IP Law Bulletin

Following close on the heels of last week’s controversial decision in Mayo Collaborative Services v. Prometheus Laboratories, the United States Supreme Court sent another hotly contested biotech case back down for further consideration by a lower federal court. In Association for Molecular Pathology v. Myriad Genetics, the Supreme Court granted certiorari to the parties in the Myriad case, vacated the decision of the Court of Appeals for the Federal Circuit, and then promptly remanded the case to the Federal Circuit for reconsideration in accordance with the Supreme Court’s March 20th decision in the Mayo case, which held that a diagnostic method claim that simply recites a law of nature is unpatentable subject matter under 35 U.S.C. §101.

On March 20, 2012, the United States Supreme Court unanimously reversed the Federal Circuit in a long-awaited decision that may have broad-reaching effects on diagnostic method patents, as well as personalized medicine patents. At issue in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. ___ (2012) was whether the correlation between blood levels and optimal dosages of a drug was a patentable process or an unpatentable law of nature. The Court held that Prometheus' claim, which had been twice upheld by the Federal Circuit, was an unpatentable law of nature.

A previous edition of Nutter’s IP Bulletin included an article analyzing U.S. post-grant review proceedings established by the Leahy-Smith America Invents Act (AIA) in view of European opposition proceedings. As a follow up, our readers may be interested in a cost comparison of the AIA’s post-grant review and European opposition proceedings recently presented by Director David Kappos on the USPTO’s website. Director Kappos indicates that the AIA’s post-grant review procedures are more costly than European opposition proceedings primarily because the AIA’s post-grant review procedures are more akin to litigation (e.g., conducted by patent judges, allow substantial discovery, and create estoppel) while European oppositions proceedings are akin to patent examination (e.g., conducted by examiners, no discovery, and no estoppel).

The Federal Circuit recently addressed the patentability of ranges. In ClearValue, Inc. v. Pearl River Polymers, Inc., decided on February 17, 2012, the court reversed a denial of Judgment as a Matter of Law (JMOL) seeking a ruling of anticipation and found the claimed invention, which recites a clarification process for “water of raw alkalinity less than or equal to 50 ppm” by using a blend of a high molecular weight polymer and an aluminum polymer, to be anticipated by a reference that disclosed the same blend for clarifying water of “up to 150 ppm.”

The United States Patent and Trademark Office (USPTO) recently implemented a new program that allows applicants to have Requests for Continued Examination (RCE) prioritized, thereby insuring their applications will be considered more quickly following the filing of a RCE. While this program will place applications on a faster track to further examination, and thus hopefully allowance, applicants should consider this new program as another tool in their toolbox for efficient and effective patent prosecution. In fact, because patent prosecution should be a collaborative effort between applicants and examiners, there are other tools applicants should consider using before paying the $4800 fee ($2400 for small entities) to essentially “force” examiners to pick-up their applications as prioritized RCE filings.

Industries employing goods that require reprocessing often face a quandary when attempting to enforce patents on goods that have been produced by the patent holder and are now in the marketplace: the patent exhaustion doctrine. The patent exhaustion doctrine is an old but developing body of law that, as stated by the Supreme Court in Quanta Computer, Inc. v. LG Electronics, Inc., generally expounds that “[t]he authorized sale of an article that substantially embodies a patent exhausts the patent holder’s rights and prevents the patent holder from invoking patent law to control post-sale use of the article.” In practice, this general prohibition takes on new challenges as patent holders become creative in enforcing their patent rights against those that reprocess, remanufacture, or refurbish their products. This creativity has particularly materialized in one industry – printer cartridges.

In Golan v. Holder (No. 10-545, January 18, 2012), the U.S. Supreme Court upheld § 514 of the Uruguay Round Agreements Act (URAA) which restored copyright protection to certain works of foreign authors that had previously been in the public domain. Users of foreign copyrighted works first published abroad between 1923 and 1989 will need to continue to assess their liability and decide whether they need to attempt to locate the owners of the restored copyrights.