10.14.18

Gemini version available ♊︎

Court of Appeals for the Federal Circuit Decides That USPTO Wrongly Granted Patents to Roche

Posted in America, Courtroom, Patents at 10:22 am by Dr. Roy Schestowitz

Not just 35 U.S.C. § 101; nature is not an invention either

A stormy paradise

Summary: Patent quality issues at the U.S. Patent and Trademark Office (USPTO) — motivated by money rather than common sense — continue to be highlighted by courts; the USPTO needs to raise the bar to improve the legal certainty associated with US patents

THE USPTO isn’t exactly renowned for patent quality; it’s known as the ‘go-to office’ for quick and easy patents and it’s also known for its ridiculous number of patents (recently exceeded 10 million).

Suffice to say, the USPTO has granted grant many bogus patents or fake patents (ones that should never have been granted and have no legal standing in actual courts of law). Natural Alternatives International has decided to sue the USPTO for having invalidated its patent in a Patent Trial and Appeal Board (PTAB) inter partes review (IPR). Donald Zuhn wrote about it a few days ago. They’re suing the USPTO because it’s granting patents falsely and even its own staff admits that. It recently explained that such patents should not have been granted, leading to this suit:

Last week, in Natural Alternatives International, Inc. v. Iancu, the Federal Circuit affirmed a determination by the U.S. Patent and Trademark Office Patent Trial and Appeal Board in an inter partes reexamination affirming the Examiner’s rejection of the challenged claims of U.S. Patent No. 8,067,381 as being anticipated or obvious over the cited prior art, as well as the Board’s denial of the patentee’s request for rehearing. The ’381 patent is owned by Appellant Natural Alternatives International, Inc. (“NAI”).

The inter partes reexamination was requested by Woodbolt Distributors, LLC, which had been involved in district court litigation with NAI concerning the ’381 patent. In its request, Woodbolt asserted that the priority claim of the ’381 patent was defective because NAI “deliberately and expressly terminated” its claim to the benefit of the first four priority applications by breaking the chain of priority between the fourth and fifth priority applications.

Iancu ought to know that the only solution is for USPTO management (and in turn examiners) to raise examination standards.

More media attention has been dedicated to Swiss giant Roche. The Federal Circuit continues to ‘finish off’ bad patents that should never have been granted. It adds its weight to PTAB’s and Roche isn’t happy.

“The Federal Circuit on Tuesday upheld a ruling that a tuberculosis test patent Roche Molecular Systems Inc. asserted against Cepheid is invalid for claiming only natural phenomena,” Matthew Bultman wrote. Bultman is a patent maximalist.

Reuters’ Jan Wolfe, who is more impartial, wrote this:

A federal appeals court on Tuesday said a patent owned by Roche Molecular Systems Inc on a method of detecting tuberculosis should not have been granted, handing a win to rival diagnostics company Cepheid Inc.

Kevin Noonan, a proponent of patents on life, noted that “[t]he District Court granted summary judgment of invalidity for both types of claims for patent-ineligibility, and the Federal Circuit affirmed, in an opinion by Judge Reyna” (the one who patent maximalists like to mock). To quote:

This recognition significantly reduces the precedential effect of the BRCA1 decision and provides, perhaps, a way for a future panel to distinguish claims to primers from this precedent. Judge O’Malley reminds her colleagues and us that the BRCA1 decision did not rule on the patent eligibility of PCR primer claims and does not compel the result the Court announced here.

