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Patent Law Attack Outline

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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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