The following is an Austin, Texas patent attorney’s overview of Mayo v. Prometheus, and learning lessons for patent attorneys. BRIEF OVERVIEW: Claim 1 of Prometheus’ 6,355,623 patent which is in question in this case, recited: A method of optimizing therapeutic efficacy for treatment of an immune-mediated gastrointestinal disorder, comprising: (a) administering a drug providing 6-thioguanine [...]

OVERVIEW: This case is a re-examination case with issue pertaining to § 112, ¶ 6, and when means plus function limitations should be invoked if a claim recites a function but does not elaborate a sufficient structure, material of acts within the claim itself to perform the recited function. The patent under reexamination assigned to [...]

OVERVIEW: Mirror Worlds, LLC had patents with claims directed towards storing computer files in a chronological order based on a time stamp instead of the conventional name of the computer file. By keeping track of all the documents on a computer in a chronologically ordered stream, Mirror Worlds stated that the invention enhances the quality [...]

BRIEF OVERVIEW: This case is related to re-combinations of DNA sequences that do not occur in nature, where a protein is used to enable the recombination.  The claimed method of the defendant used a modified version of a naturally occurring “wild-type” protein to enable the recombination. The board held that the method as claimed by [...]

BRIEF OVERVIEW: This case deals with inequitable conduct relating with filing references in information disclosure statements.   The court standard of review is set out in Therasense for non-disclosure of references to the USPTO. see 649 F.3d at 1290-91. In this case, Attorneys for 1st Media failed to disclose various references that were cited in cross-referenced [...]