Melinda L. Patterson, Partner

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March 26, 2012 Briefing Merely Applying Law of Nature does not Constitute Patentable Subject Matter
In Mayo Collaborative Services dba Mayo Medical Laboratories, et al. v. Prometheus Laboratories, Inc., No. 10-1150 (March 20, 2012), the Supreme Court addressed the issue of patentable subject matter.
June 10, 2011 Briefing Supreme Court affirms “clear and convincing” standard for proving patent invalidity. Majority and concurring opinions invite use of jury instructions to clarify degree of deference due to PTO and role of jury in particular cases.
On June 9, the Supreme Court finally resolved what had been a contentious issue of patent law ever since the Court’s 2007 decision in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007): Whether claims of invalidity over prior art that was not considered by the Patent and Trademark Office (“PTO”) should be governed by a reduced standard of proof.
June 10, 2011 Briefing Supreme Court Holds that Patent Rights in Federally Funded Inventions do not Automatically Vest in Federal Contractors Under the Bayh-Dole Act
In a case alleging infringement of patents for a method of HIV testing, the Supreme Court held that the University and Small Business Patent Procedures Act of 1980 does not automatically vest title to federally funded inventions for federal contractors or allow them to unilaterally take title to such inventions.
June 8, 2011 Briefing Supreme Court Holds That Induced Patent Infringement Requires That the Inducer Knows That the Induced Conduct Infringes a Patent
In a case alleging induced infringement of a patent for a home-use deep fryer, the Supreme Court held that induced infringement under 35 U.S.C. § 271(b) requires knowledge that the induced acts constitute patent infringement.
May 27, 2011 Briefing Federal Circuit Raises the Bar for Proving Inequitable Conduct
Over the 13 year prosecution history of the ‘551 patent-in-suit, the U.S. Patent and Trademark Office rejected the original application multiple times for anticipation and obviousness over the prior art ‘382 patent also owned by the patentee.