5 Key Takeaways | Alice at 10: A Section 101 Update
5 Key Takeaways | Rolling with the Legal Punches: Resetting Patent Strategy to Address Changes in the Law
4 Key Takeaways | Updates in Standard Essential Patent Licensing and Litigation
5 Key Takeaways | Hot Topics in Biopharma
Podcast: The Briefing - A Prototypical Corporate Salesperson is Not Patentable
[IP Hot Topics Podcast] Innovation Conversations: Andrei Iancu
Nota Bene Episode 99: Unpacking the Pendulum of American Patent Policy Then, Now, and Forward with Rob Masters
IP(DC) Podcast: Patent Battles – New Patent Initiatives on the Hill & Notable CAFC/SCOTUS Decisions
Podcast: Patentable Subject Matter in 2019
Compiling Successful IP Solutions for Software Developers
Drafting Software Patents In A Post-Alice World
Deputy Commissioner for Patents Charles Kim issued a memorandum to three technology centers reminding examiners how subject matter eligibility should be evaluated under 35 USC § 101. These technology centers often handle...more
Patent eligibility is broken. The only semi-cogent arguments that I have ever heard in support of the status quo is that the U.S. Patent and Trademark Office issues too many broad, vague patents, and that 35 U.S.C. § 101...more
There is ample evidence that patent examiner allowance rates vary dramatically from examiner to examiner and art unit to art unit.[1] This has resulted in the general understanding that there are "easy" examiners and "tough"...more
The U.S. Patent and Trademark Office (USPTO) established its Patent Trial and Appeal Board (PTAB) in September 2012. As mandated by the America Invents Act, the PTAB conducts administrative trials, such as inter partes...more
The Federal Circuit affirmed a decision by the U.S. Patent and Trademark Office Patent Trial and Appeal Board (PTAB) rejecting claims for failure to satisfy the subject matter eligibility standard under 35 U.S.C. § 101, in ex...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
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
This article is the fourth in a five-part series. Each of these articles relates to the state of machine-learning patentability in the United States during 2019. Each of these articles describe one case in which the PTAB...more
CUSTOMEDIA TECHNOLOGIES, LLC V. DISH NETWORK CORPORATION, DISH NETWORK LLC. Before Prost, Dyk, and Moore. Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board. Summary: Claims...more
This article is the second in a five-part series. Each of these articles relates to the state of machine-learning patentability in the United States during 2019. Each of these articles describe one case in which the PTAB...more
Earlier this year, the United States Patent and Trademark Office (USPTO or “the Office”) published the 2019 Revised Subject Matter Eligibility Guidance (2019 PEG), which set forth newly revised procedures to be used by USPTO...more
The USPTO has released updated subject matter eligibility guidance that incorporates comments on the changes made in January 2019.The guidance is 22 pages long, with three appendices and 87 footnotes. Below are a few of the...more
Earlier this month, the Patent Trial and Appeal Board (PTAB) designated as informative four of its decisions applying the newest patent eligibility framework. This new eligibility framework, based on the United States Patent...more
In July 2019 the U.S. Patent Trial and Appeal Board (PTAB) newly designated four decisions as informative to highlight the PTAB’s general consensus on issues considered in these cases. All four cases involve the PTAB applying...more
Grunenthal GMBH v. Alkem Labs., Ltd., Appeal Nos. 2017-1153, -2048, -2049, -2050 (Fed. Cir. Mar. 28, 2019) - This week the Federal Circuit issued a rare decision concerning the utility doctrine in patent law. In general,...more
In January of 2019, the Patent Office, under Director Iancu, issued new guidance to all USPTO personnel evaluating patent subject matter eligibility under the requirements of 35 USC Section 101. The guidance sought to add...more
Patent stakeholders have recognized the difficulties in consistently predicting what subject matter is patent-eligible, given the inconsistent and varying manner in which the Alice/Mayo test has been applied over the years....more
Federal Circuit Summaries - Before Chen, Mayer, and Bryson. Appeal from the Patent Trial and Appeal Board. Summary: Claims directed to the abstract idea of rules for playing a dice game are not transformed into patent...more
Much ink has been spilled in recent times on the standards for, and outcomes of, patent eligibility questions under § 101. Consider, for example, USPTO Director Andrei Iancu’s remarks in September about providing additional...more
Under 35 U.S.C. § 325(d), the PTAB has discretion regarding whether to institute a covered business method review if the arguments presented in the petition are the same, or substantially the same, as those previously...more
Subject matter eligibility rejections under 35 U.S.C. §101 have plagued applicants in numerous technology fields since the Supreme Court’s Alice Corp. v. CLS Bank International decision in 2014. Over the next few years, a...more
The PTAB’s decision on whether or not to institute trial in a particular matter is discretionary. See Harmonic Inc. v. Avid Tech, Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“the PTO is permitted, but never compelled, to...more
Aatrix Software, Inc. v. Green Shades Software, Inc., Appeal No. 2017-1452 (Fed. Cir. May 31, 2018) and Berkheimer v. HP Inc., Appeal No. 2017-1437 (Fed. Cir. May 31, 2018) - In these two, published, precedential orders...more
Berkheimer v. HP Inc., Appeal No. 2017-1437 (Fed. Cir. Feb. 8, 2018) - In Berkheimer v. HP Inc., the Federal Circuit reviewed the District Court’s summary judgment finding that certain claims of a patent were invalid as...more
In Ex Parte Hafner, the U.S. Patent and Trademark Office Patent Trial and Appeal Board (the “Board”) reversed the Examiner’s rejection that claims directed to an energy transaction plan were subject-matter ineligible. Ex...more