Recent Developments Concerning Patent-Eligible Subject Matter Yale University September 11, 2014

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Recent Developments Concerning

Patent-Eligible Subject Matter

Yale UniversitySeptember 11, 2014

Down the Rabbit Hole…..

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Supreme Court IP Cases Mayo v. Prometheus

Aereo

Alice

Nautilus

Limelight

Octane

Pom Wonderful

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© 2014 Wolf, Greenfield & Sacks, P.C. All rights reserved. 3


Economics Industries that directly rely on patents and

trademarks support about 40 million jobs - about 25% of all jobs in the U.S.

These industries account for approximately $5 trillion – about 35% of the U.S. GDP

AUTM Licensing Activity Survey 2013

University and Non-Profit Patent Licensing Impact

1996-2010 as much as:

$388 billion on U.S. gross domestic product

$836 billion on U.S. gross industrial output*

*Biotechnology Industry Organization

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35 U.S. Code § 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.

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Judicially Created Exceptions

Laws of Nature/Scientific Discoveries Applied Force equals the mass of an object

multiplied by its acceleration

Energy content of an object equals its mass multiplied by the square of the speed of light

Levels of drug metabolites in human body

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Judicially Created Exceptions (Con’t.)

Abstract Ideas/Formulas Mathematical Equations -

Preexisting, Fundamental Truths - Pythagorean Theorem

Natural Phenomena Lightning Gravity

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Question Presented

Whether claims to computer-implemented inventions—including claims to systems and machines, processes, and items of manufacture—are directed to patent-eligible subject matter within the meaning of 35 U.S.C. § 101 as interpreted by this Court.

Focus on computer-implemented scheme but decision applies across technologies.

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Alice v. CLS – “Technology” Computer-implemented scheme for mitigating

settlement risk. Third party intermediary maintains “shadow credit

record” and “shadow debit record” for each transacting party.

For each proposed transaction, third party checks if any party would end up owing more than being owed.

AssetsLiabilities

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Technology in Prometheus Patent Use of thiopurine drugs to treat an immune-mediated GI

disorder claim: A method of optimizing therapeutic efficacy for treatment of an

immune-mediated GI disorder, comprising:

a) administering a drug providing 6-thioguanine to a

subject. . . .,

and

b) determining the level of 6-thioguanine in said subject . . . .,

wherein the level of 6-thioguanine less than about 230

pmol 8x108 RBCs indicates a need to increase . . .

and

wherein the level of 6-thioguanine greater than about

400 pmol 8x108 RBCs indicates a need to decrease . . . .


Issue before U.S. Supreme Court Do the claims do significantly more than

simply describe the natural relations in which thiopurine compounds are metabolized by the body?

Conclusion: “steps are not sufficient to transform unpatentable natural correlations into patentable applications of those regularities”

A patent cannot “simply recite a law of nature and then add the instruction apply the law.”


Mayo Framework applies to all judicial exceptions.1) Is invention directed to law of nature, natural

phenomena, or abstract idea?

2) If so, search for an “inventive concept” that ensures the claim amounts to “significantly more” than the law of nature, natural phenomena, or abstract idea itself.

Mayo Framework applies to all claim types.

Supreme Court Two-Part Test to Determine Subject-Matter Eligibility

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Step One

Is the invention Directed to a Judicial Exception? Law of Nature Natural Phenomenon Abstract Ideas

Claims are Directed to the Concept of “Intermediated Settlement”

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Step One (Con’t.)

Intermediated Settlement is a Fundamental Economic Concept “long prevalent in our system of commerce” “building blocks of the modern economy” “taught in any introductory finance class”

“long standing economic practice”

Fundamental Economic Concepts can be Abstract Ideas

So, YES!

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Step Two

Is there “inventive concept” that amounts to “significantly more” than the judicial exception? More than mere conventional activity Can be either a new element or a combination of

old elements

Insufficient Generic computer Implementation (Alice)

Well-understood, routine, conventional activities

Limiting use to particular technological environment

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Step Two (Con’t.)

Possibly Sufficient Improving existing technological process Improving another technology or technical field Improving the functioning of computer itself

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What Alice v. CLS Tells Us

The abstract idea exception is broader than mathematical formulas and preexisting, fundamental truths

No categorical exclusion of business methods.

Concurrence: Sotomeyor, Ginsburg, Breyer would have created business method exception.

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Abstract Idea

Preexisting, Fundamental Truths

Mathematical Algorithms/Formulas

Fundamental Economic Practice

Methods of Organizing Human Activities

What is an Abstract Idea?

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What Alice v. CLS Does Not Tells Us:

“In any event, we need not labor to delimit the precise contours of the ‘abstract idea’ category in this case.”

What standards of novelty and non-obviousness for 101 purposes? Same as 102 and 103?

Since the abstract idea is considered known, is this like a 103 rejection without a reference?

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USSN: 13/193,421, allowed 12/2013 1. A method of diagnosing, aiding in diagnosing or

predicting risk of developing early onset neonatal sepsis (EONS) in a newborn subject, comprising: (a) determining if switching of an Hp 0-0 phenotype to an Hp 1-1, an Hp 2-2 or an Hp 1-2 phenotype has occurred in the newborn subject;

and (b) diagnosing or aiding in diagnosing the newborn subject as having EONS, or predicting that the newborn subject is at increased risk of developing EONS, if switching of an Hp 0-0 phenotype to an Hp 1-1, an Hp 2-2 or Hp 1-2 phenotype has occurred.

Canceled: 36. (New) A method of diagnosing, aiding in diagnosing or

predicting risk of developing early onset neonatal sepsis (EONS) in a newborn subject, comprising:


USSN: 13/193,421, allowed 12/2013 (cont’d)

(a) detecting haptoglobulin and haptoglobulin-related protein (Hp&HpRP) immunoreactivity in a biological sample of the newborn subject; and

(b) diagnosing or aiding in diagnosing the newborn subject as having EONS, or predicting that the newborn subject is at increased risk of developing EONS, if Hp&HpRP immunoreactivity is detected in the biological sample.


USSN: 13/131,787, recently allowed

1. An agent comprising

i) a first peptide comprising the amino acid sequence of SEQ ID NO: 13,

ii) a second peptide comprising the amino acid sequence of SEQ ID NO: 14, and

iii) a third peptide comprising the amino acid sequence of SEQ ID NO: 16.

Recent Developments Concerning Patent-Eligible Subject Matter Yale University September 11, 2014

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party intermediary

transacting party

party checks

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patent licensing impact

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