GENETIC TECHNOLOGIES LIMITED v. MERIAL L.L.C. (Fed. Cir. 2016) (P) – Combining conventional implementation of a law of nature with a mental process step is not patent eligible

by Steve Driskill | Apr 8, 2016 | [sub] biotech, Subject Matter Eligibility

Diagnostic and therapeutic method claims that combine routine and conventional physical implementation of a law of nature with a simple mental process step are not patent eligible. Here, for example, analyzing non-coding regions of a person’s genome to detect coding...

ARIOSA DIAGNOSTICS, INC v. SEQUENOM, INC. (Fed. Cir. 2015) (P) – The process steps themselves must be new and useful when encompassing a natural phenomenon

by Steve Driskill | Jun 12, 2015 | [sub] biotech, Subject Matter Eligibility

For process claims that encompass natural phenomenon, the process steps themselves are the additional features that must be new and useful. Here, for example, using a newly discovered source of cell-free fetal DNA (“cffDNA”) to conduct fetal screening was found to be...

UNIVERSITY OF UTAH RESEARCH v. AMBRY GENETICS CORPORATION (Fed. Cir. 2014) (P) – Identifying conventional techniques for performing an abstract idea is insufficient for patent-eligibility

by Steve Driskill | Dec 17, 2014 | [sub] biotech, Subject Matter Eligibility

Identifying the techniques to be used in performing an abstract idea is insufficient to render a claim patent-eligible when those techniques are well-understood, routine, and conventional techniques. Here, for example, spelling out how to compare gene sequences using...

IN RE ROSLIN INSTITUTE (EDINBURGH) (Fed. Cir. 2014) (P) – Patent eligibility of cloned animals

by Steve Driskill | May 8, 2014 | [sub] biotech, Subject Matter Eligibility

In general, “clones” which are identical genetic copies of a cell, cell part, or organism are nonstatutory subject matter under 35 U.S.C. § 101, unless the claims “describe clones that have markedly different characteristics from the donor animals of which they are...

ASSOCIATION FOR MOLECULAR PATHOLOGY v. MYRIAD GENETICS, INC. (S. Ct. 2013) (P) – Patent eligibility of isolated genes

by Steve Driskill | Jun 13, 2013 | [sub] biotech, Subject Matter Eligibility

A naturally occurring DNA segment is a product of nature and not patent eligible merely because it has been isolated. On the other hand, cDNA is patent eligible because it is not naturally occurring. Background / Facts: The patents here are directed to human genes now...

IN RE DITTO (Fed. Cir. 2012) (NP) – Patenting animals

by Steve Driskill | Dec 7, 2012 | [sub] biotech, Subject Matter Eligibility

The only thing to note here is probably just fact that the court decided to evade the question of subject matter eligibility under 35 U.S.C. § 101, deciding the case on other grounds as it has suggested doing in other instances when possible. Background / Facts: The...