We will be discussing a Supreme Court case and a 9th Circuit case during our weekly SoCal IP Institute meeting on Monday, April 2, 2012. Brief synopses are presented below:

Mayo Collaborative Servs. v. Prometheus Labs., Inc. (March 20, 2012) (attached).

Prometheus holds two patents which concern the use of thiopurine drugs in the treatment of autoimmune diseases. When a patient ingests a thiopurine compound, his or her body metabolizes the drug, causing metabolites to form in the bloodstream. Because the way in which people metabolize thiopurine compounds varies, the same dose of a thiopurine drug affects different people differently.  Those in the field did not know the precise correlations between metabolite levels and likely harm or ineffectiveness. The claims at issue set forth processes embodying researchers’ findings that identified these correlations with some precision. Prometheus sells diagnostic tests that embody these processes. For some time, Mayo bought and used these tests. In 2004, Mayo announced that it intended to begin using and selling its own test. Prometheus then brought this suit. The trial court reasoned that the patents claim natural laws that are not patentable. The Federal Circuit disagreed, finding that in addition to natural correlations, the claimed processes specified steps that involve the transformation of the human body or blood taken from the body.

In a unanimous decision, the Supreme Court stated that the claimed processes did not transform unpatentable natural laws into patent-eligible applications of those laws. The steps in the claimed processes involved well understood, routine, conventional activity previously engaged in by researchers in the field.  The court stated that the patent claims did not add enough to their statements of the correlations to allow the processes they described to qualify as patent-eligible processes that applied natural laws. The “administering,” “determining,” and “wherein” steps were not sufficient to transform the nature of the claims. These steps added nothing specific to the laws of nature other than what was well understood, routine, conventional activity, previously engaged in by those in the field.  The court held that the patent claims at issue effectively claimed the underlying laws of nature themselves and consequently, were invalid.

Skydive Arizona, Inc. v. Quattrocchi, Case No. 10-16099 (9th Cir. Mar. 12, 2012) (attached).

In a suit by the owner and operator of a skydiving center against the operator of an internet and telephone-based skydiving advertising service for false advertising, trademark infringement and cybersquatting: 1) the district court’s grant of partial summary judgment to the plaintiff on its false advertising claim is affirmed, where the district court did not err in finding materiality based upon a declaration and evidence from other consumers rather than the results of a consumer survey; 2) the district court did not abuse its discretion in upholding the jury’s award of actual damages and lost profits; and 3) the district court’s actual damages enhancement is reversed because it hinged upon punishing the willful conduct of the defendant.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, March April 2, 2012 at Noon in our Westlake Village office. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to Amanda Jones by 9 am Monday morning.