Is Biotech Patentable Subject Matter?
Can You Patent Human Genes? ACLU Says No
Yours, Mine and Ours (not yet!): An Update on the Patentability of Human Genes
Following the June 19 anniversary, it's now been 11 years since the U.S. Supreme Court's decision in Alice Corp. v. CLS Bank International — a case that declared a new test for when claims are ineligible for being directed to...more
The Federal Circuit recently affirmed a district court’s grant of Zillow Group Inc.’s (“Zillow”) motion to dismiss under Federal Rule of Civil Procedure 12(b)(6) because the two International Business Machines Corporation...more
As we’ve noted, the Supreme Court is once again considering whether to take up patent eligibility: it recently CVSGed two more Section 101 cases. While we wait for the government’s views, the Federal Circuit will continue...more
Since the Alice v. CLS Bank and Mayo v. Prometheus decisions, district courts and the Court of Appeals for the Federal Circuit has struggled to determine and navigate the boundary between what is and what is not...more
The Federal Circuit continued its stringent (if misguided) application of the scope of subject matter eligibility by invalidating claims asserted in CardioNet, LLC v. InfoBionic, Inc....more
The transcendental conundrum in patent law in these times is how to overcome the misinterpretation of the Supreme Court's decisions on patent eligibility law by district courts and the Federal Circuit. That these courts...more
On October 23, 2020, in a remarkable order demonstrating how a “bitterly divided” Federal Circuit views post-Alice patent eligibility jurisprudence, the court denied the motion of American Axle & Manufacturing, Inc. (“AAM”)...more
On July 31, the Federal Circuit withdrew its opinion in American Axle & Manufacturing, Inc. v. Neapco Holdings LLC and provided a substitute opinion. The court’s goal was to clarify why a claim directed to manufacturing a...more
274-1 Federal Circuit Revisits American Axle & Manufacturing; Case Remanded to Determine if One of the “Hooke’s Law” Claims is Ineligible under Other Theories of Eligibility - The Federal Circuit recently issued a modified...more
Federal Circuit (Again) Hands Down Revised Opinion in Response to Petition for Rehearing - Recently the Federal Circuit has begun a practice of withdrawing an original opinion and handing down a substitute opinion in...more
There are (at least) two ways of looking at the course of the Federal Circuit's evolving interpretation of the Supreme Court's subject matter eligibility jurisprudence under Mayo Collaborative Services v. Prometheus Labs.,...more
ART 2: EFFORTS TO CLARIFY PATENT ELIGIBILITY UNDER § 101 - In this four-part series, we take a look forward at the cases, legislation, and other trends that are likely to have a significant impact on intellectual property...more
The cloud of uncertainty over patent eligibility of patents for medical diagnostic methods remains. On Monday, the Supreme Court declined the opportunity to revisit patent eligibility under its two-step Mayo test when it...more
The US Court of Appeals for the Federal Circuit, relying heavily on the specification of the asserted patent, found claims directed to an abstract idea of “wirelessly communicating status information about a system” as patent...more
THE CHAMBERLAIN GROUP, INC. v. TECHTRONIC INDUSTRIES CO. Before Lourie, O’Malley, and Chen. Appeal from the United States District Court for the Northern District of Illinois - Summary: A system or method for...more
Broad Claim Language and Unpredictability in the Art Lead to Non-Enablement - In Enzo Life Sciences, Inc. v. Roche Molecular Systems, Inc., Appeal Nos. 2017-2498, -2499, -2545, -2546, broad patent claims were invalid as...more
The Federal Circuit’s 2018 decision in Berkheimer v. HP Inc. was likely the most consequential development in patent eligibility since the Supreme Court introduced its two-part eligibility framework in Alice Corp. v. CLS Bank...more
Just Because Something May Result From a Prior Art Teaching Does Not Make it Inherent in that Teaching - In Personal Web Technologies, LLC v. Apple, Inc., Appeal No. 2018-1599, the Federal Circuit clarified that the mere...more
Yesterday Democrat and Republican legislators from both the Senate and the House of Representatives released a one page outline of a proposal to change the law of patent eligibility. The legislators supporting this proposal...more
For a long time, the hallmarks of patentability of an invention were basically two: is it new? is it non-obvious? If both answers were “yes,” then—provided that the patent itself was properly written—you’d get your patent. A...more
A method of diagnosing neurological disorders invented by researchers at Oxford University and the Max-Planck Society was found patent ineligible by the Federal Circuit in the case Athena Diagnostics, Inc. v. Mayo...more
Post-Alice, the United States Patent and Trademark Office (“PTO”) is aggressively rejecting software claims under the Alice two-part test, the parameters of which many examiners are still trying to understand. Not...more
My last post focused on definitions for the terms “well-understood,” “routine,” and “conventional”—or W-URC—from the subject matter eligibility test set forth in Mayo and further described in Alice. Those terms relate to one...more
In the non-precedential decision issued in Exergen Corp. v. Kaz USA, Inc., Judge Moore considered the time and money it took to develop the invention at issue when deciding that the claims satisfy the patent eligibility...more
The Court of Appeals for the Federal Circuit just highlighted another approach plaintiffs can use to overcome early challenges to the validity of patent claims under 35 U.S.C. §101. What is that approach? It is a classic...more