Archive | IP

Golden Hour Data System, Inc. Patent Enforceable After Court Re-Analyzes Inequitable Conduct

Golden Hour Data Systems, Inc. holds U.S. Patent No. 6,117,073 (“the ’073 patent”) for an integrated emergency medical transportation database system.  In March of 2009, the United States District Court for the Eastern District of Texas found that inequitable conduct has been committed, based upon the pre-TheraSense1 standard, and concluded that the ’073 patent was unenforceable.  See 2:06-cv-00381 at Document # 284; 2009 WL 781334.  However, on August 15, 2012, after reanalyzing the inequitable conduct issues and applying the post-TheraSense standard, the court concluded that inequitable conduct had not been proven by clear and convincing evidence and, therefore, the ’073 patent is not unenforceable on this ground.  See 2:06-cv-00381 at Document # 386; 2012 WL 3494366. Continue Reading →

Federal Circuit Addresses Patent Eligibility of Myriad Genetics Claims

On August 16, 2012, the U.S. Court of Appeals for the Federal Circuit handed down its opinion in the case of Ass’n for Molecular Pathology v. U.S. Patent & Trademark Office (No. 2010-1406) (see PDF here). At issue in this case was whether Myriad Genetics, Inc.’s claims for certain compositions of matter (isolated DNA molecules) and methods (one screening potential cancer therapeutics and others comparing or analyzing DNA sequences) were drawn to patent-ineligible subject matter under 35 U.S.C. § 101. The Court decided that Myriad’s claims covering the isolated DNA molecules were patent eligible because they claimed nonnaturally occurring compositions of matter. The Court decided that Myriad’s method claim to screen potential cancer therapeutics was also patent eligible because it relied upon changes in growth rates of nonnaturally occurring cells transformed by human effort. The Court decided that Myriad’s claims directed to comparing or analyzing DNA sequences were patent ineligible, however, because they covered only abstract mental steps.

Should you have any questions, please contact Spencer Goodson at 317.977.1416 or

U.S. Supreme Court decides Mayo v. Prometheus

The U.S. Supreme Court handed down its opinion yesterday in the case of Mayo Collaborative Servs., dba Mayo Med. Labs., et al. v. Prometheus Labs., Inc. (No. 10-1150) (March 20, 2012) (see PDF here).  The Court reversed the U.S. Court of Appeals for the Federal Circuit and held that the patent claims at issue merely set forth laws of nature and were not, therefore, patentable subject matter under 35 U.S.C. § 101.

At issue in this case were Prometheus’ patent claims setting forth methods of using thiopurine drugs (as opposed to the drugs themselves) in the treatment of autoimmune diseases by causing a patient to ingest thiopurine drugs and then adjusting treatment based upon correlations between certain metabolite levels appearing in the patient’s blood and the efficacy and toxicity of the drugs.  The Court decided that the Prometheus’ claims did not add enough over and above its mere statements of the correlations.  In other words, the Court believed that the patent inappropriately attempted to claim laws of nature, as opposed to processes applying such laws of nature.

Should you have any questions, please contact Spencer Goodson at 317.977.1416 or


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