Juhasz Law Files Amicus Brief in Prometheus; Provides the U.S. Supreme Court With “Physical” and “Virtual” Links Approach to Subject Matter Patentability
The Juhasz Law Firm has filed an amicus brief in Mayo Collaborative Services v. Prometheus Laboratories, Inc. The filing brings before the Supreme Court for the first time the argument of “physical” and “virtual” links, a framework for considering the subject matter patentability of an invention. In Prometheus, this determination will be made in connection with diagnostic method patents involving “observed correlations.”
The amicus brief was filed on Tuesday, November 1, 2011 and the U.S. Supreme Court is scheduled to hear oral arguments on December 7. A highly anticipated decision, Prometheus is likely to have significant affect on how the courts approach diagnostic methods patents, including methods critical to the development of personalized medicine.
The “physical link” and “virtual link” patent claim approach was developed by Juhasz Law to help patent holders find a way out of the Bilski conundrum by defining the boundary line beyond which a claim preempts a fundamental principle (i.e., a law of nature, natural phenomenon, or an abstract idea) and within which the claim does not.
Under this approach, the clue to 35 U.S.C. §101 subject matter patentability lies in whether steps that are central to the claim (i.e., not token extra-solution activity) have a “physical” or “virtual” link to a specific physical or tangible object. In support, Juhasz Law cites U.S. Supreme Court precedent in Diamond v. Diehr for the “physical links” assertion and the century-old O’Reilly v. Morse decision for its “virtual links” contention, two of the bedrock cases decided by the Supreme Court in this area of the law. Amicus Juhasz Law argues that the Prometheus claims have both a “physical” and a “virtual” link and so should be subject matter patentable under 35 U.S.C. §101.
While prior considerations of Bilski have referenced the fifth claim of Morse, this argument breaks new ground by focusing on data that is a representation of a physical or tangible object and its manipulation, thus creating a “virtual” link. There is also a symmetry that exists between a “virtual” link (e.g., data manipulating data representing a physical or tangible object) and a “physical” link (e.g., data manipulating a physical or tangible object), such as of the kind that existed in Diehr (e.g., data signaling a device when to open the molding press and remove the cured rubber product) that adds further weight to the argument.
For a copy of Juhasz Law’s amicus filing with the U.S. Supreme Court go to Publications Page.
The Juhasz Law Firm helps patent holders better understand the value of their intellectual property. For more information about “physical” and “virtual” links and how this approach can help patents withstand a post-Bilski challenge, read Virtual Links.
