Michael Borella

Michael Borella

McDonnell Boehnen Hulbert & Berghoff LLP

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Of Technical Tools and Problems: Going Beyond the Two-Prong Alice Test

It is abundantly clear that the Supreme Court's 2014 Alice Corp. v. CLS Bank decision has significantly changed the patent-eligibility landscape for business methods and some types of software inventions. For instance, in...more

8/22/2016 - CLS Bank v Alice Corp Computer-Related Inventions Covered Business Method Proceedings Enfish v Microsoft Patent Litigation Patent-Eligible Subject Matter Patents Section 101 Software Technological Tool Test TLI Communications USPTO

Netsirv v. Boxbee, Inc. (PTAB 2016)

A post grant review (PGR) is an administrative reconsideration of a recent-granted U.S. patent. The proceeding is held in the USPTO, before that body's Patent Trial and Appeal Board. A petition for PGR is timely if it is...more

8/19/2016 - Abstract Ideas Claim Construction CLS Bank v Alice Corp Patent Applications Patent Invalidity Patent-Eligible Subject Matter Patents Post-Grant Review Preponderance of the Evidence Prior Art Section 101

In re Magnum Oil Tools Int'l, Ltd. (Fed. Cir. 2016)

McClinton Energy Group filed an inter partes review (IPR) petition against all claims of U.S. Patent No. 8,079,413, owned by Magnum Oil Tools International, Ltd. The USPTO's Patent Trial and Appeal Board (PTAB) instituted...more

8/15/2016 - Administrative Proceedings Appeals Burden of Proof Burden-Shifting Evidence Fracking Inter Partes Review Proceedings Intervenors Obviousness Patent Litigation Patent Trial and Appeal Board Patents Petition for Review USPTO

Electric Power Group, LLC v. Alstom S.A. (Fed. Cir. 2016)

Patent owner Electric Power Group asserted U.S. Patent Nos. 7,233,843, 8,060,259, and 8,401,710 against Alstom S.A. and various other parties in the Central District of California. The District Court granted Alstom's motion...more

8/2/2016 - Abstract Ideas Alstom Patent Ownership Patent-Eligible Subject Matter Patents Section 101

Shortridge v. Foundation Construction Payroll Service, LLC (Fed. Cir. 2016)

Douglas M. Shortridge, the named inventor of U.S. Patent No. 8,744,933, sued Foundation Construction Payroll Service, LLC ("Foundation") for infringement thereof in the U.S. District Court for the Northern District of...more

7/25/2016 - Abstract Ideas CLS Bank v Alice Corp Motion to Dismiss Patent Infringement Patent-Eligible Subject Matter Patents Payroll Records Section 101

Open Parking, LLC v. Parkme, Inc. (W.D. Penn. 2016)

Every day, millions of people are subjected to a frustrating experience -- finding a place to park their automobiles. Whether at the train station, the sports stadium, a festival, or a popular restaurant, circulating through...more

7/8/2016 - Abstract Ideas CLS Bank v Alice Corp Failure To State A Claim Federal Rule 12(b)(6) Motion to Dismiss Parking Lots Patent-Eligible Subject Matter Patents Section 101

USPTO Issues Memorandum Regarding Enfish and TLI

On the heels of the Federal Circuit handing down two subject matter eligibility decisions regarding software, the U.S. Patent and Trademark Office has published a memo to its examining corps regarding these cases. On May 12,...more

5/27/2016 - Abstract Ideas CLS Bank v Alice Corp Microsoft Patent-Eligible Subject Matter Product of Nature Doctrine Software Patents USPTO

In re TLI Communications LLC Patent Litigation (Fed. Cir. 2016)

This case is notable mainly because it is the first Federal Circuit decision to distinguish itself from Enfish LLC v. Microsoft Corp., and also because it is another reminder that the wall between patentable subject matter,...more

5/23/2016 - Abstract Ideas CLS Bank v Alice Corp Motion to Dismiss Obviousness Patent Infringement Patent-Eligible Subject Matter Patents

