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IP Litigation: A Quarterly Update
Volume 9, Issue 1


Authors:
Lynn C. Tyler and Peter Zura

Abstract:
Recently, two important decisions affecting patent litigation and prosecution were handed down by the United States Supreme Court.

In Mayo Collaborative Services v. Prometheus Labs., Inc., the Supreme Court ruled that the asserted claims in Prometheus’s patents to a diagnostic method were not eligible for patent protection under 35 U.S.C. § 101 because they covered laws of nature and “the steps in the claimed processes (apart from the natural laws themselves) involve well-understood, routine, conventional activity previously engaged in by researchers in the field.”

In Kappos v. Hyatt, the Supreme Court addressed the procedures a district court follows under 35 U.S.C. § 145—a longstanding, but relatively unknown, provision that allows an applicant whose claims have been rejected by the Patent and Trademark Office (“PTO”) to file a new action in federal district court challenging the rejection. The Court ruled that an applicant’s presentation of new evidence to the district court requires that court to make de novo factual findings that consider both the new evidence and the administrative record. However, the Court clarified that deference should be given to PTO factual findings if the applicant fails to present any new contradictory evidence at trial. This is the second in a series of quarterly updates on cases that involve or have implications for nanotechnology patent litigation.

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