News & Analysis as of

Patents Reversal Patent-Eligible Subject Matter

Jenner & Block

Two Federal Circuit Decisions Nullify Nine-Figure Damages Awards

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In two June 2025 decisions, the Federal Circuit Court of Appeals rejected patent infringement jury verdicts for $218.5 million and $300 million—one reversed for claiming patent ineligible subject matter, and the other vacated...more

A&O Shearman

Federal Circuit Reverses § 101 Summary Judgment Of Invalidity, Holding That Describing Claims At High Level Of Abstraction And...

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On September 9, 2024, the United States Court of Appeals for the Federal Circuit (“CAFC”) reversed the U.S. District Court for the Northern District of California’s decision finding asserted claims invalid under 35 U.S.C. §...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - March 2024 #2

Pfizer Inc. v. Sanofi Pasteur Inc., Appeal Nos. 2019-1871, -1873, -1875, -1876, -2224 (Fed. Cir. Mar. 5, 2024) This week’s Case of the Week mostly resolves an appeal filed five years ago, following decisions from the...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - April 2023 #3

Sequoia Technology, LLC v. Dell, Inc., Appeal Nos. 2021-2263, -2264, -2265, -2266 (Fed. Cir. April 12, 2023) In an appeal from a stipulated judgment of noninfringement and invalidity following an adverse claim construction...more

McDermott Will & Emery

Claim at Issue Must Be Substantively Allowable to Qualify for PTA

McDermott Will & Emery on

The US Court of Appeals for the Federal Circuit affirmed two district court decisions, finding that a patent owner who only partially prevailed in one of two appeals was not entitled to any additional patent term adjustments...more

McDermott Will & Emery

Federal Circuit Reverses Judge Stark Decision, Finds Computer Network Patent Eligible

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The US Court of Appeals for the Federal Circuit concluded that a representative claim was directed to a patent-eligible improvement to computer functionality, and therefore reversed a decision authored by Judge Leonard P....more

McDermott Will & Emery

Targeted Advertising Still Patent Ineligible Subject Matter

McDermott Will & Emery on

The US Court of Appeals for the Federal Circuit found that targeted advertising is still an abstract idea and that a system providing targeted advertising must utilize something more than generic features and routine...more

WilmerHale

CAFC Patent Cases - January 2021

WilmerHale on

Precedential Federal Circuit Opinions - SIMIO, LLC v. FLEXSIM SOFTWARE PRODUCTS [OPINION] (2020-1171, 12/29/20) (Prost, Clevenger, Stoll) - Prost, J. Affirming dismissal because claims were ineligible under § 101....more

McDonnell Boehnen Hulbert & Berghoff LLP

Illumina, Inc. v. Ariosa Diagnostics, Inc. (Fed. Cir. 2020)

Federal Circuit Hands Down Modified Opinion in Illumina, Inc. v. Ariosa Diagnostics, Inc. Earlier this year, the Federal Circuit (somewhat surprisingly) found claims of two Sequenom patents directed to methods for...more

McDonnell Boehnen Hulbert & Berghoff LLP

XY, LLC v. Trans Ova Genetics, LC (Fed. Cir. 2020)

Last week, the Federal Circuit took the opportunity presented in an appeal from judgment on the pleadings in XY, LLC v. Trans Ova Genetics, LC to distinguish claims directed toward a patent-eligible invention from...more

McDonnell Boehnen Hulbert & Berghoff LLP

Packet Intelligence LLC v. NetScout Systems, Inc. (Fed. Cir. 2020)

Introduction - Packet Intelligence sued NetScout in the Eastern District of Texas, alleging infringement of U.S. Patent Nos. 6,665,725, 6,839,751, and 6,954,789.  The District Court ruled that all three patents were valid...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

PTAB Strategies and Insights - June 2020

The PTAB Strategies and Insights newsletter provides timely updates and insights into how best to handle proceedings at the USPTO. It is designed to increase return on investment for all stakeholders looking at the entire...more

Akin Gump Strauss Hauer & Feld LLP

Federal Circuit Snubs Extrinsic Evidence in Reversing Ruling on 12(b)(6) Motion Arguing Invalidity Under § 101

