Patent Law. Claim Construction. U. S. District Court for the District of Massachusetts Finds Conflict on Federal Circuit and Holds That Product-by-Process Claims Are Not Limited by Their Process Steps. Trustees of Columbia University v. Roche Diagnostics GmbH, 126 F. Supp. 2d 16 (D. Mass. 2000)

2002 ◽  
Vol 115 (3) ◽  
pp. 923 ◽  
Keyword(s):  
Patent Law ◽  
District Court ◽  
Columbia University ◽  
Roche Diagnostics Gmbh ◽  
Federal Circuit ◽  
Roche Diagnostics

scholarly journals Life After Bilski

2016 ◽  
Author(s):  
Mark Lemley
Keyword(s):  
Supreme Court ◽  
Real World ◽  
Subject Matter ◽  
Case Law ◽  
Patent Law ◽  
District Courts ◽  
The Supreme Court ◽  
Federal Circuit ◽  
Abstract Ideas ◽  
New Applications

In Bilski v. Kappos, the Supreme Court declined calls to categoricallyexclude business methods - or any technology - from the patent law. It alsorejected as the sole test of subject matter eligibility the FederalCircuit’s deeply-flawed "machine or transformation" test, under which noprocess is patentable unless it is tied to a particular machine ortransforms an article to another state or thing. Subsequent developmentsthreaten to undo that holding, however. Relying on the Court’s descriptionof the Federal Circuit test as a "useful and important clue', the U.S.Patent and Trademark Office, patent litigants, and district courts have allcontinued to rely on the machine-or-transformation test in the wake ofBilski: no longer as the sole rule, but as a presumptive starting pointthat threatens to effectively become mandatory. In this Article, we suggesta new way to understand the exclusion of abstract ideas from patentablesubject matter. No class of invention is inherently too abstract forpatenting. Rather, the rule against patenting abstract ideas is an effortto prevent inventors from claiming their ideas too broadly. By requiringthat patent claims be limited to a specific set of practical applicationsof an idea, the abstract ideas doctrine both makes the scope of theresulting patent clearer and leaves room for subsequent inventors toimprove upon - and patent new applications of - the same basic principle.Recasting the abstract ideas doctrine as an overclaiming test eliminatesthe constraints of the artificial machine-or-transformation test, as wellas the pointless effort to fit inventions into permissible or impermissiblecategories. It also helps understand some otherwise-inexplicabledistinctions in the case law. Testing for overclaiming allows courts tofocus on what really matters: whether the scope of the patentee's claimsare commensurate with the invention’s practical, real-world contribution.This inquiry, we suggest, is the touchstone of the abstract ideas analysis,and the way out of the post-Bilski confusion.

scholarly journals Point of Novelty

2016 ◽  
Author(s):  
Mark Lemley
Keyword(s):  
United States ◽  
The United States ◽  
Patent Law ◽  
The Novel ◽  
New Ideas ◽  
Federal Circuit ◽  
Fundamental Requirement

We award patents to inventors because we hope to encourage new ideas. Forthis reason, the fundamental requirement for getting a patent is that youhave invented something new.It is curious, then, that patent law itself purports to pay no attention towhich aspects of a patentee’s invention are in fact new. A patentedinvention is legally defined by its claims – written definitions of theinvention. And those written definitions virtually never call out what itis that is new about the patentee’s invention.Even if the parties do identify the novel element of an invention, the lawpurports not to care. Long-standing patent law doctrine has decried anyfocus on the “point of novelty” of an invention. The United States Court ofAppeals for the Federal Circuit evaluates the claim as a whole, not justthe piece of the claim that the patentee actually added to the storehouseof knowledge. As the court frequently puts it, “there is no legallyrecognizable . . . ‘gist’ or ‘heart’ of the invention.”It turns out, however, to be hard to sustain a rule that a law concernedwith novelty will pay no attention to the point of novelty. And sopoint-of-novelty issues crop up in a number of different doctrines inpatent law, from figuring out who counts as an inventor to whether theinventor has disclosed the “best mode” of practicing the invention to whenthe sale of a product exhausts the patentee’s rights in the patent. Courtsare inconsistent in whether and how they consider the point of novelty inthese doctrines and more. But when the Federal Circuit presented with aquestion in point-of-novelty terms, it most often falls back on the mantrathat there is no point of novelty to an invention, even if it meansdiscarding long-standing precedent.It’s time to rethink the no-point-of-novelty doctrine in patent law. Iargue that ignoring what is novel about patentee’s invention makes littlesense as an across-the-board matter, and leads to a variety of harmfulconsequences. While refusing to focus on the point of novelty serves somevaluable purposes, there are other ways to achieve those ends. And in theend, a patent regime that pays attention to what the patentee actuallyinvented, not what the patent lawyer wrote down, is more likely to achievethe goal of promoting innovation.

scholarly journals Is Patent Law Technology-Specific?

