Loren Donald Pearson

Loren Donald Pearson is a Registered Patent Attorney and a Florida Bar Board Certified Intellectual Property Attorney.  He is a partner at Assouline & Berlowe, PA and leads its intellectual property group.  Read his profile

  Email Newsletter icon, E-mail Newsletter icon, Email List icon, E-mail List iconJoin Email List  

Entries in US Supreme Court (3)


Supreme Court Rules DNA Not Patentable Subject Matter: Association for Molecular Pathology v. Myriad

The U.S. Supreme Court in Association for Molecular Pathology v. Myriad held unanimously (9-0) that isolated DNA is not patentable subject matter and cDNA is patentable. 

The NY Times cover article explains some broader significance.  The times believes that this will make additional genetic tests immediately more available and less expensive.  As mentioned in an article by The Nation, "Myriad’s attorney argued that invalidating the patent would limit the incentive for future investments in biotechnology."

PBS NewsHour gave an interesting video review including Former USPTO Commissioner Q. Todd Dickinson (not my favorite commissioner) and an Sandra Park giving the ACLU comments

Patently-O posted its usual good legal commentary on the opinion and separately on Scalia's concurrence.

I am trying to get some comments from the non-legal field on the case.


US Supreme Court Affirms Invalidity Must be Proven by Clear and Convincing Evidence

Microsoft Corp. v. i4i Ltd. Partnership

The US Supreme Court in Microsoft Corp. v. i4i Ltd. Partnership affirmed that 35 USC 282 requires an invalidity defense to be proved by clear and convincing evidence.  The opinion was deliverd on June 9, 2011.

Read the slip opinion.  SOTOMAYOR, J., delivered the opinion of the Court, in which SCALIA, KENNEDY, GINSBURG, BREYER, ALITO, and KAGAN, JJ., joined. BREYER, J., filed a concurring opinion, in which SCALIA and ALITO, JJ., joined. THOMAS, J., filed an opinion concurring in the judgment. ROBERTS,
C. J., took no part in the consideration or decision of the case.

This results maintains the legal value of patents to patent holders and prevent those rights from being diminished.

Read "Microsoft Loses Final Appeal in $290 Million Patent Case" for the NY Times story on the case.

Microsoft Loses Final Appeal in $290 Million Patent Case


US Supreme Court Patent Decision: Stanford v. Roche

Board of Trustees of Leland Stanford Junior Univ. v. Roche Molecular Systems, Inc.

In Board of Trustees of Leland Stanford Junior Univ. v. Roche Molecular Systems, Inc., Chief Justice Roberts of the US Supreme Court delivered the opinion of the court and held that the Bayh-Dole Act does not automatically vest title to federally funded inventions in federal contractors or authorize contractors to unilaterally take title to such inventions.

The case has particular relevance for anyone conceiving or reducing to practice an invention who is receiving government funds for the research or is working for a contractor receiving funds from the US government.

The impact will be felt by university and public-funded employers and the researchers working for them.

In particular, anyone working with government funded research should have their employment agreements reviewed.

The slip opinion is available: Board of Trustees of Leland Stanford Junior Univ. v. Roche Molecular Systems, Inc.

A deeper discussion of the implications will follow.  There are significant warnings given in the dissent by Justices Breyer and Ginsberg.