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Dilworth IP proudly participated in the Salvation Army’s Angel Tree Program this Holiday Season. Every Year, the Salvation Army finds children who would otherwise not receive any gifts on Christmas morning, and matches them to donors who are provided with tags that have an individual child’s wish list on them. The donor then returns the tag to the Salvation Army with the gifts they purchased. Ann Marie Poremba, Head of Dilworth IP’s Culture and Community Committee coordinated the Firm’s participation with the Salvation Army’s Major Kathi Longcoy. “I am very proud of our team’s participation in the Angel Tree Program; we had an outpouring of gifts coming in everyday;” Michael Dilworth, Founder and Managing Partner at Dilworth IP said, “it is important to me, and to our culture here, to support those who are less fortunate than we are, especially during the Holiday Season.”

Clarity on patent subject matter eligibility is still being sought five years after Mayo[1] and three years after Alice[2]. Further adding to the confusion is the fact that discoveries in diagnostics, despite their apparent importance to the biomedical sciences, have been repeatedly determined as ineligible subject matter under 35 USC § 101. The two step Alice/Mayo test has increased the percentage of invalid patents, and the decision by the Supreme Court to deny certiorari in the case of Ariosa vs. Sequenom[3] in 2016 means we are unlikely to see a reversal of this trend in the near future. Inventors are still finding it challenging to implement the current guidelines toward a successful diagnostics patent grant.  In this piece we provide perspective from a 2016 Federal Circuit decision that provides some over-looked hints for moving forward with inventions relating to diagnostics.

In Two-Way Media Ltd. v. Comcast Cable Communications, LLC, the Federal Circuit affirmed the decision of the District Court of Delaware that the Two-Way Media patents and claims were ineligible under 35 U.S.C. § 101.  See the Federal Circuit decision here.  Two-Way sued Comcast, alleging that Comcast violated U.S. Patent Nos. 5,778,187 (‘187); 5,983,005 (‘005); 6,434,622 (‘622); and 7,266,686 (‘686) relating to a “Multicasting method and apparatus”.  These patents are directed to a “scalable architecture … or delivery of real-time information over a communications network”.  This essentially refers to methods for streaming data over the internet to multiple users at a time.  The outcome of this case teaches important lessons on how and where to define inventive concept under the two-part Mayo/Alice test.

On September 11, 2017, the two parties involved in Naruto v. Slater – publicly known as “the Monkey Selfie” – jointly asked the U.S. Court of Appeals for the Ninth Circuit to dismiss their appeal, and nullify the judgment already made by the lower court. This case has been frequently reported and discussed by both the popular press and serious legal sources, because it unearths our fundamental human assumptions that animals lack a level of awareness to take self-portraits of themselves, let alone raises a copyright question.

On October 18, the CAFC Circuit Court delivered a verdict in Smart Sys. Innov. v Chicago Trans. Auth. that adds an interesting new wrinkle for determining the question of patent subject matter eligibility.  In a split decision, the court ruled that several contested patents held by SSI were directed to an abstract idea following the Mayo/Alice test for determining patent eligibility, and were therefore invalid.  The dissenting opinion, penned by Judge Linn, offered an interesting, and in our opinion, reasonable, new interpretation for the Mayo/Alice test for determining patent eligibility.

We are fast approaching the Supreme Court oral arguments in the case of Oil States Energy Services LLC v. Greene’s Energy group on Monday, November 27th. We had previously reported on this case in a recent piece, Oil Battles Greene Energy to War over Inter Partes Review in the Supreme Court.  A whopping 57 amicus curiae briefs have been filed, underscoring the intense interest in the outcome of this case.  The briefs represent a vast array of interested parties, including law professors, legal associations, small businesses, and recognized companies in the fields of medicine, electronics, automobiles, and technology. The key issue of the case is simple – whether the Patent Office’s inter partes review (IPR) process is an unconstitutional denial of the right to a jury trial.

William Reid, Partner at Dilworth IP, will be presenting a free webinar on Wednesday, December 13th at 1:00 PM EDT entitled, “Should You Keep It Secret? The Pros and Cons of Trade Secrets and Patent Protection.” You know that protecting your intellectual property is important. A strong IP portfolio is essential to insure economic advantages over your competitors – but what type of protection should you pursue? Patents are well recognized, but in many instances, protection can be limited…or even unavailable. Other times, you may not want to publicly disclose your invention in a patent application. Trade Secret protection – while potentially much more applicable to your business needs than patents – is also more fragile; and has completely different rules of the road in terms of stewardship.

The Berkeley Center for Law & Technology (BCLT) held a round table discussion workshop with opinion leaders from science, technology, and the law to discuss patent subject matter eligibility.  A Report on the workshop, which is quite extensive and contains a number of tables and charts, should be of interest to a wide audience.  This Report comes on the heels of Senator Orrin Hatch’s op-ed article that also called for reform of subject matter eligibility (reviewed by Dilworth IP here).  A number of recommendations, some of which are detailed below, were proposed by workshop participants to clarify subject matter eligibility as related to 35 U.S.C. § 101.  Of note, this workshop was further detailed in a blog piece on PatentlyO.

Sequencing whole human genomes presents many technical challenges. Whole human genomes have a large number of long repetitive sequence segments of more than 1,000 bp, which cannot be distinguished by short-read instruments. Since it has been reported that each individual human genome has 2.7 to 4.1 million variants, then, for the 3.2 Gigabyte whole human genome, there is at least one variant per every 1,000 bases. These long repetitive sequence segments could include structure alteration and gene mutations relating to diseases, but might not be efficiently and accurately characterized by short-read NGS technologies.  To address these challenges, long-read sequencing technologies have been developed and have already provided some astounding applications. For example, in 2014, scientists successfully applied nanopore sequencing technology developed by Oxford Nanopore Technologies (ONT) to monitor the transmission history and disease evolution of the Ebola virus, essentially in real time, during its outbreak. In this installment, we will discuss two of the main long-read sequencing technologies: (i) the synthetic approach and (ii) the single-molecule sequencing approach, and will review the relevant patents.

We may not realize it, but the human body is home to an astonishingly large number of microorganisms that live both in us and on us. This resident microbial population, which is estimated to number over 100 trillion microorganisms, is collectively known as the ‘microbiome’ or, more specifically, the ‘human microbiome’ [1].The microbiome can also refer to microbial communities in or on other living organisms such as our pets, livestock and food crops, as well as those external to us, for example, those found in the air, soil and sea, or those found in or on inanimate objects ranging from computer keyboards to office buildings