On December 17, 2020, Chris Loh was quoted in Law360 on the most important patent cases of 2020, including Nike v. Adidas, Hunting Titan v. DynaEnergetics, and Illumina v. Ariosa.
According to the article, the Federal Circuit said in April that the Patent Trial and Appeal Board (PTAB) can devise its own reasons for rejecting proposed amended patent claims when it revived Nike's long-running bid to amend a shoe patent challenged by Adidas. But then a few months later, the PTAB's Precedential Opinion Panel (POP) ruled in Hunting Titan that the board should craft its own reasons to reject proposed amended claims only in "rare circumstances."
While the POP acknowledged that the Federal Circuit gave the PTAB broad authority, it said widespread use "would significantly diminish the incentives" for petitioners to make strong invalidity arguments by putting the onus on the board to come up with them and "would also greatly undermine the efficiency" of the proceedings.
"Time will tell what sort of rare circumstances allow the PTAB to conduct the sua sponte review of substitute claims," said Loh.
Loh also noted the importance of Illumina v. Ariosa. In March, the Federal Circuit revived claims of two Sequenom Inc. patents licensed by Illumina Inc., saying that unlike other fetal DNA testing patents previously challenged by Ariosa Diagnostics, they aren't directed to natural phenomena. The 2-1 decision held that the claims are directed to a specific method of harnessing natural phenomena, not the phenomena itself, meaning they are patent eligible under Section 101 of the Patent Act.
"It offers some hope to those in the biotech industry as to the patentability of matters related to diagnostic methods," Loh said.
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