Tag Archives: “patent eligibility”

USPTO Report on Patent Eligible Subject Matter

  On July 25, the USPTO published a new report titled “Patent Eligible Subject Matter: Report on Views and Recommendations From the Public.” The report attempts to synthesize public comments on the appropriate boundaries of patent eligible subject matter. The report includes a section reviewing the historical development of patent subject matter eligibility in the … Continue Reading

Important Federal Circuit Decision Provides More Clues on Software Eligibility

On Sept. 13, 2016, the Court of Appeals for the Federal Circuit gave applicants and patentees another tool with which to argue for the patent eligibility of their software innovations, finding that McRO’s lip-synchronizing patents were eligible under 35 U.S.C. § 101.  Judge Reyna, joined by Judges Taranto and Stoll, determined that representative claim 1 … Continue Reading

Federal Circuit Provides Additional Guidance in Reversing Holding of Patent-Ineligibility of Biotech Invention

Although it is not yet a bright line, the Federal Circuit has considerably decreased the fuzziness of the distinction between patent-eligible and patent-ineligible inventions, at least where the exception to 35 U.S.C. § 101 is a law of nature. In Rapid Litigation Management Ltd. v. Cellzdirect, Inc., Appeal No. 2015-1570 (Fed. Cir. July 5, 2016), the … Continue Reading

CAFC Hands Down Significant § 101 Decision in Bascom Global Internet

In Bascom Global Internet v. AT&T Mobility LLC, Bascom Global sued for infringement of US Patent No. 5,987,606, titled “Method And System For Content Filtering Information Retrieved From An Internet Computer Network,” November 16, 1999 (the ’606 patent). The defendant moved to dismiss the complaint under Rule 12(b)(6), and the motion for dismissal was granted … Continue Reading

Major 101 Decision – Enfish v. Microsoft

Today in Enfish v. Microsoft, the Federal Circuit held software claims patent eligible, reversing the district court’s grant of summary judgment on 101. This is a major decision because it is only the second since Alice where the Federal Circuit has held patent claims eligible (DDR being the first). Further, the case heavily emphasizes that … Continue Reading

In Re Smith: A Raw Deal for Inventors?

The recent decision in In re Smith (Fed. Cir. 2016), in which the Federal Circuit affirmed the rejection of claims 1-18 as being ineligible for patent under 35 USC § 101, represents another example of the shrinking scope of patent-eligibility since the Supreme Court’s Alice decision.[1] As discussed below, this case concerned the patent-eligibility of … Continue Reading

Upcoming Federal Circuit Decision Presents Opportunity for Clarification of Patentable Subject Matter

Since Alice,[1] consistently defining the bounds of statutory subject matter in computer arts confounds even the most experienced attorneys. E-commerce software combining visual elements of multiple parties’ websites is patent eligible,[2] but a motion-tracking system claiming inertial sensors is not.[3] While the results have cut sharply against patent holders asserting or prosecuting software properties, legal … Continue Reading

Addressing Section 101 Issues Through Reissue

The contraction of patent eligible subject matter under 35 U.S.C. 101 that Alice, Mayo, Bilski, and other recent court cases have triggered has placed a cloud of uncertainty over a large number of patents.  [1]  Fortunately, though, the law provides patent owners with a process for taking remedial steps to address Section 101 risks in … Continue Reading

Public Comments to USPTO’s Preliminary Examination Instructions in View of Supreme Court Decision in Alice Case

As reported here last month, the USPTO recently issued a memorandum to the Examination Corps, entitled “Preliminary Examination Instructions in view of the Supreme Court Decision in Alice Corporation Pty. Ltd. v. CLS Bank International, et al.” The memorandum provides preliminary instructions to the Patent Examining Corps relating to subject matter eligibility of claims involving … Continue Reading
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