2016 ◽  
Author(s):  
Mark Lemley
Keyword(s):  
New Technologies ◽  
Computer Software ◽  
Patent Law ◽  
The Other ◽  
Legal Rules ◽  
Legal Standards ◽  
Structural Problems ◽  
Prior Art ◽  
Federal Circuit ◽  
Written Description

Patent law has a general set of legal rules to govern the validity andinfringement of patents in a wide variety of technologies. With a very fewexceptions, the statute does not distinguish between different technologiesin setting and applying legal standards. In theory, then, we have a unifiedpatent system that provides technology-neutral protection to all kinds oftechnologies.Of late, however, we have noticed an increasing divergence between therules themselves and the application of the rules to different industries.The best examples are biotechnology and computer software. In biotechnologycases, the Federal Circuit has bent over backwards to find biotechnologicalinventions nonobvious, even if the prior art demonstrates a clear plan forproducing the invention. On the other hand, the court has imposed stringentenablement and written description requirements on biotechnology patentsthat do not show up in other disciplines. In computer software cases, thesituation is reversed. The Federal Circuit has essentially excused softwareinventions from compliance with the enablement and best mode requirements,but has done so in a way that raises serious questions about howstringently it will read the nonobviousness requirements. As a practicalmatter, it appears that while patent law is technology-neutral in theory,it is technology-specific in application.The paper explains how the application of the same general legal standardscan lead to such different results in diverse industries. Much of thevariance in patent standards is attributable to the use of a legalconstruct, the "person having ordinary skill in the art" (PHOSITA), todetermine obviousness and enablement. The more skill those in the art have,the less information an applicant has to disclose in order to meet theenablement requirement - but the harder it is to meet the nonobviousnessrequirement. The level of skill in the art affects not just patentvalidity, but also patent scope.We do not challenge the idea that the standards in each industry shouldvary with the level of skill in that industry. We think the use of thePHOSITA provides needed flexibility for patent law, permitting it to adaptto new technologies without losing its essential character. We fear,however, that the Federal Circuit has not applied that standard properly ineither the biotechnology or computer software fields. The court has aperception of both fields that was set in earlier cases but which does notreflect the modern realities of either industry. The changes in an industryover time present significant structural problems for patent law, bothbecause law is necessarily backward-looking and precedent-bound and becauseapplying different standards to similar inventions raises concerns abouthorizontal equity. Nonetheless, we believe the courts must take more carethan they currently do to ensure that their assessments of patent validityare rooted in understandings of the technology that were accurate at thetime the invention was made.

scholarly journals What is the "Invention"?

2018 ◽  
Author(s):  
Christopher A Cotropia
Keyword(s):  
Supreme Court ◽  
Patent Law ◽  
Single Sentence ◽  
Natural Reaction ◽  
The Supreme Court ◽  
Federal Circuit ◽  
Written Description

Patent law is in flux, with recent disputes and changes in doctrine fueled by increased attention from the Supreme Court and en banc activity by the Federal Circuit. The natural reaction is to analyze each doctrinal area involved on its own. Upon a closer look, however, many patent cases concern a single, fundamental dispute. Conflicts in opinions on such issues as claim interpretation methodology and the written description requirement are really disagreements over which "invention" the courts should be considering. There are two concepts of invention currently in play in patent decisions. The first is an "external invention" definition, in which courts define the invention by the detailed technology discussion in the patent specification's descriptions and drawings. Other decisions invoke a "claim-centered invention" definition, which relies almost exclusively on the claim, a single sentence at the end of the patent. Judging these two definitions against common patent theories can help to determine which best fits the theories'narratives.T his Article concludes that the external invention is more favorable because it grounds exclusivity in what the inventor has actually done or plans to do and, accordingly, is more likely to comport with common patent theories.

Conference Report—U.S. & German Bench and Bar Gathering: “A New Bridge Across the Atlantic”: The Future of American Patent Litigation

2013 ◽  
Vol 14 (1) ◽  
pp. 269-278
Author(s):  
David A. Hurst
Keyword(s):  
United States ◽  
Conference Report ◽  
The United States ◽  
Patent Law ◽  
Washington Dc ◽  
Patent Litigation ◽  
Current State ◽  
Federal Circuit ◽  
Bar Association ◽  
The U.S

The U.S. & German Bench and Bar Gathering, “A New Bridge Across the Atlantic,” held in Washington, DC, in May 2012, was aptly timed to discuss the developments in German and American patent law. The Federal Circuit Bar Association and the Patentanwaltskammer (German Patent Lawyers Association) brought distinguished judges and attorneys from their respective countries to discuss the current state of the two patent systems. This involved consideration of where the two systems might be converging and why the two countries have had dissimilar litigation patterns. Particularly with respect to the latter of these inquiries, much of the debate throughout the conference focused on the differences in litigation discovery and procedural rules. The conference highlighted the fact that, at the most fundamental level, these differences are a product of differing perceptions of how justice should be administered. A brief overview comparing patent litigation in Germany and the United States will help frame this report.

