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WAKE FOREST JOURNAL OF BUSINESS AND INTELLECTUAL PROPERTY LAW VOLUME 19 NUMBER 1 FALL 2018 HOW TO CLAIM SOMETHING WHEN THE INVENTIVE ASPECT IS A NATURAL LAW Peter A. Hecker 1 COMMENT: HOW THE ACTIONS OF KYLE BASS HAVE FORCED THE USPTO TO EXPAND THE DUTY OF CANDOR AND GOOD FAITH Christopher Lewis 11 COPYRIGHTING DNA: AN OFF-LABEL USE Devdatta Malshe 34 COMMENT: ALEXA, TRANSMIT CLIENT DATA TO AMAZON: ETHICAL CONSIDERATIONS FOR ATTORNEYS LOOKING FORWARD TO VIRTUAL ASSISTANTS Whitney L. Hosey 51 COMMENT: ALWAYS EAT THE FINE PRINT: WHY 3D PRINTED FOOD WILL FINALLY WARRANT INTELLECTUAL PROPERTY PROTECTION FOR RECIPES Jeff Rodgers 72 ABOUT THE JOURNAL The WAKE FOREST JOURNAL OF BUSINESS AND INTELLECTUAL PROPERTY LAW is a student organization sponsored by Wake Forest University School of Law dedicated to the examination of intellectual property in the legal context. Originally established as the Wake Forest Intellectual Property Law Journal in 2001, the new focus and form of the Journal, adopted in 2010, provides a forum for the exploration of business law and intellectual property issues generally, as well as the points of intersection between the two, primarily through the publication of legal scholarship. The Journal publishes four print issues annually. Additionally, the Journal sponsors an annual symposium dedicated to the implications of intellectual property law in a specific context. In 2009, the Journal launched an academic blog for the advancement of professional discourse on relevant issues, with content generated by both staff members and practitioners, which is open to comment from the legal community. The Journal’s student staff members are selected for membership based upon academic achievement, performance in an annual writing competition, or extensive experience in the field of intellectual property or business. The Journal invites the submission of legal scholarship in the form of articles, notes, comments, and empirical studies for publication in the Journal’s published print issues. Submissions are reviewed by the Manuscripts Editor, and decisions to extend offers of publication are made by the Board of Editors in conjunction with the Board of Advisors and the Faculty Advisors. The Board of Editors works closely and collaboratively with authors to prepare pieces for publication. Manuscript submissions should be accompanied by a cover letter and curriculum vitae, and may be sent electronically to [email protected] or by mail to: Manuscripts Editor Wake Forest Journal of Business and Intellectual Property Law Wake Forest University School of Law P.O. Box 7206 Reynolda Station Winston-Salem, North Carolina 27109 COPYRIGHT © 2019 WAKE FOREST JOURNAL OF BUSINESS AND INTELLECTUAL PROPERTY LAW ISSN 2164-6937 (Print) ISSN 2164-6945 (Online) BOARD OF ADVISORS DANNY M. AWDEH BARBARA LENTZ Finnegan Henderson Farabow Professor, Wake Forest Garrett & Dunner LLP University School of Law Washington, DC Winston-Salem, North Carolina CHARLES W. CALKINS JAMES L. LESTER Kilpatrick Townsend & Stockton MacCord Mason PLLC LLP Greensboro, North Carolina Winston-Salem, North Carolina MICHAEL S. MIRELES TRIP COYNE Professor, University of the Ward and Smith, P.A. Pacific, McGeorge School of Law Wilmington, North Carolina Sacramento, California RODRICK J. ENNS JUSTIN R. NIFONG Enns & Archer LLP NK Patent Law Winston-Salem, North Carolina Raleigh, North Carolina EDWARD R. ERGENZINGER, JR., ALAN PALMITER PH.D. Professor, Wake Forest FisherBoyles LLP University School of Law Charlotte, North Carolina Winston-Salem, North Carolina JASON D. GARDNER ABIGAIL L. PERDUE Kilpatrick Townsend & Stockton Associate Professor, Wake Forest LLP University School of Law Atlanta, Georgia Winston-Salem, North Carolina STEVEN GARDNER COE W. RAMSEY Kilpatrick Townsend & Stockton, Brooks Pierce LLP Raleigh, North Carolina Winston-Salem, North Carolina T. ROBERT REHM, JR. ROB HUNTER Smith, Anderson, Blount, Clearing House Payments Dorsett, Mitchell, & Jernigan, Company L.L.C. LLP New York, NY & Winston-Salem, Raleigh, North Carolina NC SIMONE ROSE DIRK D. LASTER Professor, Wake Forest Williams Mullen University School of Law Richmond, Virginia Winston-Salem, North Carolina Editor-in-Chief WHITNEY L. HOSEY Managing Editor YUSUF A. BROWN Marketing & Online Editor Manuscripts Editor GABRIELA MEJIAS JUSTINE PARRY Symposium Editor Executive Articles Editors NITI PARTHASARATHY CHARLOTTE LOPER WILLIAM REINGOLD Development Editor TRACEA RICE JOSEPH M. DOUGHERTY II Articles Editors Senior Notes and Comments Editor AVERY BARBER ABIGAIL JACOBS CAMRYN KEETER Notes and Comments Editors KAYLEN LOFLIN JUSTINE MARIE WRIGHT ASHLEY BOUCHEZ MICHAEL JOHNSON Research Editor GREGORY M. VOLK FRANCE BEARD Editorial Staff ALINA E. BOSANAC RALPH