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