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O'Malley Calls for Rethink on Natural Phenomena

The medical diagnostics industry has found an ally in its quest to restore patent eligibility for groundbreaking discoveries—even those involving natural phenomena.

Judge Kathleen O'Malley called on the full court to review its case law Tuesdayeven while voting to affirm the latest invalidation, this time a Roche patent on quickly diagnosing drug-resistant tuberculosis.

O'Malley argued in a concurring opinion that the court has been heading down the wrong path since it issued a 2014 opinion known as BRCA1. It was one of the first Federal Circuit opinions to interpret the Supreme Court's Myriad decision on patenting human DNA.

The court ruled in BRCA1 that DNA “primers” derived from human tissue and used to diagnose breast cancer are not patent eligible. O'Malley argued that BRCA1 never should have reached that holding since the only question before the court was whether the accused infringer had raised “a substantial question of patentability” to defeat a preliminary injunction.

Second, the BRCA1 court ruled the synthesized primers are natural phenomena because “they are structurally identical to the ends of DNA strands found in nature.” O'Malley questioned that conclusion. “As the record in this case reveals, a finding that the two have identical sequences does [not] entirely resolve the question of whether they are structurally identical because structure is not defined solely by nucleotide sequence,” she wrote.

Is she right? I sure don't know. But I will say this: O'Malley has a pretty good track record when calling for en banc review. She was one of the judges who persuaded the court to reconsider the scope of appellate review of PTAB decisions. A few years back, her call to reconsider the law of willfulness led to a Supreme Court decision largely adopting her position. So we'll see where this heads.

Erik Puknys of Finnegan, Henderson, Farabow, Garrett & Dunner prevailed for accused infringer Cepheid, at least for today. Hughes Hubbard & Reed represented Roche. Judge Jimmie Reyna penned the opinion for the court.

Roche Molecular Systems v. Cepheid wasn't the only Section 101 opinion from the court Tuesday. A three-judge panel led by Judge Kara Stoll partially reversed U.S. District Judge Leonard Stark and ruled that some patent claims on tabbed three-dimensional spreadsheets are patent eligible. Benjamin Foster of Ahmad, Zavitsanos, Anaipakos, Alavi & Mensing argued for the patent owner in Data Engine Technologies v. Google. King & Spalding represented Google.

StubHub Trade Secret Case Still in Early Innings

U.S. District Judge Stephen Wilson threw cold water on a trade secret suit against online marketplace StubHub last summer, but the litigation is warming up again.

Wilson granted summary judgment to StubHub last month on the headline claim brought by the funders of Santa Monica based startup Calaborate. Specifically, Wilson found that StubHub isn't using source code developed by Calaborate executives who left the company in 2014 and joined StubHub.

But Wilson issued an order last week clarifying that he isn't closing the door on all potential trade secret claims. Calendar Research, the company that now owns Calaborate's assets, can still bring claims under the Defend Trade Secrets Actthat StubHub or the employees wrongfully misappropriated or acquired the code from Calaborate's Klutch scheduling app.

Wilson also ordered “narrow discovery” into whether coding methodologies, computer techniques and know-how might have been purloined. But the company and its Pierce Bainbridge Beck Price & Hecht counsel will have to refine their claims. At present, “plaintiff's vagueness as to the nature of these non-code trade secrets would not create a triable claim under the DTSA,” Wilson wrote.

Wilson also is permitting Calendar Research to add former Calaborate employees to its Computer Fraud and Abuse Act claims. If the employees accessed trade secrets without authorization, “then those actions would amount to a violation of the DTSA as well,” Wilson noted. “This provides even more justification for allowing plaintiff to proceed on the remainder of its DTSA claims.”

RPX Going It Alone on Real Parties

I noted last month that Latham & Watkins had signed on to represent RPX Corp. as it seeks en banc review of the standard for proving whether its subscribers, like Salesforce.com, are real parties in interest who benefit from the defensive patent aggregator's inter partes reviews.

Now RPX's opponent, Applications in Internet Time, has filed opposition accusing RPX of misleading the court and generally urging the Federal Circuit to stick with its original ruling. Notable is a footnote challenging RPX's assertion that the issue is of “exceptional importance.”

“This bald assertion is contradicted by the absence of amicus briefs, not even from Salesforce,” Applications in Internet Time's counsel Steven Sereboff of SoCal IP Law Group writes. “The petition is a matter of selfish interest.”

Well duh! Is Salesforce going to file an amicus saying, “We had absolutely nothing to do with RPX's IPR, but nevertheless we feel compelled to support its en banc petition”? Are any of RPX's other subscribers, arguably not as closely aligned with RPX as Salesforce, going to step forward? Is Unified Patents, whose business model now depends on distinguishing it from RPX's, going to say, “All for one, and one for all!”

Sereboff might as well have written “Neener neener neener!” Nobody's going to file an amicus curiae in this case. Maybe an animus curiae. Not an amicus.

Who Got the Work?

Everything about Michael Jackson seemed larger than life. So, too, will a copyright battle between his estate and The Walt Disney Co. if it ever goes to trial. Two legendary names in entertainment law, Kinsella Weitzman Iser Kump & Aldisert's Howard Weitzman and O'Melveny & Myers's Daniel Petrocelli, have signed for the fight over the ABC documentary “The Last Days of Michael Jackson.” MJJ Productions v. The Walt Disney Co. is pending before U.S. District Judge Philip Gutierrez of Los Angeles.

➤ The Dispute: Disney affiliate ABC aired the documentary May 24. It featured what Disney characterizes as “short excerpts” of various Michael Jackson songs and videos. Weitzman's complaint reads like an opening statement. Disney, he contends, “has threatened to sue independent childcare centers for having pictures of Mickey Mouse and Donald Duck on their walls.” But when it came to the Jackson documentary, “Disney decided it could just use the estate's most valuable intellectual property for free.” Weitzman contends the documentary wasn't a documentary at all, but rather “a mediocre look back at Michael Jackson's life and entertainment career” that gave Disney an excuse to exploit the estate's IP. Disney says in Petrocelli's answer that “the case is about the right of free speech under the First Amendment and the doctrine of fair use under the Copyright Act.” Disney used less than 1 percent of the works “in most instances,” he states, and it was “for the purpose of reporting on, commenting on, teaching about and criticizing well-known public figures.”

➤ The attorneys: Weitzman is longtime counsel for Jackson's estate. Joining him for this skirmish is Kinella Weitzman partner Jonathan Steinsapir. Petrocelli has tapped partner Drew Breuder and associate Nicole Cambeiro.

That's all from Skilled in the Art this week. I'll have issue No. 101 to you on Friday.

Correction: A previous version of this article attributed the winning argument in Roche v. Cepheid to the wrong law firm. Erik Puknys of Finnegan Henderson represented Cepheid.