INTELLECTUAL PROPERTY AND TECHNOLOGY NEWS Perspectives • Analysis • Visionary Ideas SECRETARY COHEN sPEAKs IN TOKYO BuILdINg STrONg rELATIONSHIPS BILSKI’s IMPACT ON • LIFE SCIENCE PATENTS • Finance INdustry Patents • SOFTWArE PATENTS EUROPE’s APPROACH TO PATENTABILITY OF BUsINESS METHODs UPDATE: False Patent MArking Cases The ITC Rolls Out The Red Carpet For Patent Trolls Issue 7, Q3 2010 | www.dlapiper.com/ip_global Attorney Advertising EDITOR’S COLUMN SO What Happens NExT? ADVANCEMENTS IN STEM CELLS The IP community had been anxiously awaiting the United States Supreme Court’s decision in Bilski for some time. Many believed, and some feared, that the Court would eradicate business method patents altogether or significantly curtail the ability of the software, financial services and life sciences industries to obtain patents. Instead, in its decision in late June, the Court deferred the tough questions for another DLA Piper Handles day, leaving us to navigate through a dim, amorphous fog. the First Us Patent for Parthenogenetically Created I was disappointed that the Court did not provide a broader test of Brent K. Yamashita stem Cells patentability that would cut across industries and be more appropriate Partner, Patent Litigation for the digital age than the machine-or-transformation test that was Human stem cell research holds adopted by the Federal Circuit as the exclusive test for patentability tremendous potential for medical of method claims. Instead, while the Court held that the machine- advances, but is at the heart of or-transformation test is not the only possible test, it refrained from offering any alternatives. an ethical and political firestorm. Recently, a significant breakthrough Shortly after Bilski was issued, the US Patent and Trademark Office allowed issuance of the world’s (PTO) issued Interim Guidance for Examiners in analyzing claims in first patent for developing human pending patent applications. This Guidance, which is markedly anti- business method, helps to fill the void left by Bilski. Federal Circuit stem cells without creating or decisions will follow and, we hope, will provide further guidance. destroying a human embryo. DLA Piper helped make it happen, In this issue, we explore the impact of Bilski and provide our thoughts representing International and practical advice on the patent prosecution and litigation fronts in stem Cell Corporation. light of what was said in the opinion as well as what was not said. We focus particularly on the life science, financial services and software The patent protects industries, which are still the industries most affected by Bilski, and we a method of also offer a comparative examination of Europe’s approach to business creating stem cells method patents. from an unfertilized Although disappointing in scope and degree of clarity, Bilski does, at egg. “This patent least, provide an opportunity for the IP community to offer creative Dr. Lisa Haile Co-Chair, validates the arguments and propose new tests for patentability to courts and the PTO. Global Life company’s core sciences sector After all, turning abstract notions (whether in patent law or patents technology and themselves) into something concrete is how we IP attorneys earn our keep. gives our client a significant position in the entire stem cell field,” says Dr. Lisa Haile, Relationship Partner for International stem Cell [email protected] Corporation. In addition to applying for the groundbreaking patent, DLA Piper counseled the company on how to align its This newsletter is also available as a digital PDF at http://www.dlapiper.com/IPT_Newsletter7. business and IP strategies. “You In support of our Global sustainability Initiative, this publication is printed on 100% recycled paper. have to be proactive and predictive Please recycle this newsletter or share it with others. about what will come out of the science and apply it to the you are receiving this communication because you are a valued client, former client or friend of dLA Piper. The information contained law. You never get ahead of the in this newsletter is for informational purposes only and should not be construed as legal advice on any matter. To unsubscribe from competition if all you are doing is this mailing list, send an email to [email protected] or send your written request to: dLA Piper, Attention: Marketing department, 401 B Street, Suite 1700, San diego, California 92101-4297, uSA. Copyright © 2010 dLA Piper llp (us), dLA Piper uk llp being reactive,” says Dr. Haile. and other affiliated entities. For questions, comments and suggestions, email us at [email protected] or contactd iane Vislisel, Senior Practice and Industry Marketing Manager, T +1 619 699 3541, [email protected]. uS Chair – Intellectual Property and Technology, John Allcock: T +1 619 699 2828, [email protected]. Past results are not a guarantee of Editor in Chief, Brent k. yamashita: T +1 650 833 2348, [email