On January 17, Research-and-Motion and NTP simultaneously filed opening briefs arguing opposite sides of the injunction issue. For its part, RIM gives a litany of reasons why the CAFC’s August 2005 decision should not result in an injunction:
A new trial is required on damages because the jury had improperly found that RIM infringed 7 of the 16 asserted claims.
The willfulness award should be set aside based on the CAFC’s decision and the intervening decision in Knorr-Bremse.
RIM’s products introduced since trial are “either non-infringing or contain many substantial non-infringing features.”
An implied license exists permitting RIM to continue providing services to customers of the handheld devices for which damages are awarded.
The “exceptional public interest in continued and uninterrupted availability of RIM’s BlackBerry system” and “the fact that NTP can be more than adequately compensated by royalty payments” indicate that a permanent injunction should not be issued.
According to RIM, all these factors should be considered in the backdrop of the fact that the PTO “will fully and finally reject all patent claims at issue in this case in a matter of weeks.”
On the other hand, NTP has argued that the scope and severity of RIM’s infringing conduct “is not affected by the CAFC’s modification of the total number of claims infringed.” As such, NTP requests its damages (increased because of RIM’s increased sales) and an injunction.
Unitherm Food Systems, Inc. v. Swift-Eckrich, Inc, —– U.S. —– (2006).
By Joshua Rich
The Supreme Court, in Unitherm Food Systems, Inc. v. Swift-Eckrich, Inc., continued its trend of requiring strict compliance with procedural litigation rules. The case arose out of Swift-Eckrich (which does business as ConAgra) sending out cease and desist letters that indicated that it intended to “aggressively protect all of [its] rights under” one of its patents. A recipient of the letter investigated the charge and determined that Unitherm, who was supplying the allegedly infringing process, had invented the patented process years before ConAgra had filed its patent application. Upon learning this, Unitherm sued ConAgra for a Walker Process antitrust violation, alleging that ConAgra had attempted to enforce a patent that was obtained through fraud on the Patent and Trademark Office.
The Supreme Court’s decision arose out of ConAgra’s motion practice at trial. Before the case was submitted to the jury, ConAgra moved for a directed verdict under Rule 50 of the Federal Rules of Civil Procedure, alleging that the evidence was insufficient to support a jury verdict against it. The judge denied the motion and the jury returned a verdict against ConAgra. After the jury verdict, ConAgra then neither renewed its Rule 50 motion to seek judgment as a matter of law nor filed a motion for new trial based on insufficiency of the evidence under Rule 59. On appeal, the question arose whether ConAgra could raise sufficiency of the evidence in light of its failure to renew the Rule 50 motion. The Federal Circuit found that it could (and reversed the jury verdict); the Supreme Court found that it could not.
Unquestionably, a district court cannot reverse a jury’s verdict in the absence of the renewal of a motion for directed verdict; the Supreme Court found that appellate courts similarly have no power to reverse the jury’s weighing of the evidence absent post-trial motions. Relying on three cases decided soon after World War II, the Court found that appellate courts do not have the power to apply the rules flexibly and consider the sufficiency of the evidence in the absence of a post-verdict motion. While some of the circuit courts had read some flexibility into Rule 50, the Court indicated that no flexibility was appropriate – without renewal of the Rule 50 motion, an appellate court cannot consider the sufficiency of the evidence.
While not specific to IP cases, the Unitherm case is important for IP cases because it forces the hand of litigators in such cases. Often, given page limitations and circumstances of trial, parties in IP cases are forced to choose which arguments to present to the trial court and which to drop. Now, it is clear that any arguments dropped from post-verdict motions will be off limits before the appellate courts. As a result of the Court’s decision, any party that thinks that there may be some chance it will want to raise sufficiency of the evidence on appeal will have to reserve space in its briefing papers to raise the argument. Similarly, trial counsel must pay special attention in the swirl of events after trial, as any deficiency in the post-trial briefing could drastically narrow the matters the appellate court can consider.
