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Section 101 Prior Art Appeals

McDermott Will & Emery

In Determining Subject Matter Eligibility, the Name of the Game Is the Claim

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In a decision underscoring the distinct standards governing enablement under §§ 102 and 112, the US Court of Appeals for the Federal Circuit affirmed the Patent Trial & Appeal Board’s finding that a prior art reference was...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases: Mitek Systems Inc. v. United Services Automobile Association

Mitek Systems Inc. v. United Services Automobile Association, Appeal No. 2023-1687 (Fed. Cir. June 12, 2025) In our Case of the Week, the Federal Circuit examined the limits of declaratory judgment jurisdiction for a...more

WilmerHale

Federal Circuit Patent Watch: Patents That Merely Claim Applying Machine Learning to a New Field of Use Are Not Patent Eligible

WilmerHale on

Stark, J. Sage Products, LLC (“Sage”) challenged a Patent Trial and Appeal Board (“Board”) decision finding two of Sage’s patents unpatentable. After the original appellee, Becton, Dickinson and Co., withdrew, the Director of...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases: Recentive Analytics, Inc., v. Fox Corp.

Recentive Analytics, Inc., v. Fox Corp., Appeal No. 2023-2437 (Fed. Cir. Apr. 18, 2025) In our Case of the Week, the Federal Circuit addressed a question of first impression concerning whether developments in machine...more

Erise IP

Eye on IPRs, June 2024: What’s Next for the Design Patent Obviousness Test; Federal Circuit Ruling on Printed Matter

Erise IP on

Every month, Erise’s patent attorneys review the latest inter partes review cases and news to bring you the stories that you should know about: Design Patent Obviousness Test Thrown Out - The U.S. Court of Appeals...more

Erise IP

Eye on IPRs, April 2024: PTAB’s Analogous Art Finding Upheld by Federal Circuit, Blockchain Gemstone Identifying Process Patent...

Erise IP on

Every month, Erise’s patent attorneys review the latest inter partes review cases and news to bring you the stories that you should know about: Federal Circuit Affirms PTAB’s Analogous Art Finding - As IP Watchdog...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

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - August 2022 #5

Best Medical International, Inc. v. Elekta Inc., Appeal Nos. 2021-2099, -2100 (Fed. Cir. Aug. 26, 2022) - In this week’s Case of the Week, the Federal Circuit addressed issues of jurisdiction where a challenged claim was...more

McDonnell Boehnen Hulbert & Berghoff LLP

Adaptive Streaming Inc. v. Netflix, Inc. (Fed. Cir. 2020)

Adaptive Streaming, the owner of U.S. Patent No. 7,047,305, sued Netflix in the Central District of California for alleged infringement. Netflix moved to dismiss the case on the pleadings under Rule 12(b)(6), asserting that...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

Knobbe Martens

Federal Circuit Review - September 2019

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State Sovereignty Principles Do Not Allow a State to Bring a Patent Infringement Suit in an Improper Venue - In Board of Regents v. Boston Scientific Corp., Appeal No. 2018-1700, the Federal Circuit ruled that the patent...more

Knobbe Martens

Federal Circuit Review - April 2019

Knobbe Martens on

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

Sheppard Mullin Richter & Hampton LLP

Framing Your Pitch: A Lesson from the TTI v. IBG Cases

The U.S. Court of Appeals for the Federal Circuit recently issued three interesting, related opinions interpreting and applying the “technological invention” exception to Covered Business Method Review (“CBM Review”). These...more

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

2019 Report: Federal Circuit Appeals from the PTAB - Summaries of Key 2018 Decisions

In 2018, the U.S. Court of Appeals for the Federal Circuit docketed close to 600 appeals from the U.S. Patent and Trademark Office (USPTO). That is the second highest number since starting to hear post-American Invents Act...more

Jones Day

Amended Claims In IPRs Must Clear Higher Hurdle Than Original Claims

Jones Day on

An IPR of issued patent claims is statutorily limited to prior art challenges based on patents and printed publications under § 102 (novelty) or § 103 (obviousness). The PTAB may not institute an IPR of existing patent claims...more

Knobbe Martens

Federal Circuit Review - November 2018

Knobbe Martens on

Federal Circuit Finds Claims Directed to Tabbed Spreadsheets Patent Eligible and Claims Directed to Tracking Changes in Documents Ineligible Under Section 101 - In Data Engine Technologies LLC v. Google LLC, Appeal No....more

Fenwick & West LLP

Intellectual Property Bulletin - Fall 2018

Fenwick & West LLP on

In This Issue - Gender Diversity in Patenting: Current Landscape and Recommendations - The gender gap in patenting is a current challenge that companies face. While this issue seems pervasive, companies and lawyers can...more

Schwabe, Williamson & Wyatt PC

Latest Federal Circuit Court Cases - October 2018 #3

PATENT CASE OF THE WEEK - Data Engine Technologies, LLC v. Google LLC, Appeal No. 2017-1135 (Fed. Cir. Oct. 9, 2018) - In one of two Section 101 cases this week, the Federal Circuit affirmed-in-part, reversed-in-part, and...more

Sunstein LLP

Section 101 Gains a Toehold in IPRs

Sunstein LLP on

Inter partes reviews (IPR) are limited by statute to grounds of invalidity under 35 U.S.C. §§ 102 (novelty requirement) and 103 (nonobviousness requirement) and on the basis of prior art patents or printed publications....more

Knobbe Martens

Federal Circuit Review - July 2018

Knobbe Martens on

Determining Whether a Claim Element or Combination of Elements Would Have Been Well-Understood, Routine, and Conventional Is a Question of Fact - In Aatrix Software, Inc. v. Green Shades Software, Inc., Appeal No....more

Knobbe Martens

Federal Circuit Review - March 2018

Knobbe Martens on

Distribution Agreements Can Constitute Offers for Sale Under Section 102(b) - In The Medicines Company v. Hospira, Inc., Appeal Nos. 2014-1469, 2014-1504, the Federal Circuit held that a distribution agreement qualified as...more

Knobbe Martens

Aatrix Software, Inc v. Green Shades Software, Inc

Knobbe Martens on

Federal Circuit Summaries - Before Moore, Reyna, and Taranto. Appeal from the District Court for the Middle District of Florida. Summary: Allegations in the complaint about how the claimed invention solved problems in...more

Schwabe, Williamson & Wyatt PC

Fresh From the Bench: Latest Federal Circuit Court Cases

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

Jones Day

The PTAB Chats Designs: And Now, for Something Completely Different

Jones Day on

On February 1, the PTAB held its first “Boardside Chat” of 2018, which featured three judges discussing appeals and AIA trial proceedings for design patents. Not only are such proceedings less common for design patents than...more

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