Judge O’Malley’s concurrence also notes that this case, unlike the BRCA1 case, contains unresolved questions of material fact that, while disregarded by the Court may provide another basis for distinguishing the BRCA1 decision. Citing the distinctions drawn by the Supreme Court in Myriad between genomic DNA and cDNA, Judge O’Malley opines that while the BRCA1 opinion sets forth the basis for finding the PCR primer claims to be patent ineligible, “it is not clear from the BRCA1 opinion or record why we reached this conclusion. The lack of record evidence underlying BRCA1′s conclusion on this point is important in light of the record in this case.” She then goes on to recite the factual distinctions argued by Roche regarding the differences between the claimed primers and the sequences as they occur in nature (including the differences in strandedness, complementarity (“a primer comprising a nucleotide sequence of ATCG is complementary to, but unquestionably different from, a natural DNA strand comprising a sequence of TAGC”), the presence of a 3′ hydroxyl group, the linearity of the primers versus the circular nature of bacterial DNA, and that natural “primers” comprise RNA and not DNA). All these facts were adduced from expert testimony and thus for Judge O’Malley raise “genuine issue of material fact” that are not appropriate for summary judgment. Judge O’Malley also notes that the claimed primers here have a markedly different function, unlike the genomic DNA in Myriad, due to the presence of the 3′ hydroxyl group which permits PCR amplification to occur. Judge O’Malley apprehends that the patentee in this case raised factual issues not addressed in the Court’s BRCA1 decision, and thus, “unlike the appellants in Myriad and in BRCA1, here, Roche submitted evidence of record that, at the very least, raises genuine issues of material fact as to whether there exists anything in nature that both has the structure and performs the function of the claimed primers.” Accordingly, she believes not only that the BRCA1 decision does not compel the Court’s conclusion here, but that the question should be taken up en banc to clarify the law regarding the patent eligibility of oligonucleotide primers and perhaps methods of using such primers to amplify targeted portions of DNA.

While this concurring opinion is a welcome ray of sunshine on a cloudy day, the practical effects of this, like so many Federal Circuit decisions on eligibility, is to incentive non-disclosure of inventions such as these, with the concomitant injury to progress that trade secret protection of diagnostic methods is almost certain to create. It should be self-evident that this outcome is contrary to the Constitutional mandate underlying the patent system, but it appears the current constitution of the Court is unconcerned with this outcome. Perhaps Chief Judge Woods of the Seventh Circuit was right after all.

What we have here isn’t an example of software patents and what’s noteworthy about it is that it demonstrates patent quality issues beyond the domain of software. The USPTO needs to think carefully how to better align with courts’ decisions rather than expect courts to bend in favour of Iancu’s “business model” — incidentally the subject of our next post.

Share in other sites/networks: These icons link to social bookmarking sites where readers can share and discover new web pages.
  • Reddit
  • email

Decor ᶃ Gemini Space

Below is a Web proxy. We recommend getting a Gemini client/browser.

Black/white/grey bullet button This post is also available in Gemini over at this address (requires a Gemini client/browser to open).

Decor ✐ Cross-references

Black/white/grey bullet button Pages that cross-reference this one, if any exist, are listed below or will be listed below over time.

Decor ▢ Respond and Discuss

Black/white/grey bullet button If you liked this post, consider subscribing to the RSS feed or join us now at the IRC channels.

DecorWhat Else is New


  1. IRC Proceedings: Saturday, May 27, 2023

    IRC logs for Saturday, May 27, 2023



  2. No More Twitter, Mastodon, and Diaspora for Tux Machines (Goodbye to Social Control Media)

    People would benefit from mass abandonment of such pseudo-social pseudo-media.



  3. Links 28/05/2023: New Wine and More

    Links for the day



  4. Links 27/05/2023: Plans Made for GNU's 40th Anniversary

    Links for the day



  5. Social Control Media Needs to be Purged and We Need to Convince Others to Quit It Too (to Protect Ourselves as Individuals and as a Society)

    With the Tux Machines anniversary (19 years) just days away we seriously consider abandoning all social control media accounts of that site, including Mastodon and Diaspora; social control networks do far more harm than good and they’ve gotten a lot worse over time



  6. Anonymously Travelling: Still Feasible?

    The short story is that in the UK it's still possible to travel anonymously by bus, tram, and train (even with shades, hat and mask/s on), but how long for? Or how much longer have we got before this too gets banned under the false guise of "protecting us" (or "smart"/"modern")?



  7. With EUIPO in Focus, and Even an EU Kangaroo Tribunal, EPO Corruption (and Cross-Pollination With This EU Agency) Becomes a Major Liability/Risk to the EU

    With the UPC days away (an illegal and unconstitutional kangaroo court system, tied to the European Union in spite of critical deficiencies) it’s curious to see EPO scandals of corruption spilling over to the European Union already



  8. European Patent Office (EPO) Management Not Supported by the EPO's Applicants, So Why Is It Still There?

    This third translation in the batch is an article similar to the prior one, but the text is a bit different (“Patente ohne Wert”)



  9. EPO Applicants Complain That Patent Quality Sank and EPO Management Isn't Listening (Nor Caring)

    SUEPO has just released 3 translations of new articles in German (here is the first of the batch); the following is the second of the three (“Kritik am Europäischen Patentamt – Patente ohne Wert?”)



