.C. §101, as defined in Bilski, the "machine or transformation test" appropriate for determining patentability of a method of using pharmaceuticals and "medical activities"?
Diamond v. Diehr, 450 U. S. 175 (1981). The Supreme Court interfered little with the software subject matter eligibility question for nearly three decades afterward, during which the Federal Circuit became increasingly lenient in allowing software patents before slowly beginning to pull back in the late 2000s.2010-2014: The Supreme Court adds “Significantly More” to the Analysis with Alice The Supreme Court finally returned its attention to the “abstract idea” question by affirming its importance in a narrow 2010 ruling rejecting a patent application directed to hedging energy investment risks, Bilski v. Kappos, 561 U.S. 593 (2010). In 2014, the Supreme Court modified the “abstract idea” subject matter eligibility rule by asserting that an abstract idea could, in fact, be patentable, so long as the patent application in question claims “significantly more” than the abstract idea, which the Court decided was not present in several patent applications directed to formulation and trading of risk management contracts.