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In re Kubin: Federal Circuit Ignores Principles of Structural Obviousness in Applying 'Obvious to Try' Test
On April 3, 2009, a three-judge panel of the Court of Appeals for the Federal Circuit unanimously affirmed the decision that the Board of Patent Appeals had reached in Ex Parte Kubin, 2007 WL 2070495 (B.P.A.I. May 31, 2007), thereby reinforcing and extending the applicability of the “obvious to try” test in biotechnology patent law practice. In furthering the “obvious to try” standard, however, the Federal Circuit also undermined its own precedent regarding biochemical structural obviousness ' namely, that the nucleotide sequence of a previously unknown DNA sequence encoding a known or partially known polypeptide is non-obvious. Thus, In re Kubin, 2009 WL 877646 (Fed. Cir. April 3, 2009), now appears to be the first case in which a defined biochemical structure was found to be obvious despite the fact that the structure was previously unknown and unpredictable.
In Ex Parte Kubin, the Board determined that a DNA sequence encoding a functionally characterized but unisolated receptor protein (the NAIL protein, which is located on the surface of certain types of immune cells) was obvious under 35 U.S.C. ' 103(a). The patent examiner had rejected Kubin's claims as obvious over a combination of prior art teachings disclosing: 1) the functional characteristics of the NAIL protein on cultured cells, 2) a monoclonal antibody that binds to a portion of the NAIL protein, and 3) a prophetic example of how to isolate NAIL DNA and the protein using conventional cloning and sequencing methodologies. Notably absent from the prior art, however, was any teaching or suggestion of either the amino acid sequence (complete or partial), or any working example of a method by which to obtain the amino acid or DNA sequence of the NAIL protein.
New York's Latest Cybersecurity Commitment
On Aug. 9, 2023, Gov. Kathy Hochul introduced New York's inaugural comprehensive cybersecurity strategy. In sum, the plan aims to update government networks, bolster county-level digital defenses, and regulate critical infrastructure.
Law Firms are Reducing Redundant Real Estate by Bringing Support Services Back to the Office
A trend analysis of the benefits and challenges of bringing back administrative, word processing and billing services to law offices.
Bit Parts
Summary Judgment Denied Defendant in Declaratory Action by Producer of To Kill a Mockingbird Broadway Play Seeking Amateur Theatrical Rights
Risks of “Baseball Arbitration” in Resolving Real Estate Disputes
“Baseball arbitration” refers to the process used in Major League Baseball in which if an eligible player's representative and the club ownership cannot reach a compensation agreement through negotiation, each party enters a final submission and during a formal hearing each side — player and management — presents its case and then the designated panel of arbitrators chooses one of the salary bids with no other result being allowed. This method has become increasingly popular even beyond the sport of baseball.
One Overlooked Element of Executive Safety: Data Privacy
Executives have access to some of the company's most sensitive information, and they're increasingly being targeted by hackers looking to steal company secrets or to perpetrate cybercrimes.