J. D’AGONSTINO III E. CARSON LANE LUCAS W. BROWN MAUREEN M. GALLAGHER CHRISTOPHER L. LEWIS JAMIE DANIEL BURCHETTE ANDREW W. HOMER MORGAN N. MCPHERSON JORDAN A. BURKE JULIANA S. INMAN JAMES R. SIPE III JESSICA L. CANNON SARAH R. WARREN PATRICK WILSON Staff Members NICK BLACKWOOD ELLE JOHNSON DAN NORTON RACHAEL H. BOYD HALEY M. KAVANAUGH RACHEL PHELPS PENDER JORDAN CASTROVERDE JAMES N. KURITZKES JOSH RANDALL SARAH V. FRITSCH MELISSA LAWRENCE AMBER RAZZANO KATIE GANO ANNA KILLORAN LONG RAINSFORD REEL JASON A. GONZALEZ WILL MACFARLANE NATHANIEL I. REIFF MEGAN LEIGH GRIER TIM MISNER JOSH REVILLA LAUREN IRWIN SAMANTHA A. MOENCH KYLE STOCKS PHILLIP M. JESTER AMBER M. MORTON ALEXIS A. WRIGHT VANDEN NIBERT Faculty Advisors ALAN PALMITER SIMONE A. ROSE WAKE FOREST JOURNAL OF BUSINESS AND INTELLECTUAL PROPERTY LAW VOLUME 19 FALL 2018 NUMBER 1 HOW TO CLAIM SOMETHING WHEN THE INVENTIVE ASPECT IS A NATURAL LAW Peter A. Hecker† I. INTRODUCTION ................................................................. 2 II. THE INVENTIVE ASPECT OF THE CLAIMS OF VANDA WAS A NATURAL LAW ............................................ 4 III. WHAT TO DO NOW ......................................................... 7 † © 2019 Peter Hecker is an associate at Knobbe Martens in San Diego, CA where he practices intellectual property law. He received his J.D. in 2017 from J.Reuben Clark Law School, Brigham Young University. Peter may be reached at [email protected]. Thanks to Brenden Gingrich, PhD, JD, partner in the San Diego office of Knobbe Martens, for his insight on the strategies for applying Vanda for overcoming § 101 rejections. 2 WAKE FOREST J. [VOL. 19 BUS. & INTELL. PROP. L. NAVIGATING THE EVER-CHANGING LAW OF PATENT ELIGIBILITY PRESENTS NUMEROUS PITFALLS. RECENTLY, THE FEDERAL CIRCUIT MADE A SURPRISE MOVE BY HOLDING THAT PATENT CLAIMS FEATURING A NOVEL DIAGNOSTIC DISCOVERY WERE NOT DIRECTED TO A NATURAL LAW EVEN THOUGH THE NATURAL LAW AT ISSUE WAS PLAINLY THE ONLY INVENTIVE ASPECT OF THE CLAIMS. THIS PRESENTS OPPORTUNITIES FOR PATENT PRACTITIONERS. THE PATENT OFFICE HAS INSTRUCTED EXAMINERS TO IGNORE WHETHER METHOD OF TREATMENT CLAIMS THAT PRACTICALLY APPLY NATURAL RELATIONSHIPS INCLUDE ROUTINE OR CONVENTIONAL STEPS. THUS, PATENT CLAIMS THAT COVER NEWLY DISCOVERED NATURAL PRINCIPLES CAN BE GARNISHED INTO PATENT ELIGIBILITY WITHOUT HAVING TO UNDERGO THE USUAL FULL INVENTIVENESS INQUIRY IF THEY ARE DRAFTED CAREFULLY. I. INTRODUCTION This paper discusses recent Federal Circuit case law relating to whether a patent claim is directed to a judicial exception, such as a natural law.1 In Vanda v. West-Ward, the court concluded that claims were not directed to a judicial exception even though on the outset they appear very similar to the claims in Mayo.2 The difference, as the majority pointed out, was that the claims in Vanda were applied in a specific manner.3 The dissent’s view was that the claims included a judicial exception, and that there was nothing new other than the routine and conventional step of administering a drug to a patient.4 Overall, the Federal Circuit extended itself to define clear bounds for some patents that might fall within the scope of what would otherwise be ineligible under Mayo but that lack the preemption issues normally associated with ineligible subject matter.5 In short, Vanda limited the reach of Mayo and Alice by concluding that patent claims were not directed to a law of nature, even where the claims relied on a natural law for their inventive concept.6 Part of the dispute in Vanda was over a patent on methods of treating a schizophrenic patient with iloperidone. 7 The treatment included 1 See, e.g., Vanda Pharms. Inc. v. West-Ward Pharms. Int’l Ltd., 887 F.3d 1117, 1133 (Fed. Cir. 2018) (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 74–75 (2012)). 2 Id. at 1134. 3 Id. at 1136. 4 Id. at 1142–43 (Prost, C.J., dissenting). 5 See id. at 1135–36. 6 Id. at 1134. The court refers to the Supreme Court’s two-part test for determining patent eligibility as the “Mayo/Alice analysis.” Id. at 1140 (Prost, C.J., dissenting) (citing Mayo, 566 U.S. 66; Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U. S. 208 (2014)). 7 Id. at 1121. continued . 2018] HOW TO CLAIM WHEN NATURAL LAW 3 IS INVENTIVE ASPECT genotyping the patient for a gene called CYP2D6, and giving the patient a low iloperidone dose of 12 mg/day, instead of up to 24 mg/day, to decrease cardiovascular side-effects if the genotype indicated that the patient was a poor CYP2D6 metabolizer. 8 In the majority opinion, Judges Lourie and Hughes noted that “too broad an interpretation of [ineligible subject matter] could eviscerate patent law…” because “all inventions at some level embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract

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