Note: Joshua Rich is a partner at MBHB LLP in Chicago where he litigates intellectual property cases. Mr. Rich has a background in biochemistry. However, he has handled patent cases in a variety of technology areas as well as trademark, copyright, trade secret, and contract issues.
The Supreme Court today refused to hear RIM’s BlackBerry appeal — another in a series of setbacks in RIM’s patent defense. The Court’s refusal to grant certiorari means that this case will quickly come to a head at the district court level. A hearing is now expected within the next few weeks to determine the scope of any eventual injunction that may be issued.
On a broader scale, the Federal Circuit’s decision opened the gate for patentees to assert their patents against “transnational” systems. In RIM’s case, the appellate court held that NTP’s patent’s could be infringed even though the BlackBerry maker’s routers and servers were located in Canada.
Wow. This is a great introduction to mediation in the patent world. I am a big believer in mediation for patent cases, especially when the amount of damages is less than $10 million. The book presents a five-step approach to mediation:
Deciding whether and when to mediate;
Selecting a mediator;
Pre-mediation planning;
Mediation sessions; and
Mediation outcome.
The book tip-toes lightly through each step and evaluates the potential decisions and their trade-offs.
You may be thinking $50 for 38 pages???? But didn’t you just send out a $11,000 check for drafting of a 20 page application that probably includes typos? Apparently, if you join CPR, you will receive a 40% discount.
The USPTO has announced a town-hall meeting to be held February 1, 2006, in Chicago, IL (at Northwestern Law School). The meeting will provide an opportunity to provide feedback on the PTO’s proposed changes to (1) limit the examination of claims dependent, and (2) stop allowing continuing applications, CIP’s, or , RCE’s except under limited circumstances. [Link: Sweeping Changes] According to the PTO:
The changes will make the patent examination process more effective and efficient by reducing the amount of rework by the USPTO and the time it takes for the patent review process. In addition they will improve the quality of issued patents and ensure that the USPTO continues to promote innovation.
Commissioner for Patents John Doll and PTO General Counsel James Toupin will provide an overview of the challenges the USPTO faces and the reasons why the proposed new rules are necessary. A question and answer session will follow immediately after their presentations.
The district court found that Stern should not be added as a co-inventor on Columbia’s patent directed toward the use of prostaglandins to treat glaucoma.
Stern, a medical student at the time of the invention conducted a number of experiments for Lazlo Bito (the named inventor). Stern’s experiments showed that a single topical application of prostaglandin reduced intraocular pressure in monkeys and cats, but did not prove whether that would prevent glaucoma. Bito later conducted further experiments and filed the application that led to the patent in question.
The district court found that the patent was directed at multiple doses of prostaglandin, and thus, that there was not any clear and convincing evidence that Stern had invented the invention as claimed. On appeal, the CAFC reviewed the summary judgment decision de novo.
Based on Stern’s experiments and Bito’s prior publications, the appellate panel agreed that “Stern did not have an understanding of the claimed invention, did not discover that prostaglandins have an effect on IOP, did not discover that repetitive application of prostaglandins to the eyes of primates can maintain reduced IOP, and did not conceive of the idea of the use of prostaglandins to reduce IOP in primates. Furthermore, there was no collaboration between Stern and Bito in developing a glaucoma treatment. Stern simply carried out an experiment previously done by Bito on different animals—animals that Bito had already determined would be good models for prostaglandins research. Stern’s contribution is insufficient to support a claim of co-inventorship.”
The court went on to hold that “unwitnessed laboratory notebooks on their own” are insufficient to support a claim of co-inventorship. In this case, the notebooks had been allegedly destroyed by Professor Bito.
IQPC has put together what looks to be a great conference on Patent Strategies to be held in New York at the end of March. [IQPC Website] [Conference Brochure]. Patently-O Blog Readers receive a 15% discount on registration with CODE: PC70. 800-882-8684 or visit www.iqpc.com/Legaliq.
Briefs for both sides are due January 17 regarding injunction and damages in the ongoing dispute over RIM’s BlackBerry technology. Responses will be due February 1. Today’s WSJ has an interesting article with a nice time-line of the saga. [Link].