  10. German Media About Industry Patent Quality Charter (IPQC) and the European Patent Office (EPO)

    SUEPO has just released 3 translations of new articles in German; this is the first of the three (“Industrie kritisiert Europäisches Patentamt”)



  11. Geminispace Continues to Grow Even If (or When) Stéphane Bortzmeyer Stops Measuring Its Growth

    A Gemini crawler called Lupa (Free/libre software) has been used for years by Stéphane Bortzmeyer to study Gemini and report on how the community was evolving, especially from a technical perspective; but his own instance of Lupa has produced no up-to-date results for several weeks



  12. Links 27/05/2023: Goodbyes to Tina Turner

    Links for the day



  13. HMRC: You Can Click and Type to Report Crime, But No Feedback or Reference Number Given

    The crimes of Sirius ‘Open Source’ were reported 7 days ago to HMRC (equivalent to the IRS in the US, more or less); but there has been no visible progress and no tracking reference is given to identify the report



  14. IRC Proceedings: Friday, May 26, 2023

    IRC logs for Friday, May 26, 2023



  15. One Week After Sirius Open Source Was Reported to HM Revenue and Customs (HMRC) for Tax Fraud: No Response, No Action, Nothing...

    One week ago we reported tax abuses of Sirius ‘Open Source’ to HMRC; we still wait for any actual signs that HMRC is doing anything at all about the matter (Sirius has British government clients, so maybe they’d rather not look into that, in which case HMRC might be reported to the Ombudsman for malpractice)



  16. Links 26/05/2023: Weston 12.0 Highlights and US Debt Limit Panic

    Links for the day



  17. Gemini Links 26/05/2023: New People in Gemini

    Links for the day



  18. IRC Proceedings: Thursday, May 25, 2023

    IRC logs for Thursday, May 25, 2023



  19. Links 26/05/2023: Qt 6.5.1 and Subsystems in GNUnet

    Links for the day



  20. Links 25/05/2023: Mesa 23.1.1 and Debian Reunion

    Links for the day



  21. Links 25/05/2023: IBM as Leading Wayland Pusher

    Links for the day



  22. IRC Proceedings: Wednesday, May 24, 2023

    IRC logs for Wednesday, May 24, 2023



  23. Links 25/05/2023: Istio 1.16.5 and Curl 8.1.1

    Links for the day



  24. Gemini Links 25/05/2023: On Profit and Desire for Gemini

    Links for the day



  25. SiliconANGLE: Sponsored by Microsoft and Red Hat to Conduct the Marriage Ceremony

    SiliconANGLE insists that paying SiliconANGLE money for coverage does not lead to bias, but every sane person who keeps abreast of SiliconANGLE — and I read their entire feed every day — knows that it’s a ludicrous lie (Red Hat/IBM and the Linux Foundation also buy puff pieces and “event coverage” from SiliconANGLE, so it’s marketing disguised as “journalism”



  26. Links 24/05/2023: Podman Desktop 1.0, BSDCan 2024, and More

    Links for the day



  27. Gemini Links 24/05/2023: Razors, Profit, and More

    Links for the day



  28. [Meme] When the Patent Office Controls Kangaroo Patent Courts and Judges

    The EPO has been hijacked by industry and its lobbyists; now the same is happening to EU patent courts, even though it is illegal and unconstitutional



  29. The Illegally 'Revised' Unified Patent Court Agreement (UPCA) is Disgracing the Perception of Law and Order in the European Union

    The Unified Patent Court (UPC) isn’t legal, the Unified Patent Court Agreement (UPCA) is being altered on the fly (by a person patently ineligible to do so), and so it generally looks like even patent courts across Europe might soon become as corrupt as the European Patent Office, which has no basis in the Rule of the Law and is basically just a front for large corporations (most of them aren’t even European)



  30. Sirius 'Open Source', With High-Level Political Clients, Reported to Politicians

    The crimes of Sirius ‘Open Source’ are of interest to the British public sector; we’ve begun contacting relevant people


RSS 64x64RSS Feed: subscribe to the RSS feed for regular updates

Home iconSite Wiki: You can improve this site by helping the extension of the site's content

Home iconSite Home: Background about the site and some key features in the front page

Chat iconIRC Channel: Come and chat with us in real time

Recent Posts