Tuesday, November 20, 2012

The CAFC finds patent-ineligible matter in PerkinElmer v. Intema

The relevant legal point in PERKINELMER v. Intema concerns 35 USC 101:

The key distinction, which bears on our decision today, is between claims that recite ineligible subject matter, and no more, and claims to specific inventive applications of that subject matter. See Diamond v. Diehr, 450 U.S. 175, 187 (1981); see also Mayo, 132 S. Ct. at 1294. Unlike the former, the latter do not risk the broad preemption of “the basic tools of scientific and technological work,” Benson, 409 U.S. at 67, and therefore clear the threshold of section 101.

For a process claim to cover a patentable application of, for example, a natural law, it must “contain other elements or a combination of elements, sometimes referred to as an ‘inventive concept,’ sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the natural law itself.” Mayo, 132 S. Ct. at 1294. Process claims fail this requirement if, apart from the ineligible concept, they contain nothing more than “well-understood, routine, conventional activity previously engaged in by researchers in the field.” Id. Because they merely describe the ineligible concept, amounting to a claim on the concept, such claims run afoul of section 101. That is the case here.

Prometheus and Myriad come up:

The Supreme Court’s decision in Mayo and this court’s recent decision in Ass’n for Molecular Pathology v. PTO, 689 F.3d 1303 (Fed. Cir. 2012) [hereinafter Myriad], dictate the result we reach today. Those two cases dealt with process claims similar to those at issue here and, in both, the process claims were held ineligible under section 101. In Mayo, the claimed method was a diagnostic assay involving two steps: “administering” a thiopurine compound to a patient and “determining the level of 6-thioguanine,” a metabolite of thiopurine, in the patient. The claims contained two “wherein” clauses which did not dictate any step in the process, but disclosed the metabolite concentration range necessary for effective treatment—the purported discov- ery embodied in the claims. This correlation, i.e., that an effective dose of thiopurine produces a certain range of metabolite concentrations, was the result of the natural metabolic process. The claims in dispute thus were drawn to a law of nature and needed to “add enough to their statement of the correlation[] to allow the processes they describe to qualify as a patent-eligible processes that apply the natural laws.” Mayo,132 S. Ct. at at 1297 (emphasis in original). This they failed to do:

[T]he claims inform a relevant audience about certain laws of nature; any addi- tional steps consist of well-understood, routine, conventional activity already en- gaged in by the scientific community; and those steps, when viewed as a whole, add nothing significant beyond the sum of their parts taken separately. For these reasons we believe that the steps are not sufficient to transform unpatentable natu- ral correlations into patentable applica- tions of those regularities.
Mayo, 132 S. Ct. at 1298.

The Supreme Court emphasized the “inventive con- cept” requirement of section 101, stating that “simply appending conventional steps, specified at a high level of generality, to laws of nature, natural phenomena, and abstract ideas cannot make those laws, phenomena, and ideas patentable.” Id. at 1300; see also id. at 1298 (“Purely conventional or obvious pre-solution activity is normally not sufficient to transform an unpatentable law of nature into a patent-eligible application of such a law.”) (internal quotation marks omitted); id. at 1299 (explain- ing that in Parker v. Flook, 437 U.S. 584 (1978), “putting the [ineligible] formula to the side, there was no ‘inventive concept’ in the claimed application of the formula,” mak- ing the claims there ineligible since “‘[p]ost-solution activity’ that is purely ‘conventional or obvious’” “‘cannot transform an unpatentable principle into a patentable process.’”) (quoting Flook, 437 U.S. at 589); id. (“These instructions add nothing specific to the laws of nature other than what is well-understood, routine, conventional activity, previously engaged in by those in the field.”); cf. id. at 1299 (explaining that the claims in Diehr were patent-eligible “because of the way the additional steps of the process integrated the [ineligible] equation into the process as a whole,” and the Diehr court “nowhere sug- gested that all these steps, or at least the combination of those steps, were in context obvious, already in use, or purely conventional.”).

The bottom line:

Because the asserted claims recite an ineligible men- tal step and natural law, and no aspect of the method converts these ineligible concepts into patentable applica- tions of those concepts, the claims cannot stand. Accord- ingly, we find the claims ineligible under section 101 and affirm the judgment for PerkinElmer.


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