Judge Won’t Toss GSK IP Suit After High Court’s Alice Ruling

Benjamin Lieb was mentioned in an August 22 article in Law360 about a ruling by a North Carolina federal judge that said the U.S. Supreme Court’s Alice Corp. decision doesn’t preclude his client Genetic Technologies Ltd.’s suit accusing GlaxoSmithKline LLC of infringing its patents for technology using DNA in genetic analysis.

In a three-page order denying GSK’s motion to dismiss the suit, U.S. District Judge Catherine C. Eagles said Alice Corp. Pty. Ltd. v. CLS Bank International concerned computer implementation of an abstract idea – a different factual concept than whether the correlation between variations in coding and noncoding DNA is found in natural law, as the defendant alleges in the instant case.   The high court in June ruled that abstract ideas implemented using a computer are not eligible for a patent.

Lieb’s client accused GSK of using the patent technology its in the development of the antiviral drug Abacavir. Last month, Genetic Technologies said GSK hadn’t shown that the combination of steps of each of the available claims were routine or conventional, among other required clear and convincing evidence. GSK countered that the plaintiff’s patent specifications stated multiple times that the prior art amplification and analysis techniques were not merely known but widely used.

But Judge Eagles denied GSK’s attempt to kill the suit in the wake of Alice.

“The Supreme Court has noted that the ‘exclusionary principle’ of unpatentable subject matter must be construed carefully ‘lest it swallow all of patent law,’ ” Friday’s order said. “In this case, such careful construction will be facilitated by a broader and more developed factual context.”

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