Monday, 06 January 2020 14:57

Supreme Court To Consider Three New Patent Eligibility Cases This Week

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The U.S. Supreme Court is scheduled to hold certiorari votes on Friday, January 10, to decide which cases it will or will not consider. Among them are three cases involving patent eligibility, and if the Court chooses to hear even one of these cases, it could significantly impact how Section 101 of the Patent Laws is applied for years to come.

In no particular order, the cases and questions presented are as follows:

In HP Inc. v. Berkheimer, the Court has been asked to consider whether patent eligibility is a question of law for the court based on the scope of the claims, or a questions of fact for the jury based on the state of the art at the time of the patent. 

See Petition for a Writ of Certiorari here.

Hikma Pharmaceuticals USA Inc. et al. v. Vanda Pharmaceuticals USA, Inc. present the question of whether patents that claim a method of medically treating a patient automatically satisfy Section 101 of the Patent Act, even if they apply a natural law using only routine and conventional steps.

See Petition for a Writ of Certiorari here.

Finally, in Athena Diagnostics, Inc. et al. v. Mayo Collaborative Services, LLC the Court is asked to consider whether a new and specific method of diagnosing a medical condition is patent-eligible subject matter, where the method detects a molecule never previously linked to the condition using novel man-made molecules and a series of specific chemical steps never previously performed.

For more, see Petition for a Writ of Certiorari here.

We, along with the rest of the Intellectual Property Community, will be watching closely to see what the Court decides and why, and we will provide an update in a future blog.

Read 636 times Last modified on Monday, 06 January 2020 15:11
John Fulton, Jr.

Mr. Fulton is a Registered Patent Attorney and Senior Counsel with Malloy & Malloy, P.L., Board Certified in Intellectual Property Law, and rated AV Preeminent by Martindale-Hubbell. His practice includes all aspects of Intellectual Property Law with a focus on patent and trademark prosecution and related transactional matters, and patent infringement litigation. He has a Bachelor of Science in Chemical Engineering from Cleveland State University, and obtained considerable engineering experience prior to receiving his law degree, with honors, from the University of Miami School of Law. In addition to the Florida Bar, he is admitted to practice in the U.S. District Courts for the Southern District of Florida, the Middle District of Florida, and the Eastern District of Texas, and the U.S. Courts of Appeals for the Eleventh and Federal Circuits. Mr. Fulton also maintains his Registration as a Professional Engineer in the State of Florida.

Mr. Fulton is an active member of the Florida Bar, and currently serves on the Intellectual Property Law Certification Committee. He is also a member of the Federal Bar and Dade County Bar Associations, and provide Pro Bono services through the DCBA’s Small Claims Clinic and Venture Law Project initiatives. He has served as an Officer and Director of the Inventors Society of South Florida, and regularly provides complimentary “Office Hour” consultations to participants at Venture Café Miami. He has also had the honor to serve as President of his Rotary Club, the Rotary Club of Miami Brickell.