Monthly Archives: November 2012

Method to Estimate Risk of Fetal Down’s Syndrome Not Patent-Eligible Subject Matter

By: Joe Carnicella, intellectual property attorney at Picadio Sneath Miller & Norton, P.C.

On November 20, 2012, the Federal Circuit held that a method to assess the risk of fetal Down’s syndrome is not patent-eligible subject matter pursuant to 35 U.S.C. 101.  In PerkinElmer Inc. v. Intema Ltd., a unanimous panel considered the issue of patentability under section 101 and concluded that Intema’s screening patent, U.S. Patent No. 6,573,103 (“the ‘103 patent”), was not drawn to patent-eligible subject matter.

According to 35 U.S. C. 101, “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 . . . .”  The U.S. Supreme Court has held that section 101, while broad in nature, is subject to certain limitations, and laws of nature, natural phenomena, and abstract ideas are not patentable.  Mayo Collaborative Servs. v. Prometheus Labs, Inc., 132 S. Ct. 1289, 1293 (2012).  For example, mental processes and products of nature are not patent-eligible subject matter.  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 sufficient to ensure that the patent in practice amounts to significantly more than a ptent upon the natural law itself.

The ‘103 patent disclosed specific screening methods, which used markers from both the first and second trimesters of pregnancy, to estimate the risk of fetal Down’s syndrome.  The Federal Circuit relied on two decisions to support its ruling that such methods do not cover patent-eligible subject matter.  In Mayo Collaborative Services, the U.S. Supreme Court held that two patents on a diagnostic test used to treat autoimmune diseases were invalid because patents based on the use of a natural law must also contain an inventive concept.  In Association for Molecular Pathology v. Myriad Genetics Inc., the Federal Circuit held that isolated human genes are patent-eligible but method claims for comparing or analyzing DNA sequences are not patent-eligible because the process claims were drawn to abstract mental processes.  With respect to PerkinElmer, the Federal Circuit noted that the ‘103 patent did not require any action besides comparing data with known statistical information.  Also, the court concluded that the relationship between screening marker levels and the risk of fetal Down’s syndrome related to a law of nature claim.  According to the Federal Circuit, because the asserted claims recite an ineligible mental step and natural law, and no aspect of the method converts these ineligible concepts into patent applications of those concepts, the claims cannot stand.

Hor v. Chu–Laches and Correcting Inventorship

by: Robert Wagner, intellectual property attorney at Picadio Sneath Miller & Norton, P.C. ()

This week, the Federal Circuit issued an opinion clarifying the time in which an individual who believes he or she is a co-inventor of an invention (but is not listed as an inventor) must act in order to correct the inventorship of a patent or patent application. Under 35 U.S.C. § 256, the Patent Office or the courts may correct any errors in the naming of the inventors in an issued patent. In Hor v. Chu, No. 2011-1540, the Federal Circuit determined that an individual who believes himself or herself to be an omitted inventor has six years from the date the patent issues to attempt to correct the inventorship, or the presumption of laches will apply. This is true even if the individual knows of the inventorship problem before the patent issues.

The patents at issue in this case involved high temperature superconductors and had a rather long history. The applications were filed in 1987 and 1989 by a professor from the University of Houston (Chu), but the patents did not issue until 2006 and 2010, respectively, due to a lengthy interference proceeding. A graduate student (Hor) and another scientist (Meng) who worked in Chu’s lab contended that they were co-inventors of the two patents. The patents listed Chu as the sole inventor, though. The trial court found that both Hor and Meng were aware (or should have been aware) that Chu applied for the patents without listing their names no later than the early 1990s. Hor did not file suit until 2008, and Meng did not move to intervene until 2010, however. Chu moved for summary judgment, arguing that Hor and Meng’s claims were barred by laches, which is a doctrine that can bar a claim if a plaintiff delays filing suit for more than six years after the claim accrues. Based on the trial court’s determination that Hor and Meng knew of the inventorship issue in the 1990s, the trial court found that their suit was barred by the doctrine of laches.

The Federal Circuit reversed, finding that the statute (35 U.S.C.§ 256) is quite clear that claim to correct inventorship requires that the patent issue first. Therefore, neither Hor nor Meng could have brought the § 256 claim until after the patents issued. Because laches cannot bar a claim before it accrues, the Federal Circuit held that Hor and Meng’s knowledge in the early 1990s could not bar their § 256 claims. Instead, the laches clock can only start on the day the patents issued. Because Hor and Meng filed suit within six years of these dates, the Federal Circuit held that the trial court erred in granting summary judgment on the basis of laches:

[T]he laches period for a § 256 correction of inventorship claim begins to run when “the omitted inventor knew or should have known of the issuance of the patent,” regardless of whether the omitted inventor knew or should have known of the omitted inventorship while the patent application was pending before the PTO.

