obvIPat - Obviously Patentable

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CAFC Weekly: December 17, 2010

by Orlando Lopez

This week, the one precedential opinion and the one precedential order relate to patentatability of method claims after Bilski (the CAFC considered an opinion vacated and remanded by the Supreme Court) and another look at transfer of venue.

The CAFC reconsidered Prometheus Laboratories Inc. v. Mayo Collaborative Services after the Supreme Court vacated and remanded back as a result of the Bilski, decision. Prometheus owns patents for methods for determining the optimal dosage of drugs (6-MP and AZA) used to treat autoimmune diseases. Upon being administered, the drugs are converted by the body into 6-MP metabolites. The patented method includes the steps of administering the drug and determining the level of metabolite.

In affirming that the methods claimed were patentable subject matter, the CAFC, as in Research Corp. v. Microsoft and following the Supreme Court decision in Bilski, considered the claim as a whole. The CAFC found that there is no pre-emption of all naturally occurring correlations between metabolites and administered drug efficacy. The CAFC stated that the determination of the level of the metabolite requires the use of equipment, such as liquid chromatography equipment (analogous to the use of printers in Research Corp). The CAFC repeated their prior argument of occurrence of transformation, an indicator of patentable subject matter. The CAFC distinguished the Prometheus claims from claims to performing a test (data gathering) and making determinations based on the data from the test, which were previously held to be non-patentable.

The CAFC considered one claim in the Prometheus patents that included one limitation involving a mental step, and found that when the claim was considered as a whole the claim was still patentable. Although colored by the prior decision, the Prometheus decision provides another example of the determination of what is patentable subject matter after Bilski.

In the case of In re VistaPrint, VistaPrint and OfficeMax petitioned the CAFC to vacate the order of the District Court for the Eastern District of Texas, denying a motion for transfer of venue in an infringement suit brought by Colorquick. The District Court found that although the factors for convenience weighed in favor of transfer, those factors did not outweigh considerations of judicial economy. The District Court had previously heard a case involving the same patent, had interpreted the claims and had another pending case involving the same patent. The CAFC found that the weight given by the District Court to considerations of convenience and judicial economy, did not amount to an abuse of discretion and did not vacate the order. This order, viewed in conjunction with the order from In re Acer America, provides guidance as to the arguments for and against a transfer of venue.

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