Prosecution Group LuncheonPatentsAugust, 2011

The Disk is Only As Good As the SoftwareCyberSource Corp. v. Retail Decisions, Inc. (Fed Cir. 2011)

• Method claim: anti-fraud process for online credit card purchases – Claim 2: a "computer readable medium containing program

instructions" for causing a computer to perform that method

• FC: “Computer-readable medium” with ineligible process is not a patent-eligible product– Method is an unpatentable mental process standing alone

– Claim 2 is "nothing more than a computer readable medium containing program instructions for executing the method"

– Court turned away from literal statutory category (article of manufacture), toward "underlying invention"

– Patentee unable to show that “computer readable medium” was fundamentally different from method

But Isolated DNA Is EligibleAssn. for Molecular Pathology v. Myriad

Genetics (FC 2011)

• District court invalidated claims to isolated naturally-occurring DNA material

• FC: Reversed invalidity of claims to screening cancer treatments via changes in cell growth rates

• Reversed invalidity of claims directed to isolated DNA

• Dissent: process of isolating genetic material does not make that material a patentable invention

• En banc petition or petition for cert. expected

Ombudsman Program Made Permanent• To assist applicants with issues that arise

during prosecution, especially when there is a breakdown in the normal process

– Status inquiries – Petitions issues

• To provide a channel for resolving issues that may not fit into existing channels

• http://www.uspto.gov/patents/ombudsman.jsp

MilestonesPatent No. 8,000,000

Second Sight Medical ProductsVisual Prosthesis

5½ years since 7,000,000(Feb. 2006)

6,000,000 in Dec. 1999