• Aug 9 2019
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  • Category: CAFC Updates

Genetic Veterinary Sciences sued the University of Bern and LABOKLIN (the University’s exclusive licensee) seeking a declaratory judgment that claims of the University’s U.S. Patent No. 9,157,114 (relating to relates to in vitro methods for genotyping Labrador Retrievers, in order to discover whether the dog might be a genetic carrier of the disease Hereditary Nasal Parakeratosis (“HNPK”)) are patent-ineligible under 35 U.S.C. § 101. The University of Bern and LABOKLIN filed a motion to dismiss the Complaint for, inter alia, lack of subject-matter jurisdiction and lack of personal jurisdiction, arguing lack of sufficient contacts with the forum and the University’s sovereign immunity. The district court denied the motion and the CAFC agrees that 1) the cease-and-desist letter sent by LABOKLIN taken together with both of LABOKLIN’s successful efforts to commercialize by sublicensing the ’114 patent within the United States satisfy the “minimum contacts” element of the due process inquiry for specific personal jurisdiction; and 2) the University cannot claim immunity in the district court because it obtained a U.S. patent and then participated in licensing and enforcing the ’114 patent, which constitutes “commercial activity” under the Foreign Sovereign Immunities Act (“FSIA”). With respect to the district court holding that the asserted claims are patent-ineligible under § 101, the CAFC conducts an Alice analysis.  In the first step of the Alice analysis, the CAFC finds that claim 1 is directed to nothing more than “observing or identifying” the natural phenomenon of a mutation in the SUV39H2 gene.  In the second step of the Alice analysis, the CAFC finds that the asserted claims do not recite an inventive concept that transforms the observation of a natural phenomenon into a patentable invention. Accordingly, the CAFC affirms.

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