Presenting a live 90-minute webinar with interactive Q&A Biotech Patents and Section 101 Rejections: Meeting Patent Eligibility Requirements Leveraging Recent Decisions and USPTO Guidance to Overcome Rejections THURSDAY, JUNE 8, 2017 1pm Eastern | 12pm Central | 11am Mountain | 10am Pacific Today’s faculty features: Denise M. Kettelberger , Ph.D., Boston Katherine M. Kowalchyk, Ph.D., Partner, Merchant & Gould , Minneapolis The audio portion of the conference may be accessed via the telephone or by using your computer's speakers. Please refer to the instructions emailed to registrants for additional information. If you have any questions, please contact Customer Service at 1-800-926-7926 ext. 10 .
Tips for Optimal Quality FOR LIVE EVENT ONLY Sound Quality If you are listening via your computer speakers, please note that the quality of your sound will vary depending on the speed and quality of your internet connection. If the sound quality is not satisfactory, you may listen via the phone: dial 1-866-819-0113 and enter your PIN when prompted. Otherwise, please send us a chat or e-mail sound@straffordpub.com immediately so we can address the problem. If you dialed in and have any difficulties during the call, press *0 for assistance. Viewing Quality To maximize your screen, press the F11 key on your keyboard. To exit full screen, press the F11 key again.
Continuing Education Credits FOR LIVE EVENT ONLY In order for us to process your continuing education credit, you must confirm your participation in this webinar by completing and submitting the Attendance Affirmation/Evaluation after the webinar. A link to the Attendance Affirmation/Evaluation will be in the thank you email that you will receive immediately following the program. For additional information about continuing education, call us at 1-800-926-7926 ext. 35.
2017 7 PATE TENT T EL ELIG IGIBILIT IBILITY IS THE TIDE CHANGING? JUNE 8, 2017 Denise M. Kettelberger, PhD, JD Patter erso son n Thuente Peder ersen, sen, PA Minneapolis, MN
RECENT DECISIONS QUESTION ALICE & MAYO 2-STEP TEST 5
Alice/Mayo Statistics - Ineligible ■ More than 16,000 claims invalidated ■ 68% of Federal Court Decisions ineligible ■ 92% of Federal Circuit Decisions ineligible ■ 61% of District Court Decisions ineligible ■ 60% of US Patents invalidated ■ 63% decided by motion on pleadings ■ 85% of CBM institutions ■ 98% of CBM final decisions ■ 43% of PGR decisions Bilski Blog, Robert Sachs ■ 36% of ITC decisions 6
Supreme Court Decisions Applying the Alice/Mayo 2-step Test - Deficient ■ Lacks an objective standar dard d for judging patent-eligibility, ■ Fails to define ne key terms s of the Alice/Mayo test, such as “abstract idea” and “something more”, other than by analogy to patents in prior cases; ■ Fails to provide meaningful ngful and logical guidance nce for how to reach patent- eligibility,” especially for systems/methods involving these so -called “business methods”; ■ Provides conflicti cting ng patent-eligibil gibility y standa ndards ds with respect to their own precedents, particularly of Diamond d v. Diehr and Diamond d v. Chakrabarty ; ■ Ignores Congressional intent by overreac aching hing its s consti tituti utiona nal authority rity to interpret (not make) law, including asserting “policy” considerations to support the two-part Alice test that are the province of Congress (not the Supreme Court). ■ Providing no suppo port t in the fa factual al record d before it; and ■ Focuses on an “inventive concept,” improperly comingling ng patent nt-eli eligibil gibility ty under 35 U.S.C. § 101 with patenta ntability y under 35 U.S.C. § 102 and/or 35 U.S.C. § 103. 7
Can the Federal Circuit Stem the Tide? ■ Enfish LLC v. Microsoft Corp ■ TLI Communications LLC v. AV Automotive LLC ■ Rapid pid Litigati ation n Managem gement ent v. Cellz Direct ■ Sequenom quenom v. Ariosa sa ■ McRO, Inc. v. Bandai Nanco Gaming, Inc. ■ Bascom Global Internet Services v. AT&T Mobility ■ Amdocs LTD v Opennet Telecom Inc ■ Thales v U.S. 8
