Republican Senator Thom Tillis of North Carolina has released a new proposal to reform the text of 35 U.S.C. § 101. The Senator's last effort in doing so died on the vine in 2019, purportedly due to stakeholders being too...more
Given the recent bust cycle of cryptocurrencies and non-fungible tokens (NFTs), all things blockchain are currently tainted with words such as "bubble", "scam", and "fraud". But blockchain technology, which is what enables...more
In an order that is clearly less impactful and damaging than a number of opinions that the Supreme Court has disgorged in the last two weeks, the justices have denied certiorari in American Axle & Mfg. Inc. v. Neapco Holdings...more
7/1/2022
/ CLS Bank v Alice Corp ,
Corporate Counsel ,
Denial of Certiorari ,
Intellectual Property Protection ,
Patent Applications ,
Patent Litigation ,
Patent-Eligible Subject Matter ,
Patents ,
SCOTUS ,
Section 101 ,
Statutory Interpretation ,
USPTO
The U.S. Patent and Trademark Office handles hundreds of thousands of patent applications per year, as well as various types of administrative patent proceedings. While the USPTO has made incremental improvements in its...more
Patent examiners have a hard job. They are given a relatively short amount of time in which they are supposed to thoroughly review a patent application, search for relevant prior art, and write a well-reasoned Office...more
This weekend The New York Times published an editorial opinion entitled "Save America's Patent System." It bemoans the purported prevalence of "bad patents" -- including "uninspiring tweaks" to existing products -- that...more
Today, the Supreme Court requested the views of the Solicitor General in its consideration of American Axle's certiorari petition, which asks the Court to reverse the Federal Circuit's decision in American Axle & Mfg. v....more
The Supreme Court's Alice Corp. v. CLS Bank Int'l case has been criticized for setting forth a patent eligibility analysis that is unworkably subjective. As a consequence, the validity of particular types of inventions,...more
A computer does just three things: receives information in the form of bits, transforms this information, and provides output based on the information as transformed. The receiving may take place by way of various types of...more
Adaptive Streaming, the owner of U.S. Patent No. 7,047,305, sued Netflix in the Central District of California for alleged infringement. Netflix moved to dismiss the case on the pleadings under Rule 12(b)(6), asserting that...more
One would think that inventions relating to computer game software would easily meet the requirements for patent eligibility, as these inventions fundamentally involve technological processes and require computer...more
The evolution of graphical user interfaces parallels the evolution of computing technology itself. As computers grow more powerful and sophisticated, so does their ability to display cutting-edge representations of...more
11/9/2020
/ Abstract Ideas ,
CLS Bank v Alice Corp ,
Computer-Related Inventions ,
Intellectual Property Protection ,
Inventive Concept Test ,
Patent Litigation ,
Patent-Eligible Subject Matter ,
Patents ,
Popular ,
Prior Art ,
Section 101 ,
Software Developers ,
Software Patents ,
USPTO
If we have learned anything from the last six-and-a-half years of patent eligibility jurisprudence, it is that nobody knows what's going on.
Subject matter eligibility is a fundamental requirement for an invention to be...more
11/2/2020
/ Abstract Ideas ,
CLS Bank v Alice Corp ,
Examination Procedures ,
Intellectual Property Protection ,
Inventive Concept Test ,
Patent Examinations ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patent-Eligible Subject Matter ,
Patents ,
Section 101 ,
USPTO
Last year, the U.S. Patent and Trademark Office (USPTO) issued a request for comments (RFC) on patenting artificial intelligence (AI) based inventions. Topics of the RFC included AI's impact on inventorship and ownership,...more
Patent eligibility is a bit of a mess these days. Ever since the Supreme Court handed down the Alice v. CLS Bank decision six years ago, the distinction between what might be subject matter that can be patented and what is...more
8/1/2020
/ Abstract Ideas ,
Appeals ,
Claim Construction ,
CLS Bank v Alice Corp ,
DDR Holdings v Hotels.com ,
Enfish v Microsoft ,
Informational Studies ,
Mayo v. Prometheus ,
McRo v Bandai Namco ,
Novelty ,
Patent-Eligible Subject Matter ,
Patents ,
Product of Nature Doctrine ,
SCOTUS ,
Section 101 ,
Section 102 ,
Section 103 ,
Section 112 ,
USPTO
Electronic Communication Technologies (ECT) sued ShoppersChoice in the Southern District of Florida for allegedly infringing claim 11 of U.S. Patent No. 9,373,261. The claim recites...more
7/20/2020
/ Abstract Ideas ,
Appeals ,
CLS Bank v Alice Corp ,
Judgment on the Pleadings ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patent-Eligible Subject Matter ,
Patents ,
Section 101 ,
USPTO
In a post-truth world, it is more tempting than ever to evaluate data based on gut instinct, intuition, and anecdotal evidence. It is thus refreshing when results of a robust statistical analysis are published, even if the...more
In 2014's Alice Corp. v. CLS Bank Int'l case, Justice Thomas famously wrote, "we need not labor to delimit the precise contours of the 'abstract ideas' category in this case." Instead, he found the claims of patentee Alice...more
3/3/2020
/ Abstract Ideas ,
Appeals ,
Bilski ,
CLS Bank v Alice Corp ,
Covered Business Method Patents ,
Legal History ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patent-Eligible Subject Matter ,
Patents ,
SCOTUS ,
Section 101 ,
USPTO
The hopes of anyone in favor of patent reform targeting 35 U.S.C § 101 have been official dashed -- or at least put on hold. In an interview with the Intellectual Property Owner's association (IPO) last week, Senator Thom...more
With the eligibility rubric of Alice v. CLS Bank, an applicant/patentee must navigate a minefield of pre-issuance and post-issuance validity challenges under 35 U.S.C. § 101 in order to obtain and enforce a patent....more
In August, the U.S. Patent and Trademark Office announced that it planned on raising various fees. One of those involved an additional $400 fee for non-provisional utility application filings with a PDF specification. This...more
Over five and a half years on from the Supreme Court's Alice vs. CLS Bank ruling, patentees, patent professionals, judges, and USPTO personnel are still wrestling with what it means for an invention to be eligible for...more
Innovations involving artificial intelligence (AI) and machine-learning (ML) are being developed at an ever-accelerating pace. For example, as illustrated in Figure 1, the number of patent applications published by the United...more
Last month the U.S. Patent and Trademark Office published an update ("October Update") to its subject matter eligibility guidance. As we noted at that time, the October Update is more evolutionary than revolutionary, and...more
Early today, October 17, 2019, the U.S. Patent and Trademark Office released an update to its January 2019 Subject Matter Eligibility Guidance. Unlike the January Guidance, which represented a significant change in how the...more