protected]. future success. dLA Piper llp (us), 401 B Street, Suite 1700, San diego, California 92101-4297, uSA. SUPREME COURT Welcome Aboard ISSUES BILSKI DECISION I am very pleased to announce that, as of this writing, more than By Brent Yamashita and stan Panikowski 20 new professionals have joined our IPT On June 28, 2010, the United states alternative tests or guidance, beyond group, located in our supreme Court issued its long-awaited reiterating that abstract ideas are not Los Angeles and Tokyo decision in Bilski v. Kappos, 130 s. Ct. patentable. This vacuum likely will offices, led by nationally 3218 (2010), ruling on the Federal create new litigation battlefields. Future and internationally Circuit’s en banc decision that the litigation likely will center on whether recognized patent John Allcock so-called machine-or-transformation an asserted claim recites an abstract litigator Rich de Bodo. test is the sole test for determining idea and whether any claim elements Partner whether a process is patentable under that the patent holder asserts are non- Our new lawyers fit Global Co-Chair and 35 U.s.C. §101, and more generally, abstract are merely attempts to limit an in perfectly because Us Chair, Intellectual whether business methods can be abstract idea to one field of use or to they reflect our Property and Technology patentable. The Federal Circuit decision add token post-solution components to group’s existing core had created a penumbra of doubt about an otherwise abstract idea. competencies. Many of the patentability of certain technologies, them are accomplished The first post-Bilski guidance was ranging from software to medical trial lawyers – which has been our most basic provided by the Us Patent and diagnostic procedures and equipment. strength since our firm began. Our group’s combined Trademark Office on July 27, 2010, when track record is impressive: since 2002, our patent The patent application at issue it issued Interim Guidelines in response litigators have tried 24 patent cases to conclusion, involved methods for hedging risk in to Bilski in the Federal Register, Volume and have prevailed in 21 of them. Most of our new commodities trading. The claims were 75, No. 143. The Guidelines provide lawyers have technical backgrounds in electronics classic “business method” claims in that criteria for Examiners to consider in and life sciences, including a number with advanced they recited steps that were performed deciding whether a claim recites an degrees. This adds to the deep technical bench we as part of a business operation. The abstract idea. Notably, in an attempt to already have, and to which we have been committed Patent Office rejected the claims, provide clarity on the types of business since we started. We now have more than 70 lawyers and the rejection was then appealed methods that are patentable, the admitted to the patent bar, many with advanced to the Federal Circuit and ultimately Guidelines state that the presence of a technical degrees. was the subject of an en banc decision “general concept” in executing method in In re Bilski¸ 545 F.3d 943 (Fed. Cir. steps “can be a clue that the claim is In addition, our new lawyers have a substantial 2008), holding that a claimed process is drawn to an abstract idea.” Examples international dimension – fitting for a firm with a patentable only if it is tied to a particular provided by the Guidelines include basic 400-person international IPT group found in over 40 machine or apparatus or it transforms economic practices or theories, mental cities in 20-plus countries with top patent litigation a particular article into a different state activities, interpersonal interactions capabilities in all the important international venues. or thing. The court referred to this as or relationships, and instructing how Our new group includes a strong Japanese practice the “machine-or-transformation test.” business should be conducted. with many talented bilingual patent attorneys in both our Los Angeles and Tokyo offices. The supreme Court issued its decision Bilski, and the many court and PTO on the last day of the October 2009 decisions that surely will follow in its Indeed, as I write this note I am returning from term. Although many expected the Bilski wake, will have a particularly strong spending a week with many members of our new decision to have a dramatic impact on impact on the life science, financial team, visiting many new, and some old, DLA Piper the patent world, it is remarkable for services and software industries – clients in Tokyo, Kyoto and Osaka. The week had how little it decided. The majority of the focus of the articles that follow. an exciting end – a reception in Tokyo attended by the Court expressly agreed on only The same issues discussed in Bilski many IP clients, featuring an address by former three points: (1) the Federal Circuit’s also have arisen in Europe, and are US Secretary of Defense William S.