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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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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 . . . .
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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.”
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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:
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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.
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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.