Anecdotally, there seems to be a loosening up regarding the application of § 101 by the District Courts. The 2014 Supreme Court decision in Alice Corp. v. CLS Bank Int'l has been referred to as sounding a death knell for...more
10/17/2016
/ Bascom Global v AT&T Mobility ,
CLS Bank v Alice Corp ,
Covered Business Method Patents ,
Enfish v Microsoft ,
Inter Partes Review (IPR) Proceeding ,
Patent Invalidity ,
Patent Litigation ,
Patent-Eligible Subject Matter ,
Patents ,
Software ,
USPTO
It is abundantly clear that the Supreme Court's 2014 Alice Corp. v. CLS Bank decision has significantly changed the patent-eligibility landscape for business methods and some types of software inventions. For instance, in...more
8/22/2016
/ CLS Bank v Alice Corp ,
Computer-Related Inventions ,
Covered Business Method Proceedings ,
Enfish v Microsoft ,
Patent Litigation ,
Patent-Eligible Subject Matter ,
Patents ,
Section 101 ,
Software ,
Technological Tool Test ,
TLI Communications ,
USPTO
McClinton Energy Group filed an inter partes review (IPR) petition against all claims of U.S. Patent No. 8,079,413, owned by Magnum Oil Tools International, Ltd. The USPTO's Patent Trial and Appeal Board (PTAB) instituted...more
8/15/2016
/ Administrative Proceedings ,
Appeals ,
Burden of Proof ,
Burden-Shifting ,
Evidence ,
Fracking ,
Inter Partes Review (IPR) Proceeding ,
Intervenors ,
Obviousness ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Petition for Review ,
USPTO
On the heels of the Federal Circuit handing down two subject matter eligibility decisions regarding software, the U.S. Patent and Trademark Office has published a memo to its examining corps regarding these cases. On May 12,...more
35 U.S.C. § 101 states that "any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof" is patent-eligible. However, the Supreme Court has traditionally...more
Earlier today, we presented a live webinar on the "Top Patent Law Stories of 2015." The webinar covered seven of the twenty stories that made it onto Patent Docs ninth annual list of top patent stories. The seven stories...more
1/22/2016
/ America Invents Act ,
Chevron Deference ,
CLS Bank v Alice Corp ,
En Banc Review ,
Limelight v Akamai ,
Patent Infringement ,
Patent-Eligible Subject Matter ,
Patents ,
Sandoz v Amgen ,
Section 101 ,
Sequenom ,
USPTO
The fallout from the Supreme Court's Alice Corp. v. CLS Bank Int'l case continues to reshape the landscape of patent-eligibility. Despite guidance from the USPTO, patentees still struggle with what exactly is patent-eligible...more
In a previous article on the USPTO's publication of its 2014 Interim Guidance on Patent Subject Matter Eligibility, we wrote:
Despite the Interim Guidance offering a reasonably fair and thorough overview of the current...more
On July 30, 2015, the U.S. Patent and Trademark Office updated its subject matter eligibility guidance ("July Update"). In the July Update, the Office provided recommendations and resources for examiners in addition to those...more
11/6/2015
/ Abstract Ideas ,
CLS Bank v Alice Corp ,
Examiners ,
Guidance Update ,
Patent Infringement ,
Patent Litigation ,
Patent-Eligible Subject Matter ,
Patents ,
Public Comment ,
SCOTUS ,
Software Patents ,
USPTO
On July 30, 2015, the U.S. Patent and Trademark Office updated its subject matter eligibility guidance ("July Update"). The update provided recommendations and resources for examiners in addition to those in the Office's...more
11/4/2015
/ Abstract Ideas ,
American Bar Association (ABA) ,
AMP v Myriad ,
CLS Bank v Alice Corp ,
Guidance Update ,
Intellectual Property Protection ,
Inventions ,
Mayo v. Prometheus ,
Patent Infringement ,
Patent Litigation ,
Patent-Eligible Subject Matter ,
Patents ,
Public Comment ,
SCOTUS ,
TRIPS Agreement ,
USPTO
USPTO SealAs the fallout from the Supreme Court's Alice Corp. v. CLS Bank Int'l case makes its way through the federal courts and the U.S. Patent and Trademark Office (USPTO), applicants and patentees continue to struggle...more
On July 30, 2015, the U.S. Patent and Trademark Office updated its subject matter eligibility guidance ("Eligibility Update"). This update provides recommendations and resources for examiners in addition to those in the...more
8/26/2015
/ Abstract Ideas ,
Bilski ,
CLS Bank v Alice Corp ,
Intellectual Property Protection ,
Mayo v. Prometheus ,
New Guidance ,
Patent Infringement ,
Patent Litigation ,
Patent-Eligible Subject Matter ,
Patents ,
Preemption ,
SCOTUS ,
Ultramercial v Hulu ,
USPTO
Section 18 of the Leahy-Smith America Invents Act (AIA) established a transitional program through which the USPTO conducts post-grant reviews of covered business method (CBM) patents. For the most part, § 18 incorporates...more
7/16/2015
/ America Invents Act ,
Appeals ,
Broadest Reasonable Interpretation Standard ,
Claim Construction ,
CLS Bank v Alice Corp ,
Covered Business Method Patents ,
Covered Business Method Proceedings ,
Inter Partes Review (IPR) Proceeding ,
Judicial Review ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patent-Eligible Subject Matter ,
Patents ,
Post-Grant Review ,
SCOTUS ,
USPTO
Note: This coverage of a district court case from last year provides an overview of the patented invention, as well as the decision currently being appealed to the Federal Circuit. In a subsequent article, we will review the...more
6/30/2015
/ America Invents Act ,
CLS Bank v Alice Corp ,
Intellectual Property Litigation ,
Internet ,
Patent Infringement ,
Patent Litigation ,
Patent-Eligible Subject Matter ,
Patents ,
Section 101 ,
Ultramercial v Hulu ,
USPTO
On January 27, the USPTO provided its promised set of examples of patent-eligible and patent-ineligible claims relating to the abstract idea exception to 35 U.S.C. § 101, in light of Alice Corp. v. CLS Bank. These examples...more
On December 15, the United States Patent and Trademark Office (USPTO) published its 2014 Interim Guidance on Patent Subject Matter Eligibility. This Interim Guidance was the long-anticipated update to the Procedure for...more
The U.S. Patent and Trademark Office (USPTO) wasted no time providing guidance to its examining corps regarding the recent Supreme Court decision in Alice Corp. v. CLS Bank International. Just one week after the Justices...more
In This Issue:
Experience with the USPTO’s First Action Interview Program; “Patent Trolls” Beware – Congress Tackles Vexatious Patent Litigation; Evolving Data Protection Regimes in the Asia-Pacific Arena and Their...more
On May 5, 2011, the United States Patent and Trademark Office (“the Office”) kicked off a new program intended to give applicants and examiners an opportunity to discuss the substance of a patent application before a formal,...more
In This Issue:
Not Just a Flook? Consideration of Prior Art When Evaluating Subject Matter Eligibility; The USPTO Adopts New Rules of Professional Conduct; and Trademark Functionality in the Beverage...more
In an example of judicial reasoning rolling downhill, the U.S. Patent and Trademark Office's Patent Trial and Appeal Board (PTAB) has struck down claims directed to a computer-implemented business method as failing to meet...more