WSJ Blog:
The Wall Street Journal has also picked up the blogging bug. Peter Lattman is lead writer for the WSJ Law Blog. [Link] Of late, Peter has jumped into a number of patent issues including:
The district court dismissed Aspex’s action against Miracle on the ground that neither Aspex nor co-plaintiff Contour Optik had standing to sue for infringement of Patent No. 6,109,747. Prior to initiating the infringement suit, Contour had transferred some rights to a licensee, Chic Optic. The question presented on appeal was whether the transfer of rights was (1) merely a license to the patent or (2) a transfer of all substantial ownership rights. If the transfer was merely a license, then the patentee, Counter, would retain the right to sue an infringer. However, if the transfer was for all substantial ownership rights, then the patentee would no longer have rights in enforcing the patent.
Under the agreement Chic was granted (1) the exclusive right to make, use, and sell in the United States products covered by the patent, (2) the first right to commence legal action against third parties for infringement of the patent and the right to retain any award of damages from actions initiated by Chic, and (3) a virtually unfettered right to sub-license all of its rights to a third party. However, under the agreement all of Chic’s rights ended as of March 2006, when the rights reverted to Contour. Contour also retained the right to commence infringement actions against third parties if Chic refused to do so.
On appeal, the Federal Circuit reviewed the question of standing de novo. “[A]t bottom, the question [of standing] is ‘who owns the patent’?” Here, the appellate court determined that, because the agreement had a term that was shorter than the life of the patent, that the licensee “never had all substantial rights to the patent, i.e., it never was the effective owner of the patent.”
The ’747 patent was never assigned; it was exclusively licensed for only a fixed period of years, which does not meet the all substantial rights standard. Thus, we hold that the Contour/Chic agreement was a license, not an assignment, and Contour was the owner of the patent when the complaint was filed and entitled to sue.
Last week, Phillips posted its opposition to AWH’s petition for certiorari in this landmark case focused on the question of whether patent claim construction should be reviewed de novo on appeal. [Link].
In “short and pithy” paper, AWH has now filed its reply with, inter alia, these points:
On three separate occasions, an en banc CAFC has ruled that claim construction is reviewed de novo. That issue is ripe for review.
This is an extremely important issue — one that garnered 23 amici briefs at the CAFC level. “The United States Patent and Trademark Office itself filed an amicus brief urging the Federal Circuit to apply some form of deferential review.”
The briefs may be circulated as early as next Tuesday.
The CAFC has again decided that it is not ready to sort-out questions of extraterritorial application of the U.S. patent laws. Here, the appellate body has rejected Shell’s bid for a rehearing en banc.
Dissenting from the opinion, Judges Lourie, Linn and Chief Judge Michel argued that the court should reconsider whether Section 271(f) of the Patent Act applied to process inventions.
In yet another challenge to claim scope, nCube argued that SeaChange’s patent improperly expanded the scope of the network architecture patent. Here, the claimed “upstream manager” was not expressly limited to working with either physical or logical memory. However, the specification, in describing the “present invention” only spoke of logical memory.
Here, the majority (Rader, J.) allowed a broad claim interpretation of upstream manager (including operations with physical memory) that was required to find infringement.
In dissent (Dyk, J.) would have held that the limited language of the specification limited the scope of protection — especially because the logical memory addressing was seen as a critical aspect of the invention.
1. AIPLA Mid-Winter Institute. Feel free to introduce yourself during next month’s meeting in La Quinta. I will be presenting the best of CAFC 2005 at the patent litigation committee meeting on Thursday afternoon.
2. SmithKline v. Apotex: The Supreme Court has asked the Solicitor General for views on whether to hear this case involving the question of inherent anticipation, whether the inherency must have been recognized by a PHOSITA, and when that recognition must have taken place. Link, Link.