Enf nfish ish v M v Microsof crosoft (822 F3 F3d d 1327,F 7,Fed d Cir 2016) ■ Model for a computer database – All data entries stored in a single, self-referential table with column definitions by rows – Conventional systems store data entries in multiple table – Benefit in faster searching, more effective storage, flexablility ■ CDCA on Summary Judgement, all claims ineligible under §101 – Innovative logical c laims held ineligible, anticipated, and non-infringed ■ Federal al Circuit it disagree reed: – Supreme Court did not foreclose the possibility that claims to improveme ment nts in computer existing architecture or software may survive Step 1 of the eligibility inquiry – All claims directed to improvements ments in computer technology, hardware or software, need not be analyzed under the Step 2 inquiry. 9
Rapid pid Litiga gation tion Mgm gmt v. Cellz Dire rect t (Fed (Fed Cir r 2016) 6) ■ …the "inventors certainly discovered ed the cells' ability to survive multiple freeze-thaw cycles ... that is not ot where they stopped, nor is it what they patented.“ ■ Instead, the inventors "employed their natural al discovery y to create a new and improved d way of preserving hepatocyte cells for later use." ■ The court held the claims eligible under the first step of the Mayo/Alice framework ■ the "directed ed to" analysis requires more than "merely identifying a patent-ineligible concept underlying the claim" and instead requires s an analysis sis of whether "the end result of the process, the essence of the whole was a patent-ineligible concept." ■ these claims that apply y a law of nature are distinguishable from the claims in Mayo and Sequenom that were found to be directed to a patent-ineligible concept when they "amounted to noth othing ing more than observing ng or identifying the ineligible concept itself 10
McR cRO, , In Inc. c. v. Ba Band ndai ai Namc mco o Ga Game mes s America Am ica In Inc. c. (Fed. d. Cir. 2016) ■ A method for automatically animati ting ng lip synchr chron oniza izati tion on and facial expression of three-dimensional characters using sets of rules ■ The claimed invention relates to generating automated lip- synchronization and associated facial expression for 3D animated characters. ■ The inventive rule sets aim to produce more realistic speech by taking into consideration the differences in mouth positions for similar phonemes based on context." ■ Federal Circuit: "the claimed med imp mprovem ement nt here is allowing computers to produce accurate and realistic lip synchronization and facial expressions in animated characters that previously could only be produced by human animators." ■ "[d]efendants provided no evidence that the proces ess previousl iously y us used d by animators is the same as the process required by the claims." ■ Judges Reyna, Taranto, and Stoll 11
Bascom Global Internet Services v. AT&T Mobility (Fed Cir 2016) ■ Method and system for content t filtering ing informatio mation n retrieved from an Internet computer network – the claimed invention is able to provide individually customizable filtering at the remote ISP server by taking advantage of the technical capability of certain communication networks. – no court – not the Supreme Court and not the Federal Circuit – has ever defined the term “ abstract idea ” or the term “ signific icantl antly y more .” – “The district court’s analysis in this case, however, looks similar to an obviousness analysis, explained Judge Chen ■ The inventiv tive concept …“is the installation of a filtering tool at a specific location, remote from the end-users, with customizable filtering features specific to each end user.” 12
Thales v. US (Fed Cir 2017) ■ Claims an inertial ial tracking king system for tracking the motion of an object relative to a moving reference frame ■ Small errors in measuring acceleration and angular velocity translate to large errors in position over time; Known inertial systems include at least one other type of sensor, to correct these errors; The disclosed system can operate independe ependent ntly ■ The equatio ions ns — dictated by the placement of the inertial sensors and application of laws of physics — serve only to tabulat ate the positio ion n and orientatio ation n informa matio tion n in this configuration. This arrangement is analogous to the claims in Diehr. ■ Far from claiming the equations themselves, the claims seek to protect only the application of physics to the unconventional configuration of sensors as disclosed. As such, these claims are not ot directed d to an abstrac act t idea and thus the claims survive Alice step one. Because we find the claims are not directed to an abstract idea, we need not proceed to step two 13
Recommend
More recommend
