Sending a Cease-and-Desist Letter Along With Licensing a Patent in the U.S. Can Confer Personal Jurisdiction Even Over a Foreign Sovereign; Detecting a Specific Point Mutation Through Conventional Techniques Is Patent-Ineligible Subject Matter

Genetic Veterinary Sciences v. Laboklin Gmbh & Co. KG, No. 2018-2056 (Fed. Cir. Aug. 9, 2019)

The patentee (a Swiss university and foreign sovereign) and its exclusive German licensee sent a cease-and-desist letter to an alleged infringer in the U.S. over a patent to a method for detecting a specific genetic point mutation. The alleged infringer then sued for a declaratory judgment that the patent was invalid as being directed to ineligible subject matter. The patentee and licensee moved to dismiss for lack of personal and subject matter jurisdiction. The district court denied those motions, and at the end of trial but prior to submission to the jury, granted judgment as a matter of law that the patent was indeed invalid under section 101.

The Federal Circuit affirmed on all grounds. As to the German exclusive licensee, specific personal jurisdiction existed because it sent a cease-and-desist letter to the alleged infringer in the U.S., and also conducted business in the U.S. by sublicensing the patent in California and Michigan. As to the Swiss sovereign, the Foreign Sovereign Immunities Act did not shield the patentee because the “commercial activity” exception applied. Specifically, the patentee “obtained a U.S. patent and then participated in licensing and enforcing” the patent.

The Federal Circuit also found that the patent was directed to an ineligible natural phenomenon. The patent claims “a method for genotyping a Labrador Retriever” that comprises detecting a specific point mutation, and the method does not recite an inventive concept apart from that natural phenomenon. The claims “begin and end with the point discovery of the [particular] mutation,” and “the parties do not dispute that the mutation itself is a naturally occurring phenomenon.” Under Alice step 2, the claims “do not recite an inventive concept that transforms the observation of a natural phenomenon into a patentable invention” because they use “conventional detection” that is well-understood and routine. There is no “tangible result save the observation and detection of a mutation in a dog’s DNA.”