Driven to Abstraction: The Implications of McRO for Diagnostic Patents

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Last month, the Court of Appeals for the Federal Circuit (“CAFC”) handed down their decision on the case of McRO, Inc. v. Bandai Namco Games Am. Inc (Fed. Cir. Sep. 13, 2016) (“McRO”). Commentators have already hailed the decision as providing significant clarity and guidance on subject-matter eligibility for patents under 35 U.S.C. §101 (“§101”) and on pre-emption. It has been lauded by Erich Andersen of Microsoft for providing key guidance for software developers. Others have remarked on the implications for those seeking patents on methods of medical diagnosis. Though not binding on the Supreme Court (and by no means a guarantee of the direction that Court might eventually take), I believe inventors in the medical arena can draw critical guidance on drafting patent claims from McRO. The decision might also signal a shift in attitude in the CAFC, towards a much more welcoming view of diagnostic patents.

In this post, I’ll briefly address the facts and decision in McRO. During that discussion, I believe a discussion of the facts and decision of last year’s CAFC case of Ariosa Diagnostics, Inc. v. Sequenom, Inc. 788 F.3d 1377 (Fed Cir. 2015) (“Sequenom”) will be illustrative. I’ll then briefly compare the two and discuss what the implications might be for biomedical patents moving forward.

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