• Supreme Court grants petition for certiorari in both Ultramercial  and Myriad decisions;
  • Calls into question the jurisprudence of the “complex computer programming” standard for determining subject matter patentability of software patents;
  • And the subject matter patentability of isolated DNA

In our September 29, 2011 blog, we reported on the September 15, 2011 decision of the federal circuit in Ultramercial v. Hula, in which the court found software claims subject matter patentable under 35 U.S.C. 101 because they involved “complex programming.” On May 21, 2012 the U.S. Supreme Court granted a petition for certiorari in Ultramercial v. Hula¹, vacating that judgment and remanding the case to the federal circuit for further consideration in light of Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. ___ (2012).

Earlier, on March 26, 2012, the U.S. Supreme Court granted a petition for certiorari in Ass’n for Molecular Pathology v. Myriad Genetics, et al², a decision that held isolated DNA to be subject matter patentable. The case was likewise remanded to the federal circuit for reconsideration also in light of Prometheus. We reported on the July 29 decision of the federal circuit in our August 10, 2011 blog regarding Association for Molecular Pathology, in which the federal circuit found isolated DNA subject matter patentable but was unable to agree on the reason why—if new—is it per se patentable? Or does it also require a demonstration of “new usefulness” to be patentable.

Both remands by the Supreme Court do not necessarily mean that a majority of the justices disagree with the original decisions. But they may suggest that the analysis used by the federal circuit needs to align with Supreme Court analysis in its Prometheus decision. At least that may be the case in the grant of certiorari in Ultamercial. Perhaps the guidance provided is that on remand, the federal circuit should adopt the language of the Supreme Court in Prometheus in lieu of the federal circuit’s “complex programming” test. That, and explaining “how” the steps of “providing said media products for sale on an Internet website” and of “restricting of the general public access to the media”—steps that the court found made the recited computer an application specific computer—do not preempt the abstract idea.

With Association for Molecular Pathology, the purpose of the remand is less clear. Either the Court is signaling the federal circuit to fine tune its decision on the single method claim that was held to be subject matter patentable. Or the Court may be signaling that the Prometheus and Bilski analysis, which is applicable to “process” claims, will have a “spill-over” affect on the composition claims in the case if the composition claims invoke a process; i.e., are the composition claims reciting isolated DNA in fact process claims to be judged for subject matter patentability under Prometheus?

By way of further background on this point, at issue in Association for Molecular Pathology were composition claims directed to isolated DNA “coding for a” polypeptide, which were held to be subject matter patentable. (the emphasis added illustrates one way that the composition claim could be read to be a process)

Also at issue were a number of method claims, all but one reciting steps of “comparing” and “analyzing” two gene sequences and which the court found to fail 101 because they claimed abstract mental processes.

So the remand suggests Supreme Court concern with either the holding of subject matter patentability of a single method claim directed to a method for screening potential cancer therapeutics via changes in cell growth rates. (‘282 patent claim 20)  Or to the subject matter patentability of isolated DNA claims themselves, if the Court is signaling that the claims are to be read to be a “process” even though the claims are worded to recite a “composition” (e.g., ‘282 patent claim 1 “[a]n isolated DNA coding for a BRCA1 polypeptide, said polypeptide having the amino acid sequence set forth in SEQ ID NO:2”). (emphasis added)

The recent certiorari grants by the Supreme Court have put the subject matter patentability of software and diagnostic methods down but not out. Absent Congressional action to the contrary, software patents and diagnostic method patents that do not preempt a phenomena of nature, a mental process, or an abstract idea remain patentable subject matter under the Supreme Court’s own precedents.

The Juhasz Burge PC Firm can help you to define the boundary line beyond which a software or diagnostic method patent preempts a phenomena of nature, a mental process, or an abstract idea and within which it is subject matter patentable. For more information regarding these cases and advice on how these decisions may affect your patents, please contact The Juhasz Burge PC Firm. Your patents may be your most important asset. To help you protect your patents, contact Juhasz Burge PC, the firm committed to Guiding Your Patent Beyond The Horizon(sm).

¹ WildTangent v. Ultramercial (Supreme Court 2012) Docket No 11-962.

² Ass’n For Molecular Pathology v. Myriad Genetics, et al., (Supreme Court 2012) Docket No 11-725.