Federal Circuit patent decisions
The Federal Circuit reversed a grant of summary judgment, holding that genuine factual disputes existed over whether a trade show brochure triggered the on-sale bar or anticipated the patent, because neither party had presented evidence on how a person of ordinary skill in the art would understand the brochure.
The Federal Circuit held that business method patents are not categorically excluded from patentability — upholding a patent on a computerized financial data processing system for mutual fund management and establishing the ‘useful, concrete, and tangible result’ test for software and business method patent eligibility that dominated patent law until Alice v. CLS Bank (2014).
The Federal Circuit held that UC’s broad patent claims on the insulin cDNA sequence and all vertebrate and mammalian insulin cDNA sequences were invalid for lack of written description — establishing that broad genus claims in biotechnology must be supported by disclosure of a representative number of species sufficient to support the claimed scope.
The Federal Circuit affirmed that Genentech’s patent claims on human growth hormone (hGH) methods were limited by the written description in the specification — holding that claims cannot be broader than what the specification actually describes, even in pioneering biotechnology cases, and establishing important written description doctrine for biotech patent claims.
The Federal Circuit reinforced the principles of conception and reduction to practice in patent priority disputes, clarifying that an inventor’s conception must be complete and definite before any reduction to practice can begin — an important decision for inventorship and priority determinations in pharmaceutical and biotech research.