Patent Law Attack Outline

Patent Law Attack Outline

Fall 2015

University of Virginia – Prof. John Duffy

Formalities

• Claims

  • Preamble

  • Transition: open, closed, or in between

  • The Body

    • Three Formal Requirements for Claim Drafting

      • (1) Single Sentence

      • (2) No Freestanding Elements

      • (3) Antecedent Basis

    • Independent & Dependent Claims (multiple-dependent claims, combination claims)

    • Means-Plus-Function Elements (112(f))

    • Jepson Claims

    • Negative Limitations: must have adequate support w/reason to exclude (Sontarus)

• Specification

• Drawings

Patent Eligible Subject Matter

• 35 U.S.C. § 101: Inventions patentable. Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.

  • Broadly interpreted (includes “anything under the sun that is made by man” Chakrabarty quoting S. Rep., dicta), but subject to two types of exclusions

    • General Exclusions: principles of nature, natural products, physical phenomena, abstract ideas

    • Field Restrictions: specific legislative exclusions from patentability (e.g. some nations exclude surgical methods or business methods)

• Naturally Occurring Things: Living Things & Natural Phenomena

  • There is no per se rule against patenting living things (Chakrabarty)

  • Current Two Step Process: (From Alice, applied in Ariosa Diagnostics)

    • (1) Are the claims directed to a patent-ineligible subject matter? (but isn’t everything abstract or natural to some degree?)

      • Natural: DNA and blood samples (Ariosa)

      • Natural: Naturally occurring plasmids (Chakrabarty)

      • Natural: Level of compound in blood (Mayo)

      • Natural: Isolated DNA (Myriad)

      • Natural: Non-modified bacteria

      • Y/N Natural: Electrical signals (O’Reilly v. Morse & Telephone Cases)

      • N Natural: Synthetic non-naturally occurring cDNA (Myriad)

    • (2) If yes, do the claims recite additional elements that “transform the nature of the claim” into a patent eligible application

      • Two Parts:

        • (a) Look at each element alone - is it beyond the abstract idea and was it in the prior art?

        • (b) Look at the combination - does it add more over prior art? (Duffy thinks Ariosa missed this step)

      • N: Describe the natural relation (Mayo)

      • N: Simple Application of Discovered Phenom. !patentable (Funk Bros.)

      • N: Isolated natural thing (Myriad)

      • Maybe: Measurement method or actual dosage adjustment (see Mayo)

      • Y/N: Limited to structure beyond overly broad new principle (compare O’Reilly v. Morse to Telephone Cases)

      • Y: Genetic modification (Chakrabarty)

  • Case Overview:

    • Ariosa Diagnostics, Inc. v. Sequenom, Inc. (Fed. Cir. 2015, supplement) two step process for claims directed to ineligible SM (paternally inherited DNA from maternal blood)

    • Diamond v. Chakrabarty (1980) no formalistic or per se rule against living things (genetically modified microorganisms)

    • Mayo v. Prometheus (2012) - something more than describe natural relation (testing to indicate to change dose)

    • O’Reilly v. Morse (1853, p. 107) - Overly Broad New Principle (sending characters w/EM)

    • Telephone Cases (1888, p. 116) - Limitation to Contribution (electrical undulations carrying sounds)

    • Funk Bros. Seed Co. v. Kalo Inoculant Co. (1948) - Can’t Patent Conventional Application of Natural Phenomenon (combination of bacteria inoculant strains that found not to inhibit each other)

    • AMP v. Myriad (2013, supplement) naturally vs. randomly occurring (isolated DNA & cDNA to find breast cancer)

• Abstract Ideas:

  • Two step test (Alice v. CLS Bank)

    • Step 1: identify the abstract idea

      • If there is a combination of abstract idea, you may be able to stop the analysis as no case says this is unpatentable

      • See stuff above for natural phenom.

      • Abstract: Binary to decimal conversion (Benson)

      • Abstract: hedging process (Bilski)

      • Abstract: third party intermediary exchange (Alice)

      • Abstract: digitally implementation of method (Alice, Diehr, Bilski)

      • Abstract: electrical signals (Morse but see Benson)

    • Step 2: Go through the claim and look for “an element or combination of elements that is ‘sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.”

      • Two Parts:

        • (a) Look at each element alone - is it beyond the abstract idea and was it in the prior art?

        • (b) Look at the combination - does it add more over prior art?

          • E.g. Ariosa decided wrongly - each step was known but many think the combination itself was enough

      • Enough:

        • Digital implementation of method connected to machine for process (Diehr)

          • Best case for software patents

        • Bell telephone

      • Not Enough:

        • Digitally implementation of method (Alice, Bilski)

        • Convert binary to decimal (shift register or not) (Benson)

  • Case Overview:

    • Alice v. CLS Bank (2014) - Two Step Test (computer implemented third party intermediary for exchange of obligations)

    • Bilsky v. Kappos (2010) - no per se bar on bus. methods, MOT doesn’t control (market hedging process)

    • Gottschalk v. Benson (1972, p. 123) cannot essentially cover idea/formula (method of converting binary into decimals)

    • Diamond v. Diehr (1981, p. 133) - best case for software eligibility (operating rubber press with computer)

    • See also Telephone Case and Morse

• Field Restrictions: TRIPS (fields of tech.), comparison with other countries, Medical Procedures

Utility: § 101 and § 112

• Operability: generally only made for incredible inventions

  • Concerned with as of filing

  • Presumptively operable

  • See also enablement: speculation and prophecy

• Beneficial Utility: (see also patent eligible SM)

  • Thing of the past (Lowell v. Lewis)

  • Deception is likely OK (Juicy Whip)

  • Illegal things are not per se non-beneficial - we must be against them as a nation

• Practical/Specific Utility: must be substantial and identified in the patent

  • Concerned with as of date of invention (can’t discover it later), see Brenner, Fisher

    • Concern = Blocking Patents for things that...

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