Several years ago, in Dutch Industries Ltd. v. Canada [link], the Canadian Federal Court of Appeals ruled that an irrevocable loss of patent rights could result if, at any time, a government patent fee payment was erroneously made at the small entity rate.This decision resulted in the immediate lapse of numerous Canadian patents and patent applications
In response to this onerous decision, the Canadian Patent Act was recently revised to create a time-limited window to make catch-up fee payments in those Canadian patents and patent applications that irrevocably lapsed as a result of the Dutch Industries Ltd. decision. New section 78.6 of the Canadian Patent Act will come into force on February 1, 2006.The new section recognizes the legitimacy of previously made corrective “top up” fee payments.More importantly, the new section provides a one-time only twelve month window during which any incorrectly made small entity payment case be corrected by paying the difference between the relevant large and small entity fee at the relevant time.A corrective payment must be accompanied by information about (i) the day on which the underpayment was made; (ii) the service or proceeding in which the fee was paid; and (iii) the patent or application in which the fee was paid.
Practice Suggestion
A small entity in Canada is a corporation with 50 employees or less.This number is quite low.So it is quite possible that the change from small to large entity status in Canada might go unnoticed.Also the difference between large and small entity fees is generally quite small.Many Canadian Associates, therefore, recommend always paying the large entity fee regardless of the applicant’s status in order to avoid the possibility that a patent or application might irrevocably lapse as a result of paying the incorrect fee.
NOTE: This post comes from the files of Blair Hughes. Blair is a partner at MBHB LLP and has extensive experience in protecting patent rights, in both the U.S. and abroad.
From Sander Gelsing: As a result of Bill C-29, and to assist one in determining whether a corrective payment needs to be made, the Canadian patent office recently made Fee Payment Histories available through our patent database (see: http://www.gelsing.ca/blog/?p=128 ).
AWH has petitioned the Supreme Court to with the broad question of whether patent claim construction should be reviewed de novo on appeal.
Question Presented: Whether the Federal Circuit is correct in holding that all aspects of a district court’s patent claim construction may be reviewed de novo on appeal.
AWH’s petition picks up where Judge Mayer and Newman’s dissent left off in the en banc Phillips decision. In their dissent, the judges focused their attention on the “futility [and] absurdity” of the de novo rule.
Now more than ever I am convinced of the futility, indeed the absurdity, of this court’s persistence in adhering to the falsehood that claim construction is a matter of law devoid of any factual component. Because any attempt to fashion a coherent standard under this regime is pointless, as illustrated by our many failed attempts to do so, I dissent.
Indeed, many believe that the high reversal rate of claim construction is primarily due to the de novo standard. To that effect, AWH’s petition does not mince words:
Left to its own devices, the Federal Circuit will continue to improperly devote the chief measure of its energy to rejudging the facts of patent claim constructions, rather than to fulfilling its purpose of bringing uniformity to patent law.
Now Phillips has posted his opposition. Phillips argues that claim construction should be considered a matter of law and should continue to receive de novo review.
The construction of written instruments is one of those things that judges often do and are likely to do better than jurors unburdened by training in exegesis. Similarly, the Federal Circuit is uniquely equipped to make such determinations on appeal.
The main thrust of the Phillips argument, however, is that the case is not ripe for review because the CAFC did not rule on the issue of de novo review.
Book Review: I read the Generic Challenge in one evening. It is easy to read, anecdotal and short (100 pages). My favorite portions of the book were Chapter 2 (pharmaceutical patenting strategy) and Chapter 7 (drug life-cycle management). It is hard to believe that so much information and seasoned advice is packed into this little book.
Generic Challenge is not written as a reference for experts. Rather, the book is written as an introduction for readers who are new to the field and interested in the topic. Because patents are now so fundamental to the business of pharmaceuticals and biotechnology, I would recommend this book to virtually everyone working in those industries regardless of whether you will deal directly with patents.
