Monday, September 8, 2014

Upselling Method and Genotype Screening Patents Invalidated Via 12(b)(6) Motions in Light of Alice Corp.

The magistrate judge recommended granting defendant's motion to dismiss plaintiffs' infringement claims for failure to state a claim because their genotype screening patent-in-suit contained unpatentable subject matter. "Plaintiffs claims are directed to the discovery of a natural law -- that is, that individuals with a particular genetic variation are better sprinters than those without it. . . . [T]he link between a particular genetic variation and the potential for elite athletic performance embodied in Claim 1 is 'a natural process, an eternal truth that 'exists in principle apart from any human action.'' The correlation is the handiwork of nature-man did not do anything to bring about this relationship. . . . [T]he 'analyzing' step is insufficient to make the claim patent eligible. It merely tells the users of the method to analyze a sample obtained from a person for the presence of genetic variations in the ACTN3 gene, without further specification as to how the sample should be analyzed. The claim clearly does not recite a new, innovative method for such analyzation, which could be one way to effect a different outcome here."

Genetic Technologies Limited v. Laboratory Corporation of America Holdings et al, 1-12-cv-01736 (DED September 3, 2014, Order) (Burke, M.J.)

The court granted defendant's motion to dismiss plaintiff's infringement claim for failure to state a claim because the upselling method patent-in-suit lacked patentable subject matter. "[I]t is clear that the [patent-in-suit] is drawn to unpatentable subject matter. It claims the fundamental concept of upselling -- a marketing technique as old as the field itself. While the additional limitations of the claim do narrow its scope, they are insufficient to save it from invalidity. . . . Shrewd sales representatives have long made their living off of this basic practice. . . . A human being can generate an upsell recommendation 'during the course of the user initiated communication,' although perhaps not with the efficiency or speed of a computer. The computer performs nothing more than purely conventional steps that are well-understood, routine, and previously known to the industry."

Tuxis Technologies LLC v. Inc., 1-13-cv-01771 (DED September 3, 2014, Order) (Andrews, J.)

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