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Patent Trial and Appeal Board Abstract Ideas Computer-Related Inventions

King & Spalding

Live Long and Patent: Lessons from Captain Kirk’s Encounter with the PTAB

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In a tale that boldly goes where few celebrity inventors have gone before, William Shatner—yes, that William Shatner—alongside two co-inventors, filed a patent application for a “Smartphone Organization System and...more

Knobbe Martens

Federal Circuit Review - October 2021

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No Assembly, No Infringement – Federal Circuit Declines to Expand the “Final Assembler” Theory of Direct Infringement In Acceleration Bay LLC v. Take-Two Interactive Software, Appeal No. 20-1700 the Federal Circuit held that...more

Fox Rothschild LLP

How To Patent Software And Computer-Implemented Business Methods In The US And Abroad

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It is well known that in the U.S., abstract ideas, laws of nature, natural phenomena, and products of nature are all excluded from patenting under 35 U.S.C. § 101. This article briefly outlines various U.S. approaches to...more

Kilpatrick

“Curiouser and Curiouser!”: Federal Circuit Affirms PTAB Patent-Ineligibility Decision Under Alice

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On March 11, 2021, in an Opinion by Judge Reyna, along with Chief Judge Prost and Judge Lourie, the Federal Circuit affirmed the Patent Trial and Appeal Board (PTAB) decision that the rejected claims of a patent application...more

Holland & Knight LLP

USPTO Designates Ex Parte Linden as an Informative § 101 PTAB Decision

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The U.S. Patent and Trademark Office (USPTO), on occasion, publishes certain Patent Trial and Appeal Board (PTAB) decisions as precedential or informative. An informative decision provides PTAB norms on recurring issues,...more

Akin Gump Strauss Hauer & Feld LLP

PTAB Designates as Informative Three Decisions on Obviousness and Patent Eligibility

The Patent Trial and Appeal Board (PTAB) recently designated three more decisions as informative, bringing the total number of informative decisions to 13 for 2019. Two decisions—one final and one on institution—address...more

Jones Day

Federal Court Relies on PTAB Findings in Denying Section 101 Summary Judgment Motion

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Despite the prohibition on patenting “abstract ideas” and the tendency of computer software claims to fall into that category, claims directed at improving faulty software systems may still be patentable if they encompass an...more

Fish & Richardson

Patenting Software: A Case Study in Overcoming Alice

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In 2014, the United States Supreme Court handed down its decision in Alice Corporation Pty. Ltd. v. CLS Bank International, et al., 573 U.S. 208, which significantly altered the patentability of software, business methods,...more

Knobbe Martens

Federal Circuit Affirms Patent-Ineligibility of Claims Directed to Displaying Financial Information on a Known Device

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Before Moore, Clevenger, and Wallach. Appeal from the Patent Trial and Appeal Board. Summary: Claims directed to providing additional trading information on a prior art display, without more, are patent-ineligible under 35...more

Cooley LLP

Alert: USPTO Revised Patent Eligibility Guidelines Significantly Eases Path to Obtaining Computer-Related Patents

Cooley LLP on

On January 7, 2019, the United States Patent and Trademark Office (USPTO) issued the 2019 Revised Patent Subject Matter Eligibility Guidance, a major update to the examination guidelines for evaluating whether a patent claim...more

Bradley Arant Boult Cummings LLP

Federal Circuit Affirms Rejection of Broad, Computer-Based Claims

As we’ve covered in other summaries, the Federal Circuit continues to define the line between computer-implemented claims that are patent ineligible under 35 U.S.C. § 101 for being directed to an abstract idea with no...more

Knobbe Martens

How Unpredictable is the Alice Analysis?

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Over the last year, several Federal Circuit judges have filed opinions lamenting the state of the case law that interprets the abstract idea exception to patent eligibility under 35 U.S.C. § 101.  For example, Judge Linn...more

Jones Day

District Court Considers IPR In Deciding Alice Motion

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On November 20, 2017, a district court denied a defendant’s Federal Rules of Civil Procedure (“Rule”) 12(b)(6) motion that sought to dismiss the case on the ground that the asserted patents were ineligible under 35 U.S.C. §...more

Knobbe Martens

Federal Circuit Review - September 2017

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IPR Appellants Must Satisfy Article III Standing - In Personal Audio, LLC v. Electronic Frontier Foundation, Appeal No. 2016-1123, the Federal Circuit held that standing for an appeal to a federal court is based on the...more

Knobbe Martens

Analogous Analysis: A Survey of Recent PTAB Decisions Establishing Subject Matter Patent Eligibility

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In 2014, the U.S. Supreme Court established the current framework for determining patent-eligible subject matter in Alice. The Alice framework is a two-part test, with step one requiring a determination regarding whether a...more

Foley & Lardner LLP

Federal Circuit Knocks Out Patents After CBM Challenge

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Apple successfully invalidated three patents for failure to recite patent eligible subject matter. Apple, Inc. v. Ameranth, Inc., 2015-1792, 2015-1793 (Fed. Cir. 2016). The patents relate to synchronous communication systems...more

Seyfarth Shaw LLP

The Importance of the Specification in Alice Challenges

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It is axiomatic that the claims of a patent describe the invention, and for Alice challenges, define whether an invention is drawn to an abstract idea without an inventive concept. Of course, claims are construed in light of...more

Ballard Spahr LLP

Federal Circuit Finds Software Patent Not Abstract

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Reversing a district court holding, a three-judge panel of the U.S. Court of Appeals for the Federal Circuit ruled that two patents directed to a method for organizing data in a computer database did not claim an unpatentable...more

Seyfarth Shaw LLP

Eastern District of Texas Finds Website Labeling Patent Invalid Under §101

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Nearly one third of all patent cases filed in the United States are heard by a single judge - J. Rodney Gilstrap of the Eastern District of Texas. Many of these cases involve e-commerce or other internet-based patents such...more

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