scholarly journals If You Can't Beat 'Em, Join 'Em? How Sitting by Designation Affects Judicial Behavior

2016 ◽  
Author(s):  
Mark Lemley
Keyword(s):  
Judicial Behavior ◽  
Reversal Rate ◽  
District Court ◽  
Court Judge ◽  
Prior Patent ◽  
Federal Circuit ◽  
Do So

Judges, lawyers, and scholars have long decried the high reversal ratedistrict judges face in patent cases. Many have suggested greater districtcourt specialization as a solution, and Congress in 2011 enactedlegislation to promote such specialization. In this paper, we investigatethe impact of a novel measure of experience – whether a district courtjudge has sat by designation on a Federal Circuit panel in a patent claimconstruction appeal – on the likelihood a district judge’s subsequent claimconstructions are reversed. Before sitting by designation, judges who laterdo so actually have a slightly higher claim construction reversal rate thanjudges who never do so. After sitting by designation, the reversal rate ofdistrict court judges on subsequent claim construction appeals decreases by50 percent. This decrease is not fully explained by other measures ofexperience, including the number of prior patent cases or years on thebench. Nor is it fully explained by the timing of the appeal, theparticular district court judge or various other characteristics of thepatents, the parties and the litigation. Our results suggest a simple wayto reduce the reversal rate in patent and perhaps other sorts of cases.However, our evidence suggests this increased agreement is due to increasedFederal Circuit trust in the decisions of individual judges who have sat bydesignation and not increased district judge understanding of claimconstruction.

scholarly journals CODING FOR LIFE - SHOULD ANY ENTITY HAVE THE EXCLUSIVE RIGHT TO USE AND SELL ISOLATED DNA?

2012 ◽  
Vol 12 ◽  
pp. 85-152
Author(s):  
Douglas L. Rogers
Keyword(s):  
Supreme Court ◽  
Subject Matter ◽  
Cancer Susceptibility ◽  
Physical Phenomenon ◽  
District Court ◽  
Free Access ◽  
Cancer Susceptibility Genes ◽  
Patentable Subject Matter ◽  
Federal Circuit ◽  
Physical Phenomena

Myriad Genetics, Inc. ("Myriad") obtained patents in the 1990s on two "isolated" human breast and ovarian cancer susceptibility genes ("BRCA").  Myriad did not list all the isolated sequences it claims to have a right to monopolize, but instead claims a patent on the physical phenomena itself  -- all DNA segments that code for the BRCA1 polypeptide, even the sequences Myriad has not identified and even those someone else in the future creates or isolates the sequences of through a method or methods not contemplated by Myriad. An impressive array of non-profit medical societies, doctors and patients sued to have the Myriad patents declared invalid.  In 2010, the District Court for the Southern District of New York held in Association for Molecular Pathology v. United States Patent and Trademark Office that the claimed product patents for isolated DNA segments constituted unpatentable subject matter under 35 U.S.C. §101.  On July 29, 2011, a divided panel of the Federal Circuit reversed the District Court and held that the isolated DNA segments constituted patentable subject matter.  Of the three member panel, Judge Lourie concluded that the isolated DNA was markedly different than the native DNA, so constituted patentable subject matter.  Although Judge Moore agreed that certain DNA segments constituted patentable subject matter, she believed that the longer isolated DNA segments probably did not constitute patentable subject matter.  However, primarily in light of the fact that the US Patent and Trademark Office has been granting patents for isolated DNA  for years, Judge Moore concurred in the judgment of Judge Lourie.  Judge Bryson concurred on one of the product claims  (for synthetic cDNA) but dissented on claims pertaining to the isolated DNA segments on the grounds that isolated DNA did not differ markedly from the native DNA and that the function of the isolated DNA was identical to the function of the native DNA.The Supreme Court stated that "Congress may not authorize the issuance of patents whose effects are to remove existent knowledge from the  public domain, or to restrict free access to materials already available."  This article argues that the Federal Circuit - not Congress - has done just that and has given Myriad a wall to restrict free access to materials that have literally been in humans for centuries.  The isolated DNA segments of claim 1 do exactly the same coding as do the native segments--nothing more; nothing less.  The segments of claim 1 do not act as primers or probes, so they do not have markedly different characteristics or utility than native DNA, which the Supreme Court has ruled courts must consider.  Moreover, the functioning of the sequence of the nucleotide bases is a physical phenomenon that Myriad has not created but has captured in its claim.  Judges Lourie and Moore disregarded Supreme Court precedent and the fundamental principle that physical phenomena are not patentable subject matter.

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