Genetic Veterinary Sciences v. Laboklin Gmbh & Co. Kg
933 F.3d 1302
Fed. Cir.2019Background
- PPG (Washington) provided genetic testing for dogs and received a cease-and-desist letter at its Spokane office claiming infringement of U.S. Patent No. 9,157,114 (’114 patent) owned by the University of Bern and exclusively licensed to LABOKLIN (Germany).
- The University (agent of the Swiss Confederation) licensed the ’114 patent to LABOKLIN, which sublicensed rights in the U.S.; the license required mutual consent before sending cease-and-desist letters and allowed LABOKLIN to sue if University elected not to.
- PPG sued in the E.D. Va. for a declaratory judgment that claims 1–3 of the ’114 patent are patent-ineligible under 35 U.S.C. § 101; appellants moved to dismiss for lack of subject-matter and personal jurisdiction.
- The District Court denied dismissal, finding personal jurisdiction over LABOKLIN under Fed. R. Civ. P. 4(k)(2) based on the U.S.-directed cease-and-desist letter and sublicensing activity, and subject-matter/personal jurisdiction over the University under the FSIA commercial-activity exception (§ 1605(a)(2)).
- At trial PPG stipulated infringement; after evidence closed, the District Court granted JMOL for PPG, holding claims 1–3 patent-ineligible under § 101 as directed to a natural phenomenon (a point mutation in SUV39H2) and adding only conventional lab steps.
- The Federal Circuit affirmed both jurisdictional rulings and the § 101 JMOL decision.
Issues
| Issue | PPG's Argument | LABOKLIN/University's Argument | Held |
|---|---|---|---|
| Personal jurisdiction over LABOKLIN under Rule 4(k)(2) | Cease-and-desist letter + sublicenses establish sufficient U.S. contacts and relation to claim | Insufficient contacts; letter alone cannot confer specific jurisdiction | Affirmed: letter directed at U.S. address plus U.S. sublicenses satisfy minimum contacts; jurisdiction reasonable |
| Subject-matter & personal jurisdiction over University under FSIA §1605(a)(2) (commercial-activity exception) | University obtained and commercialized the U.S. patent and consented to enforcement → commercial activity in U.S. | University immune as foreign sovereign; its role was not commercial enough | Affirmed: obtaining, licensing, and consenting to enforcement constitute commercial activity falling within §1605(a)(2) |
| Patent eligibility of claims 1–3 under 35 U.S.C. §101 | Claims recite a patent-eligible laboratory application (in vitro genotyping steps) tied to a specific use | Claims are directed to a natural phenomenon (the SUV39H2 mutation) and add only conventional techniques | Affirmed JMOL: claims directed to a natural phenomenon and recite only routine, conventional lab steps — no inventive concept; ineligible |
Key Cases Cited
- Mayo Collaborative Servs. v. Prometheus Labs., 566 U.S. 66 (2012) (two-step framework for §101: law of nature analysis and inventive concept)
- Alice Corp. v. CLS Bank Int’l, 573 U.S. 208 (2014) (application of Mayo two-step to abstract ideas and the need for inventive concept)
- Ass’n for Molecular Pathology v. Myriad Genetics, 569 U.S. 576 (2013) (isolated natural DNA sequences are products of nature and not patentable)
- Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371 (2015) (claims to detecting naturally occurring cffDNA directed to natural phenomenon; ineligible)
- CellzDirect, Inc. v. True Health Diagnostics LLC, 827 F.3d 1042 (2016) (claims to a new technique producing a tangible result can be patent-eligible)
- Intel Corp. v. Commonwealth Sci. & Indus. Research Org., 455 F.3d 1364 (2006) (obtaining and enforcing a U.S. patent can be commercial activity for FSIA §1605(a)(2))
- Walden v. Fiore, 571 U.S. 277 (2014) (specific jurisdiction requires defendant-focused contacts with the forum)
- Jack Henry & Assocs., Inc. v. Plano Encryption Techs. LLC, 910 F.3d 1199 (2018) (licensing program with threats of litigation directed to U.S. parties can support jurisdiction)