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Federal Circuit – No Dismissal for Lack of Patentable Subject Matter

Ultramercial v. Hulu, Case No. 2010-1544 (Fed. Cir. June 21, 2013)

The district court had dismissed Ultramercial’s claims for failing to comply with the requirements of 35 U.S.C. Sec. 101.  The Federal Circuit reversed, and stated that “it will be rare that a patent infringement suit can be dismissed at the pleading stage for lack of patentable subject matter.”  This is because the patent already carries the USPTO’s stamp of approval, and must be invalidated only on a showing of clear and convincing evidence.  In addition, the Court pointed out that a determination under 35 U.S.C. Sec. 101 is “rife with underlying factual issues”  and that “claim construction normally will be required.”

Isolated Genes – Not Patentable / Synthetic Genes – Patentable

Association for Molecular Pathology v. Myriad

We will post more about this in the next few days, but, in summary, the Supreme Court determined that isolated genes do not comprise patentable subject matter under 35 U.S.C. 101 while synthesized genes (so called cDNA) was deemed patentable.