Test Kit Claims, but not Method Claims, of Tuberculosis Testing Patent Invalid Under 35 U.S.C. § 101​

The magistrate judge recommended granting in part defendants' motion to dismiss because the asserted claims of plaintiff’s tuberculosis testing patents encompassed unpatentable subject matter and found that the test kit claims, but not the method claims, lacked an inventive concept. "[T]he patented invention improves on existing methods for diagnosing TB by making diagnosis more convenient, less dependent on a physician’s subjective interpretation of results, and more accurate. There is thus a plausible reading of the patents by which one could find that the plaintiff’s in vitro tuberculosis test involves an inventive concept. . . . At this early juncture, the Court concludes that the in vitro aspect of the plaintiff’s tuberculosis test is an 'inventive concept' because it improves on prior methods of detecting tuberculosis infection. It follows that the method claims, which describe the in vitro test, are potentially drawn to patentable subject matter. In contrast, the kit claims only describe the peptide panel itself and do not involve the 'inventive concept' of an in vitro test, and thus are not drawn to patentable subject matter."

Oxford Immunotec Ltd. v. Qiagen NV et al, 1-15-cv-13124 (MAD August 31, 2016, Order) (Cabell, MJ)