In CardioNet, LLC, et al. v. InfoBionic, Inc., the Federal Circuit reversed a district court’s ruling that affirmed a defendant’s 12(b)(6) motion that the asserted claims are invalid under 35 U.S.C. § 101, based on step one...more

McDonnell Boehnen Hulbert & Berghoff LLP

Cardionet, LLC v. Infobionic, Inc. (Fed. Cir. 2020)

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

Sunstein LLP

Upgrade of Appeal Board Decisions Sought to Help Patent Medical Innovations

Sunstein LLP on

The Director of the Patent and Trademark Office (PTO) has been asked to upgrade the status of two recent decisions of the Patent Trial and Appeal Board (PTAB), which determined that two medical innovations are eligible to be...more

Foley & Lardner LLP

Utilization of Natural Phenomenon Found Patent Eligible

Foley & Lardner LLP on

In Illumina, Inc. v. Ariosa Diagnositcs, Inc., (Fed. Cir. Slip Op. 2019-1419, March 17, 2020) the Federal Circuit held that process claims that exploit the discovered size differences between fetal and maternal DNA in serum...more

Holland & Knight LLP

Section 101 Update: Pharmaceutical and Life Sciences March 2020

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This month, the U.S. Court of Appeals for the Federal Circuit has handed down a pair of opinions concerning Section 101 in the field of pharmaceuticals and life sciences. In both cases, the district courts held claims of the...more

McDonnell Boehnen Hulbert & Berghoff LLP

Illumina, Inc. v. Ariosa Diagnostics, Inc. (Fed. Cir. 2020)

The latest Federal Circuit decision on subject matter eligibility in the life sciences came down (by a divided court) in favor of eligibility, in Illumina, Inc. v. Ariosa Diagnostics, Inc.  The claims at issue fell into the...more

Akin Gump Strauss Hauer & Feld LLP

Federal Circuit Addresses Indefiniteness and Mean-Plus-Function Claiming in Inter Partes Review Proceedings at the PTAB

The Federal Circuit reversed and remanded a Patent Trial and Appeal Board (the “Board”) decision declining to analyze patent claims as anticipated or obvious in an inter partes review (IPR) where the Board found the...more

Knobbe Martens

Federal Circuit Review - November 2019

Knobbe Martens on

The Appointments Clause: Ensuring That PTAB Decisions Are Subject to Constitutional Checks and Balances  In Arthrex, Inc. v. Smith & Nephew, Inc., Appeal No. 18-2251, the Federal Circuit ruled that, under the then-existing...more

McDermott Will & Emery

Data Processing Software Checks Out as Patent Eligible

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Addressing an issue of software subject matter eligibility, the US Court of Appeals for the Federal Circuit reversed the district court’s judgment on the pleadings under 35 USC § 101, finding claims related to error checking...more

Knobbe Martens

Avoiding Ineligibility by Claiming a Specific Implementation That Improves upon the Prior Art

Knobbe Martens on

KONINKLIJKE KPN N.V. v. GEMALTO M2M GMBH - Before Dyk, Chen, and Stoll.  Appeal from the District of Delaware. Summary: Claims directed to improving the functionality of one tool that is part of a system do not...more

Knobbe Martens

PTAB Required to Provide Interpretation of Regulation Concerning Determination of Which Patents Qualify for CBM Review

Knobbe Martens on

SIPCO, LLC v. EMERSON ELECTRIC CO. Before O’Malley, Reyna, and Chen. Appeal from the Patent Trial and Appeal Board. Reyna concurring-in-part and dissenting-in-part Summary: The language “unobvious over the prior art” in...more

McDermott Will & Emery

Check Processing Claims Bounce

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The US Court of Appeals for the Federal Circuit found claims directed to using data from a check to credit a merchant’s account before scanning the check to be subject matter ineligible under 35 USC § 101 as reciting an...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - August 2019 #4

Arthrex, Inc. v. Smith & Nephew, Inc., Appeal No. 2018-1584 (Fed. Cir. Aug. 21, 2019) - In this week’s Case of the Week, the Federal Circuit affirmed an inter partes review decision of the Patent Trial and Appeal Board,...more

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