August 9, 2019
Patent Litigator Doug Robinson Comments on Swiss University’s Failure to Revive Canine Gene Patent Claims
St. Louis patent litigator Doug Robinson spoke to Bloomberg Law about a precedential decision from the Court of Appeals for the Federal Circuit, unsealed on August 9, which held that patent claims directed to detecting a gene mutation in Labrador Retrievers is invalid under Section 101. The appeals court also rejected the school’s argument for sovereign immunity.
The University of Bern licensed U.S. Patent No. 9,157,144 to LABOKLIN GmbH, a German company that develops veterinary diagnostic tools. In 2017, the university allowed LABOKLIN to send a cease and desist letter to Genetic Veterinary Sciences Inc. over alleged infringement.
Genetic Veterinary Science counter-sued and argued that three of the patent’s five claims were invalid. The District Court for the Eastern District of Virginia found all challenged claims invalid, which the Federal Circuit upheld. In its decision, the CAFC stated that the asserted claims were not directed “to a new and useful method for discovery because they begin and end with the point discovery” of mutated genes. The court also noted that the diagnostic tool uses “conventional or known laboratory techniques to observe” the mutation.
“You need to have something more like a method of treatment. Identify this gene and do something with it, treat something,” Robinson said. “Patent attorneys try to add that additional special thing to get it beyond the concept of just identifying a gene.”
The Federal Circuit’s decision further “reaffirms the idea that just testing for a genotype is not going to get you over 101,” Robinson added.
The Federal Circuit also upheld the rejection of the university’s argument to toss the case on jurisdictional grounds. Because the university sought to enforce its rights via the cease and desist letter LABOKLIN sent to Genetic Veterinary Science, the court was able to rule that jurisdiction did apply. They also rejected an argument for sovereign immunity because the university obtained a U.S. patent, licensed it, and participated in enforcing it.