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Patent Law Attack Outline

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This is an extract of our Patent Law Attack document, which we sell as part of our Patent Law Outlines collection written by the top tier of University Of Virginia School Of Law students.

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Patent Law Attack Outline Fall 2015 University of Virginia - Prof. John Duffy Formalities
? Claims o Preamble o Transition: open, closed, or in between o 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. SS 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. o 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 o There is no per se rule against patenting living things (Chakrabarty) o 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) o 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: o 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) o 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

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