by Vivian Tao
House Passes Patent Reform Bill; Senate and House Versions To Be Reconciled
A few months after the American Invents Act had passed in the Senate, the House voted to pass its version of the bill this week. The controversial bill would overhaul certain areas of the patent system, such as switching from a first-to-invent to a first-to-file system. However, according to Patent Docs, the ACLU and other groups are more concerned that passage of the bill could signal Congressional approval of gene patenting, which could preclude individuals from seeking a second opinion for genetic evaluations. The Hill also notes that there is controversy on whether the bill’s streamlining of the patent process would lead to “efficient infringement” or truly better protection. Despite these issues, Patently O reports that the House and the Senate will likely work together to reconcile differences in their separate versions of the bill and vote on a final version soon. The Digest will have more in-depth coverage of the bill this week.
Oracle Seeks Billions in Damages from Google; Another Oracle Patent Is Severely Narrowed in Rexam
The U.S. Patent Office’s latest findings have helped Google’s case in the latest chapter of Oracle’s ongoing lawsuit against Google for alleged patent infringement regarding the Android operating system. According to Groklaw, the U.S. Patent Office rejected 17 of Oracle’s 21 claims on one of Oracle’s asserted patents. Search Engine Watch reports that this comes on the heels of Google’s motion to place the case under seal to protect confidential information and shareholder confidence, which may have already started to suffer. However, the crux of the case may lie in the damages figure. PCWorld reports that arguments revolve around the damages that Oracle has claimed, between $1.4 and $6.1 billion, which Google says is a gross overestimate. Among the many counterarguments advanced by Google, the Wall Street Journal notes the figure takes Google’s Android advertising revenue into account, but could be disputed since the advertisements and software at issue can run independently. Trial is set to begin in October.
Supreme Court To Hear Prometheus Again
The Supreme Court has agreed to hear Prometheus Laboratories v. Mayo Clinic, a multi-year suit involving the patentability of medical diagnostic tests (the Digest covered the original Federal Circuit ruling). The Supreme Court vacated the Federal Circuit’s original ruling in light of their ruling in In re Bilski, but the Federal Circuit affirmed its original ruling of validity, according to Courthouse News Service. As Techdirt notes, opponents of patenting such tests argue those patents threaten the right to observe natural phenomena, and issuing such patents would also drive up costs and make bedside diagnoses difficult to administer. However, Prometheus asserts that their test “transforms” a blood sample into something that is no longer human and is thus protected by the machine-or-transformation test of patentability. Prometheus also argues that a holding for Mayo might be broad enough to eliminate all diagnostic and therapeutic patents. The Wall Street Journal notes that this could damage the incentives for private investment into therapeutic medicine. Ultimately, when the case is decided, it will have an effect on a range of other patented medical tests that currently exist.