Perricone v. Medicis Pharmaceutical (Fed. Cir. 2005)
This case involved two patents (the ‘693 and the ‘063) on treating skin damage or disorders–particularly sunburn–by the application of ascorbyl fatty acid ester (vitamin C in a fat soluble form). On summary judgment, the district court determined that the asserted claims of both patents were invalid due to anticipation and double-patenting. On appeal, the CAFC affirmed the district court’s decisions in all respects but one: according to the majority, the district court erred when it determined that four claims to methods of treating “skin sunburn” by the application of ascorbyl fatty acid ester were anticipated by a prior art patent (“Pereira”) disclosing ascorbyl fatty acid ester as “suitable for topical application to the skin or hair.” Judge Rader wrote the opinion for the court, which Judge Linn joined, while Judge Bryson dissented.
Claim 1 of the ‘693 patent is representative of the “skin sunburn” claims at issue:
A method for treating skin sunburn comprising topically applying to the skin sunburn a fatty acid ester of ascorbic acid effective to solubilize in the lipid-rich layers of the skin an amount effective to scavenge therefrom free radicals present as a result of transfer of energy to the skin from the ultraviolet radiation which produced said sunburn.
Pereira disclosed cosmetic compositions for topical application, including the recited ascorbic acid composition, and identified the compositions as “suitable for topical application to the skin or hair.” The district court determined that Pereira anticipated Perricone because “Pereira will inherently function in [the claimed beneficial manner] when topically applied to the skin.”
According to Judge Rader, however, “The issue is not, as the dissent and the district court imply, whether Pereira’s lotion if applied to skin sunburn would inherently treat that damage, but whether Pereira discloses the application of its composition to skin sunburn. It does not.” Judge Rader continued: “Claim 1 of the ‘693 patent recites a new use of the composition disclosed by Pereira, i.e., the treatment of skin sunburn. The district court’s inherent anticipation analysis for this claim contains a flaw. The disclosed use of Pereira’s lotion, i.e., topical application, does not suggest application of Pereira’s lotion to skin sunburn. In other words, the district court’s inherency analysis goes astray because it assumes what Pereira neither disclosed nor rendered inherent.”
Judge Rader’s majority opinion distinguished claim 8 of the ‘693 patent, directed to a method for “preventing sunburn damage,” from claim 1, finding it anticipated by Pereira. According to Judge Rader, claim 8 “merely requires application of the composition to exposed skin surfaces. Because all skin surfaces are susceptible to sunburn damage, and because one can only realistically apply a composition to a skin surface when that surface is exposed, Pereira’s ‘topical application’ encompasses the application step of claim 8.”
Judge Bryson dissented, writing, “In my view, the differences between the claims that the court invalidates and those that it holds not to be invalid do not justify a difference in outcome.” Judge Bryson explained: “The majority seems to attach significance to the notion that topical application of Pereira’s emulsion always prevents sunburn, because all skin is subject to sunburn, but that it does not always treat sunburn, because not all skin is sunburned and in need of treatment. That distinction, however, does not stand up: the fact that the sunburn treatment function is pertinent to only a subset of users of the Pereira method (i.e., those already suffering from sunburn) does not mean that Pereira does not anticipate the treatment claims.”
The key point, according to Judge Bryson, was that the mechanism underlying both the prevention and treatment of sunburn by ascorbyl fatty acid ester is the same. According to Judge Bryson, “topical application of the Pereira composition to normal skin inherently produces the same chemical processes that underlie the sunburn prevention claims, including scavenging free-oxygen-containing radicals and neutralizing other reactive oxidants. Topical application of the Pereira composition to sunburned skin inherently produces the same processes, which also underlie the sunburn treatment claims.” Accordingly, in Judge Bryson’s view, “[t]o hold that the treatment claims of the sunburn patent are not anticipated by Pereira is to permit an inventor to secure patent rights to an existing invention merely upon identifying an inherent benefit of the prior art that had not previously been specifically identified, but that falls within a broader class of benefits already identified in the prior art.”
NOTE: This case review was written by a patent attorney (not me) who wishes to remain anonymous.
LizardTech v. Earth Resource Mapping (Fed. Cir. 2005) (on request for rehearing).
Plaintiff LizardTech lost its case at the Federal Circuit because its written description was lacking.
