University of Missouri law professor Dennis Crouch writes on Patently-O that the Supreme Court continues to take an active interest in patent cases, with three currently pending before the Court as it begins its new term:

Mayo v. Prometheus: Subject matter patentability of processes, redux. In Mayo, the Supreme Court will revisit the issue of patentable processes in a case that was the subject of a grant-vacate-remand order following Bilski. The Court has asked the parties to answer whether 35 U.S.C. § 101 is satisfied by a patent claim that covers observed correlations between blood test results and patient health, so that the claim effectively preempts all uses of the naturally occurring correlations, simply because well-known methods used to administer prescription drugs and test blood may involve “transformations” of body chemistry. Argument is set for December 7, 2011, with the case prompting substantial debate and numerous amici submissions. 

Kappos v. Hyatt: Standard of review of patent office appeals to the district court.  In Kappos v. Hyatt, the Supreme Court will address the de novo nature of a civil action brought by a patent applicant under 35 U.S.C. § 145. The Federal Circuit, sitting en banc, previously held that in such a proceeding the applicant many present new evidence to the district court and that any factual conclusions impacted by that evidence must be determined de novo, without deference to the patent office. The Supreme Court has not yet set oral argument. 

Caraco v. Novo: Counterclaims relating to brand name description of claim scope. This case relates to a generic company’s ability to seek a counterclaim to correct a brand pharmaceutical company’s alleged misdescription of patent claim scope submitted to the FDA. Oral argument is set for December 5, 2011.

Briefs are available through the American Bar Association’s Supreme Court coverage site.

Source: Patently-O

Posted October 5th, 2011 under Tech Transfer

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