While recognizing that this holding could create incentives for omitted inventors to wait to challenge their omission, the Federal Circuit felt it was bound by the statutory language and the case law regarding laches. In addition, the Federal Circuit noted that a different holding could create unnecessary work, given that claims are often narrowed or dropped during prosecution and who should be an inventor may not be clear until the patent actually issues.

Peer-to-Peer File Sharing Targeted by Copyright Alert System

By: Robert M. Palumbi, attorney at Picadio Sneath Miller & Norton, P.C.

Efforts to combat internet piracy and protect a copyright in the digital environment are certainly not a new concept. Less than a year ago we were all made aware of the Stop Online Piracy Act (SOPA) and the Protect IP Act (PIPA), two federal anti-piracy proposals which were met with hostility and backlash from both users and providers.

Based on the backlash of SOPA and PIPA, a new system appears to be on the horizon. The Copyright Alert System (CAS) is part of a new approach by ISP’s and Intellectual Property Organizations to help users understand the significance of protecting copyright in the digital environment. This is a significant change from the punitive nature of SOPA and PIPA and a shift to a more educational method. The CAS focuses on advising subscribers about the importance of avoiding inadvertent or intentional online distribution of copyrighted content and to suggest legal ways to obtain such content.

The CAS is intended to target the infringement of peer-to-peer file sharing of copyrighted works. This type of infringement is easily detectable, as IP addresses of internet customers usually reveal themselves during the transfer of files. Regardless, the rights of a copyright owner won’t change. The Copyright Act allows damages of up to $150,000 per infringement of a work registered with the Copyright Office. It should be no surprise that the CAS was heavily lobbied for by the Recording Industry Association of America and the Motion Picture Association of America, the two industries that have been hit the hardest but digital copyright infringement.

The CSA will use a unique “six alert” process that will be progressive in nature. Owners will notify a participating ISP when they believe that their copyrights are being misused online by a specific computer which can be identified by the IP address. The ISP will then send the first alert; perhaps an email that notifies the subscriber that their account has been involved in a copyright infringement. This first alert will also direct the subscriber to educational resources which will provide an explanation of the law violated, how to avoid copyright infringement, and provide legal ways to obtain content. If the activity persists, a second alert is sent which reiterates the warnings and provides the resources of the first alert.

The third and fourth alerts are very similar in nature. Not only will the subscriber receive an alert, but they will be forced acknowledge receipt of the warnings that they are violating a copyright. The fifth alert allows the ISP some leeway in what steps are taken to stop future copyright infringement. The ISP may temporarily reduce the speed of the subscriber’s internet; redirect the user to web page until the user calls the ISP to discuss the matter, or any other measures that the ISP deems necessary. The sixth alert will involve more harsh mitigation measures at the discretion of the ISP.

The CAS represents a compromise between internet users and the movie and music industry, who were seeking much harsher measures. Those industries were seeking a plan that would cut off internet service to the subscriber after the sixth alert, or even fine the ISP provider for each transgression after the sixth alert, which would then be passed down to the subscriber. A similar system has been implemented in France. The CAS alerts do not alter the rights of the copyright holder, who can still treat each alert as a separate infringement for purposes of damages under the Copyright Act. The Center for Copyright Information expects this system to be launched by the end of 2012.

Pittsburgh Technology Council Tech 50 Award Winners Announced

By: Joseph R. Carnicella, intellectual property attorney with Picadio Sneath Miller & Norton, P.C.

On behalf of our firm, I would like to thank The Pittsburgh Technology Council for hosting such a spectacular event last evening.  Also, I would like to congratulate all of the award winners who were recognized by the Council as leaders in technology and innovation within the Pittsburgh area.

The Pittsburgh Technology Council holds an annual Tech 50 awards presentation as a way to honor companies that have demonstrated an ability to grow and succeed as technology-oriented companies in Pittsburgh.  The event last evening provided an excellent opportunity for business leaders to come together and recognize and celebrate all of the creative contributions made by these companies on a local, national and global stage.  The Tech 50 award winners are as follows:

  • Calgon Carbon Corporation – Advanced Manufacturer of the Year
  • Epiphany Solar Water Systems, LLC – Innovator of the Year
  • ERT, formerly invivodata, inc. – Life Sciences Company of the Year
  • TrueFit – New Media Company of the Year
  • Summa Technologies – Solution Provider of the Year
  • Branding Brand – Start-Up of the Year
  • ANSYS, Inc. – Tech Titan of the Year
  • Scott Pearson, Aquion Energy, Inc. – CEO of the Year

Again, congratulations!  We wish you and all of the other Pittsburgh tech companies the best.