The asserted patent was related to the use of discrete wavelet transform (DWT) to compress digital images. The specification provides an example method for creating a seamless DWT. One of the claims included a claim to seamless DWT without including all of the limitations of the example method.
In its original decision, the CAFC stated the rule that a claim will not be invalidated under Section 112 for only disclosing a single embodiment. However, the court went on to determine that the claim in question was improperly directed at “all seamless DWT’s” — a coverage not adequately supported by a single embodiment.
The CAFC has refused LizardTech’s request for rehearing, but has issued concurring and dissenting opinions.
Lourie, Michel, Newman: Disclosure containing only one embodiment will result in limiting the scope of the claims to cover only that embodiment.
[Claims] must be interepreted, in light of the written description, but not beyond it, because otherwise they would be interpreted to cover inventions or aspects of an invention that have not been disclosed. Claims are not necessarily limited to preferred embodiments, but, if there are no other embodiments, and no other disclosure, then they may be so limited. One does not receive entitlement to a period of exclusivity for what one has not disclosed to the public.
Rader, Gajarsa:
“This court’s written description jurisprudence has become opaque to the point of obscuring other areas of this court’s law.”
FieldTurf v. Sprinturf (Fed. Cir. 2005) (Newman, Schall and Dyke)
Offer to Sell: In a competitive bidding process, SportField (Sprinturf) submitted a bid to supply a school district with artificial turf that would allegedly infringe FieldTurf’s patents. Although the written bid specified an infringing product, SportField argued that it actually intended to supply its standard product that did not infringe (contrary to the written offer).
On appeal, the CAFC affirmed the lower court’s finding that the bid was not an infringing “offer to sell.” In its decision, the appellate panel cited three reasons for ignoring the explicit language of the bid:
The school officials were aware of differences between the products of the two companies;
The bid was never completed — “avoiding the accrual of damages for infringement;” and
California law states that a bid specifying a patented product can be satisfied with an equivalent but non-infringing product.
Standard Setting: The appellate panel revered the lower court’s finding that FieldTurf had improperly interfered with SportField’s business. This decision may be read to support businesses that push their patented products as “industry standards.”
Efforts of commercial entities to achieve specifications that favor their product are not illegal, absent fraud or deception.
This case involves a patented method of correlating a body protein level with a vitamin B deficiency. (U.S. Patent No. 4,940658). The claim in question (Claim 13) includes two steps: (1) assaying a body fluid for an elevated level of total homocysteine and (2) correlating an elevated level of total homocysteine with a folate deficiency. (paraphrased).
The patent holder won at trial and at the CAFC. The defendant, Metabolite, then brought its case to the Supreme Court arguing that the patent is invalid because it “claim[s] a monopoly over a basic scientific relationship used in medical treatment such that any doctor necessarily infringes the patent merely by thinking about the relationship after looking at a test result.”
Interestingly, the question presented is not firmly grounded in any particular rule of patent law. Rather, it implicitly raises issues of indefiniteness, enablement, written description, and patentable subject matter. (to name a few). However, the Supreme Court has given some indication that it is most interested in this case because of the issue it raises regarding the patenting of natural phenomena under Diehr.
LabCorp has filed its brief on the merits as have a number of third parties:
In Part I, Petitioner LabCorp’s stance is essentially that the law is correct, but that it has been misapplied in this case.
Claim 13 violates this Court’s longstanding rule barring patents on “laws of nature, natural phenomena, and abstract ideas.”
According to LabCorp, the claim involves “no actual invention beyond the scientific discovery it recites.” The claimed correlation is a scientific principle or law of nature, and its discovery alone cannot be patentable. The “trivial pre-solution” activity of assaying “cannot transform claim 13 into a patentable invention.” Here, Petitioner never strays far from the precedential pillars of Diehr, Chakrabarty, Funk Bros., and Flook.
In Part II, LabCorp goes on to argue that the claim is neither definite, enabled, nor adequately described. The Brief appears to ask the court to invalidate any claim that includes a “correlating” step unless the process of how to calculate a correlation is spelled out in the specification.
