The patent subject matter eligibility problem has rattled the world of diagnostics for several years, but the U.S. Senate has been silent about legislation in recent months. Patent attorney Michael Borella, of McDonnell Boehnen Hulbert & Berghoff LLP (MBHB), said he does not expect Congress to provide any legislative fix to the problem any time soon.
The U.S. Court of Appeals for the Federal Circuit has decreed that the regulations governing appointment of judges to the Patent Trial and Appeal Board (PTAB) violate the U.S. Constitution – a decision that gives a medical device maker a new bite at patent litigation, but which also raises the question of whether a large number of PTAB decisions will have to be relitigated.
Depending on who's talking, the U.S. patent system may, or may not, be in dire need of reform. In a Senate Judiciary subcommittee hearing Wednesday on the bipartisan STRONGER Patents Act, Sen. Chris Coons (D-Del.) stressed the need to undo the precedent set by the Supreme Court's 13-year-old eBay decision that weakened injunctive relief in infringement cases and to resolve some of the unintended consequences of the 2011 America Invents Act (AIA).
The U.S. Court of Appeals for the Federal Circuit this week sidestepped some of the concerns raised by the biopharma industry, choosing instead to simply vacate and remand two Patent Trial and Appeal Board's (PTAB) decisions that invalidated patent claims involving the securing of communications over the Internet.
Patent holders are wasting their resources when they ask the U.S. Court of Appeals for the Federal Circuit for an en banc rehearing on diagnostic claims that have been declared ineligible because they cite a law of nature.