Publications & Media

Federal Circuit Court Decisions For Week Ending October 12, 2018

Data Engine Technologies LLC v. Google LLC, 2017-1135 (October 9, 2018) (precedential) (3-0); Patent Nos. 5,590,259, 5,784,545, 6,282,551, 5,303,146

Key points:

  • Secondary considerations, typically used for non-obviousness analysis, may be used to demonstrate an existing technological problem for § 101 analysis.
  • Claiming a user interface having a structural element performing a specific function to solve an existing technological problem should be resolved at Alice step one as patent-eligible subject matter.

Roche Molecular Systems, Inc. v Cepheid, 2017-1690 (October 9, 2018) (precedential) (3-0); Patent No. 5,643,723

Key points:

  • A primer does not gain subject matter eligibility because it can selectively hybridize to a certain position of naturally-occurring DNA.
  • A method of detecting a natural phenomenon using conventional techniques is patent-ineligible.

Yeda Research and Development Co., Ltd. v. Mylan Pharmaceuticals Inc., 2017-1594, -1595, -1596 (October 12, 2018) (precedential) (3-0); Patent Nos. 8,232,250, 8,399,413, 8,969,302

Key points:

  • During an IPR, the Board may consider non-prior art evidence in considering knowledge, motivations, and expectations of the person of ordinary skill regarding the prior art.
  • A therapeutically effective formulation of a treatment may have a reasonable expectation of success despite a less-than-complete understanding of the treatment.

Teva Pharmaceuticals USA, Inc. v. Sandoz Inc., 2017-1575 (October 12, 2018) (precedential) (3-0); Patent Nos. 8,232,250, 8,399,413, 8,969,302, 9,155,776

Key point(s):

  • The mere fact that a greater dose does not provide greater efficacy does not teach away from use of the greater dose.
  • A therapeutically effective formulation of a treatment may have a reasonable expectation of success despite a less-than-complete understanding of the treatment.