The Federal Circuit relied on the accepted dictionary definition of “correlate” as meaning “to establish a mutual or reciprocal relationship between.” But nothing recited in the claim or disclosed in the specification tells a practitioner how to actively “establish” a “relationship” between a particular test result and a vitamin deficiency. At most, the Patent discloses that such a scientific relationship
exists.
More is required for a valid claim. . . .
In the remaining sections of the Brief, Petitioner argues that, on policy grounds, a very broad claim hinders scientific and technological progress and that the lower court judgment should be reversed.
Solicitor General’s Amicus Brief for the U.S. GovernmentPDF (165 KB)
The Solicitor General with assistance from the PTO’s counsel has filed its brief that falls closely in line with its prior unsuccessful brief in opposition to the petition for certiorari.
In line with Petitioner, the Government agreed that the patent “appears to [impermissibly] claim all substantial practical applications of the natural relationship.” However, the Brief specifically states that this case should not be decided on an issue of whether a law of nature has been improperly claimed because the lower court record has not been developed on this issue. Directly addressing Petitioner’s part II, the Government argues that the specification does satisfy the requirements of 35 USC 112 “by describing, enabling, and claiming the method.”
Intellectual Property Owner’s Association (IPO) BriefPDF (97 KB)
IPO realized that the question presented for review in this case does not directly challenge the current standards for patentable subject matter. However, the Supreme Court has indicated an interest in considering whether the patent-in-suit claimed patentable subject matter.
IPO believes that the current standards for patentable subject matter, as set forth by the Court in
Diehr, correctly delineate between those innovations that should be eligible for patent protection and those that should not. Accordingly, IPO believes that this case should not serve as a vehicle for overturning or altering those standards. Rather, this case should reinforce the standards of Diehr and thus, support the expectation that innovations in yet unknown areas of technology will be eligible for patent protection.
Specifically, IPO argues that a broad scope of subject matter eligibility properly places research and development decision-making into the hands of individuals and private entities rather than in the judiciary. This “free market” approach “beset allocates research and development resources without judicial entanglement.” The requirements of novelty, nonobviousness, and description protect against over-reaching patents and warrant against further restricting patentability based on subject matter.
* NOTE: I was a coauthor of the IPO brief along with Paul Berghoff and Joshua Rich from MBHB as counsel for IPO. The IPO Board of Directors approved the Brief.
Affymetrix is a supplier of commercial DNA microarrays and “has an interest in ensuring that patents not issue on basic laws of nature so as to impede scientific progress in analyzing DNA and gene expression.” Affymetrix argues that the fact that “elevated levels of an amino acid in the blood correlated to a vitamin deficiency” is a natural phenomenon that leaves claim 13 unpatentable under current precedent.
Interestingly, Affymetrix argues that ambiguity of whether a claim impermissibly covers a natural phenomena should be resolved in favor of invalidity to avoid serious constitutional questions. (citing Feist).
PubPat argues that the CAFC has gone astray by over-reaching the permissible bounds of patentable subject matter. (Citing Alappat and State Street). Rather, PubPat would have the Court return directly to Flook.
The Supreme Court today refused to hear RIM’s BlackBerry appeal — another in a series of setbacks in RIM’s patent defense. The Court’s refusal to grant certiorari means that this case will quickly come to a head at the district court level. A hearing is now expected within the next few weeks to determine the scope of any eventual injunction that may be issued. 
Stern v. Columbia University (Fed. Cir. 2006).
Aspex Eyewear v. Miracle Optics (Fed. Cir. 2006). 
Phillips v. AWH (on petition for certiorari)
The Generic Challenge: Understanding Patents, FDA & Pharmaceutical Life-Cycle Management
.
Perricone v. Medicis Pharmaceutical (Fed. Cir. 2005) 
FieldTurf v. Sprinturf (Fed. Cir. 2005) (Newman, Schall and Dyke)
LabCorp v. Metabolite (on writ of certiorari).