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BPLA Case Law Committee Meeting
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12 pm - 12:15 pm: Arrival and networking 12:15 pm - 1:15 pm: Case discussion

5/5/2017
When: 12 PM - 1:15 PM
Where: WilmerHale
60 State Street
Boston, Massachusetts  02109
United States
Contact: James Lampert, Co-Chair


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Friday, May 5, 2017

 

12 pm to 1:15 pm

 

BPLA IP Case Law Meeting

 

Discussion Leader: David Chavous

 

Laws of Nature and Section 101: What is an Applicant, or a Patentee, Supposed to Do?

 

(Click for case law)


Our discussion this time will focus on the CAFC’s opinions in Genetic Technologies v. MERIAL and Rapid Litigation v. Cellzdirect. The Genetics decision reviews the Supreme Court’s ruling in Mayo and Ariosa, concluding that the patentee’s argument that its claims were patent-eligible because they were “useful” “ha[d] no basis in case law or logic.” Rapid Litigation held that claims “simply not directed to the ability of hepatocytes to survive multiple freeze-thaw cycles” passed Alice’s step 1 because they recited “a new and useful laboratory technique” for “producing a desired preparation of multi-cryopreserved hepatocytes.” Here the CAFC also said that the claims would also pass step 2, even though the individual claimed steps were well known, because the method was “new and useful.”

These dichotomies in approach and result are equally striking in the PTO. Attendees unfamiliar with the PTO’s current practice may want to review the examples in the May 2016 Guidance. Also of note is that two recent PTAB cases, Ex parte Chamberlain (2017) and Ex parte Atwood (2016) refused to follow the PTO’s own Guidance. 

Where does this leave an Applicant who must obtain claims that will be valid for 20 years? And particularly before the Federal Circuit, does satisfying 35 USC 103 also satisfy Step 2 of Alice/Mayo, or is “unobvious” different from “something more”?

 

WilmerHale

60 State Street

Boston, MA 02109

 

Committee Co-Chairs

James Lampert, WilmerHale, Retired

Yvonne Lee, WilmerHale

N. Scott Pierce, Hamilton Brook Smith Reynolds

Valarie Rosen, Cabot Corporation
David Thibodeau, Cesari and McKenna

Boston Patent Law Association
One Batterymarch Park, Suite 101
Quincy, MA 02169
Phone: 617.507.5570

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