Page 51 - IP Record
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The IP Record - 2014 49
IPO’s 4-Star Federal Circuit Summaries™
Robert Bosch, LLC v. Pylon Mfg. Corp. 11-1363
FEDERAL CIRCUIT HAS JURISDICTION Federal Circuit jurisdiction over judgments “fnal
OVER PATENT INFRINGEMENT APPEAL except for an accounting.” The majority decided
WHEN DAMAGES AND WILLFULNESS that according to the statute, including its history
REMAIN UNDECIDED — June 14, 2013 — and policy, and well-settled precedent, a trial on
In an opinion by Judge PROST, a sharply divided damages and willfulness is an accounting. Judge
Federal Circuit sitting en banc held the court has O’MALLEY, joined by Judge WALLACH, fled
jurisdiction over appeals from patent infringe- a 34-page dissenting opinion arguing that the ma-
ment decisions when damages and willfulness is- jority’s interpretation of an accounting stretched
sues remain undecided. Bosch’s patents claimed the statute beyond congressional intent and rea-
windshield wiper technology. The district court sonable bounds. Judges MOORE and REYNA
bifurcated infringement liability and damages both fled opinions concurring on damages, but
and willfulness into separate trials and entered dissenting on willfulness.
judgment only on liability. At issue was section
1292(c)(2) of Title 28 U.S. Code, which confers
Association for Molecular Pathology v. Myriad Genetics, Inc. 12-398
U.S. SUPREME COURT HOLDS ISOLAT- isolated DNA sequences were naturally occur-
ED DNA NOT PATENT-ELIGIBLE SUB- ring. Although Myriad discovered the location
JECT MATTER — June 14, 2013 — In an of the genes and isolated them from the sur-
opinion by Justice THOMAS, the U.S. Supreme rounding genetic material, that was “not an act
Court unanimously overturned a Federal Circuit of invention.” The location and order of the DNA
decision that claims to isolated DNA sequences sequences existed before Myriad discovered and
were patent-eligible subject matter. The unani- isolated them. Myriad did not create or alter the
mous court upheld patent subject matter eligibil- genetic structure of the DNA or any of the genetic
ity, however, for cDNA claims. Myriad claimed information encoded in the genes. Myriad cre-
isolated DNA and cDNA compositions related ated the cDNA, on the other hand, by removing
to the BRCA1 and BRCA2 genes. Certain al- regions called introns and leaving a non-naturally
terations or mutations of those genes indicated a occurring exons-only molecule. Justice SCALIA
predisposition to breast and ovarian cancers. At fled a short concurring opinion saying he did not
issue was whether those compositions of matter join in “portions of the . . . opinion going into fne
were patent-ineligible natural phenomena. The details of molecular biology.”
www.ipo.org
IPO’s 4-Star Federal Circuit Summaries™
Robert Bosch, LLC v. Pylon Mfg. Corp. 11-1363
FEDERAL CIRCUIT HAS JURISDICTION Federal Circuit jurisdiction over judgments “fnal
OVER PATENT INFRINGEMENT APPEAL except for an accounting.” The majority decided
WHEN DAMAGES AND WILLFULNESS that according to the statute, including its history
REMAIN UNDECIDED — June 14, 2013 — and policy, and well-settled precedent, a trial on
In an opinion by Judge PROST, a sharply divided damages and willfulness is an accounting. Judge
Federal Circuit sitting en banc held the court has O’MALLEY, joined by Judge WALLACH, fled
jurisdiction over appeals from patent infringe- a 34-page dissenting opinion arguing that the ma-
ment decisions when damages and willfulness is- jority’s interpretation of an accounting stretched
sues remain undecided. Bosch’s patents claimed the statute beyond congressional intent and rea-
windshield wiper technology. The district court sonable bounds. Judges MOORE and REYNA
bifurcated infringement liability and damages both fled opinions concurring on damages, but
and willfulness into separate trials and entered dissenting on willfulness.
judgment only on liability. At issue was section
1292(c)(2) of Title 28 U.S. Code, which confers
Association for Molecular Pathology v. Myriad Genetics, Inc. 12-398
U.S. SUPREME COURT HOLDS ISOLAT- isolated DNA sequences were naturally occur-
ED DNA NOT PATENT-ELIGIBLE SUB- ring. Although Myriad discovered the location
JECT MATTER — June 14, 2013 — In an of the genes and isolated them from the sur-
opinion by Justice THOMAS, the U.S. Supreme rounding genetic material, that was “not an act
Court unanimously overturned a Federal Circuit of invention.” The location and order of the DNA
decision that claims to isolated DNA sequences sequences existed before Myriad discovered and
were patent-eligible subject matter. The unani- isolated them. Myriad did not create or alter the
mous court upheld patent subject matter eligibil- genetic structure of the DNA or any of the genetic
ity, however, for cDNA claims. Myriad claimed information encoded in the genes. Myriad cre-
isolated DNA and cDNA compositions related ated the cDNA, on the other hand, by removing
to the BRCA1 and BRCA2 genes. Certain al- regions called introns and leaving a non-naturally
terations or mutations of those genes indicated a occurring exons-only molecule. Justice SCALIA
predisposition to breast and ovarian cancers. At fled a short concurring opinion saying he did not
issue was whether those compositions of matter join in “portions of the . . . opinion going into fne
were patent-ineligible natural phenomena. The details of molecular biology.”
www.ipo.org
