IP Newsflash

The Federal Circuit recently held certain method of treatment claims patent eligible under step one of Alice, reversing a district court’s judgment on the pleadings. In that same case, the Federal Circuit upheld the district court’s obviousness and obviousness-type double patenting determinations invalidating the claims of two other patents because the claimed treatments fell within a prior art dosage range.

The Federal Circuit held that two patents directed to methods of preparing samples for use in diagnostic methods are patent eligible under Section 101, reversing a decision from the District Court for the Northern District of California. In so doing, the court provided an opportunity for companies developing medical diagnostics to protect their inventive work within the Supreme Court’s existing framework for patent-eligible subject matter. Notably the Federal Circuit was quick to point out in its decision that this was not a diagnostic case or a method of treatment case, rather, it was a “method of preparation” case.

On August 3, 2017, Judge Mazzant of the Eastern District of Texas denied a motion to exclude the testimony of defendants’ expert regarding patentability for parroting arguments from defendants’ motion for summary judgment.

On December 29, 2016, the Patent Trial and Appeal Board (PTAB) issued a decision rejecting most claims of an application for an MRI machine patent, finding the claims directed toward an abstract idea and therefore patent-ineligible under § 101.

On November 10, 2016, Judge David C. Godbey of the United States District Court for the Northern District of Texas held that two video upload patents were invalid under 35 U.S.C. § 101. The patents, owned by Youtoo Technologies, were asserted against Twitter, which acquired the Vine application in January 2013. Judge Godbey described the asserted patents as directed to a system of “receiving and distributing user-generated video content for distribution on television broadcasts and the Internet.”

In Affinity Labs of Texas, LLC v. Amazon.com, Inc., Chief Judge Prost affirmed a district court’s finding that Affinity Labs’ patent was invalid for being directed to ineligible subject matter because it was directed to an abstract idea and contained no inventive concept. Affinity’s U.S. Patent No. 8,688,085 is directed to media systems that deliver content to a handheld wireless electronic device. The court went through the two step process articulated in Alice to determine the patent’s eligibility under § 101.

A recent decision by the Federal Circuit Court of Appeals (Federal Circuit) reversed a summary judgment of invalidity due to patent ineligible subject matter. The two patents at issue cover automating a 3-D animation method for facial features. The district court based its decision on Alice Corp. Pty. v. CLS Bank Int'l, 134 S. Ct. 2347, 2353, 189 L. Ed. 2d 296 (2014). The district court’s ruling primarily relied on the fact that the patents claim a method of automation that encompasses certain rules for creating the animation, but do not delineate these particular rules, thus preempting all such “rules-based” animatiion. In reversing that decision, the Federal Circuit provided insight into the determination of patent-eligible subject matter under Alice.

On August 25, 2016, the District Court for the District of Massachusetts denied a motion to dismiss for lack of patent eligible subject matter filed by defendants Mayo Collaborative Services, LLC and Mayo Clinic. Applying the two-step framework established by the Supreme Court in Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014), the district court held that the diagnostic method claims of the asserted patent were directed to a patent ineligible law of nature (step one), but the District Court was unable to determine at the 12(b)(6) stage whether the claims contained an inventive concept that transformed them into a patent eligible invention (step two).