Ron Kern

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Supreme Court Denies Review of the Written Description Requirement

Photo of Ron KernBy Ron Kern on Posted in Patent
Just days after agreeing to review the scope of the enablement requirement in Amgen Inc. v. Sanofi, Aventisub LLC, the Supreme Court denied Juno Therapeutics, Inc.’s (Juno) request to review the scope of the written description requirement. Interestingly, both cases involved similar questions – whether the respective portion of 35 U.S.C. §112(a) is governed by … Continue Reading

Characterization of Claim Elements as “Conventional” Results in Section 101 Subject Matter Ineligibility

Photo of Ron KernBy Ron Kern on Posted in Patents
In an attempt to broaden a patent’s disclosure and provide Section 112 support for features that are not explicitly disclosed within the patent’s specification (such as reagents, assays, techniques, etc.), patent applications are often drafted with boilerplate language to indicate that other “conventional,” “well-known” or “routine” features may be used. But acknowledging that features of … Continue Reading

Federal Circuit Holds That Claims Directed to Methods of Treating Pain in a Renally Impaired Patient Are Patent-Eligible Under Section 101

Photo of Ron KernBy Ron Kern on Posted in Patent
For the second time in as many weeks, the Federal Circuit has reversed a district court’s finding of patent ineligibility under Section 101 in the life science space, this time concluding that claims directed to methods of treating pain in renally impaired patients are patent-eligible. In Endo Pharmaceuticals Inc. v. Teva Pharmaceuticals USA, Inc., the … Continue Reading

The Federal Circuit Opens the Door Wider for the Subject Matter Eligibility of Methods of Treatment, Compositions and Methods of Manufacturing

Photo of Ron KernBy Ron Kern on Posted in Patent
“We live in a natural world, and all inventions are constrained by the laws of nature . . . we must be careful not to overly abstract claims when performing the Alice analysis.”[1] These are the promising words from the Federal Circuit in its recent decision in Natural Alternatives v. Creative Compounds, in which the … Continue Reading

Federal Circuit holds that claims directed to diagnosing neurotransmission or developmental disorders are invalid for failing to recite patent eligible subject matter

Photo of Ron KernBy Ron Kern on Posted in Patent
In Athena Diagnostics, Inc. v. Mayo Collaborative Servs., LLC,[1] the Federal Circuit affirmed the district court’s ruling that claims covering methods for diagnosing neurological disorders by detecting autoantibodies are directed to a natural law together with conventional steps, and are therefore invalid under 35 U.S.C. § 101. Although the claims at issue were said to … Continue Reading

Supreme Court Denies Sequenom’s Petition for Certiorari

Photo of Ron KernBy Ron Kern on Posted in Uncategorized
On June 27, 2016, the U.S. Supreme Court, without comment, denied Sequenom’s petition for certiorari, leaving in place the Court’s previous rulings prohibiting the patenting of laws of nature and natural phenomenon. Sequenom filed its writ of certiorari with the U.S. Supreme Court on March 21, 2016, asking the Court to provide clarification regarding the … Continue Reading

Sandoz Requests Supreme Court Review of the Federal Circuit’s Interpretation of Biosimilar Law

Photo of Ron KernBy Ron Kern on Posted in Uncategorized
On February 16, 2016, Sandoz Inc. filed a petition for a writ of certiorari with the U.S. Supreme Court, asking the Court to review the Federal Circuit’s interpretation of the Biologics Price Competition and Innovation Act (BPCIA). The petition presents the following questions to the Court: Whether notice of commercial marketing given before FDA approval … Continue Reading

Federal Circuit denies en banc review of Ariosa v. Sequenom

Photo of Ron KernBy Ron Kern on Posted in Uncategorized
On December 2, 2015, an almost unanimous Federal Circuit decision was issued denying the en banc rehearing of Ariosa v. Sequenom, a case having significant consequences for diagnostic patents and Section 101 case law in general.[1] The concurrences and dissent in the Ariosa case offer insight into how the various judges perceive the existing Section … Continue Reading

Methods of treating a subset of patients are likely nonobvious if the subset exhibits unexpected results

Photo of Ron KernBy Ron Kern on Posted in Uncategorized
In Prometheus Laboratories, Inc. v. Roxane Laboratories, Inc.,[1] a recent decision involving methods of treating a specific subset of patients, the Court of Appeals for the Federal Circuit (“Federal Circuit”) ruled that, although the claims of the patent at issue were invalid as obvious, singling out a particular subset of patients for treatment can still … Continue Reading
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