Section 101 and the Growing Alice Backlash

35 U.S.C. § 101 states that "any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof" is patent-eligible. However, the Supreme Court has traditionally...more

5/16/2016 - CLS Bank v Alice Corp Patent-Eligible Subject Matter Patents Section 101 USPTO

Enfish, LLC v. Microsoft Corp. (Fed. Cir. 2016)

Some things are rare. A visit from Halley's comet . . . the Chicago Cubs winning the World Series . . . a season of Game of Thrones without a major character's death . . . and a Federal Circuit panel finding claims that pass...more

5/13/2016 - CLS Bank v Alice Corp Microsoft Patent Infringement Patent-Eligible Subject Matter

Peschke Map Technologies LLC v. Rouse Properties Inc. (E.D. Va. 2016)

Plaintiff Peschke Map Technologies ("Peschke") sued Rouse Properties ("Rouse") for infringement of U.S. Patent No. 6,397,143, directed to a computer-based map navigation and display system. Rouse filed a 12(b)(6) motion to...more

3/23/2016 - Abstract Ideas Claim Construction CLS Bank v Alice Corp Federal Rule 12(b)(6) Patent Infringement Patent Litigation Patent-Eligible Subject Matter Patents Section 101

Patentable Subject Matter after Alice: Best Practices for Responding to 35 U.S.C. § 101 Rejections

It has been over 20 months since the Supreme Court handed down the landmark decision in Alice Corp. v. CLS Bank Int’l, effectively limiting the scope of patent-eligible subject matter. In particular, software and business...more

3/5/2016 - Abstract Ideas CLS Bank v Alice Corp Corporate Counsel Covered Business Method Patents Patent-Eligible Subject Matter Patents Preemption Rebuttable Presumptions Section 101 Software Young Lawyers

Advanced Marketing Systems, LLC v. CVS Pharmacy (E.D. Tex. 2016)

In February 2015, Advanced Marketing Systems (AMS) sued a number of defendants, alleging infringement of various claims of U.S. Patent Nos. 8,219,445, 8,370,199, and 8,538,805. The defendants filed a motion for judgment on...more

2/2/2016 - Abstract Ideas CLS Bank v Alice Corp Motion for Judgment Patent Litigation Patent-Eligible Subject Matter Scope of the Claim

Voxaton LLC v. Alpine Electronics of America, Inc. (E.D. Tex. 2016)

Voxathon sued Alpine, and a number of defendants that manufacture automobiles, for infringement of U.S. Patent No. 6,442,261.  According to the Court, the patent "relates to computer-implemented systems and methods for...more

1/26/2016 - Abstract Ideas Claim Construction CLS Bank v Alice Corp Patent Infringement Patent Litigation Patent-Eligible Subject Matter

Q&A from Webinar on Top Patent Law Stories of 2015

Earlier today, we presented a live webinar on the "Top Patent Law Stories of 2015." The webinar covered seven of the twenty stories that made it onto Patent Docs ninth annual list of top patent stories. The seven stories...more

1/22/2016 - America Invents Act Chevron Deference CLS Bank v Alice Corp En Banc Review Limelight v Akamai Patent Infringement Patent-Eligible Subject Matter Patents Sandoz v Amgen Section 101 Sequenom USPTO

Motio, Inc. v. BSP Software LLC (E.D. Tex. 2016)

The fallout from the Supreme Court's Alice Corp. v. CLS Bank Int'l case continues to reshape the landscape of patent-eligibility. Despite guidance from the USPTO, patentees still struggle with what exactly is patent-eligible...more

1/12/2016 - Abstract Ideas CLS Bank v Alice Corp Judgment on the Pleadings Patent-Eligible Subject Matter Patents Section 101 Software Patents USPTO

eDekka LLC v. 3balls.com, Inc. (E.D. Tex. 2015)

As 2015 drew to a close, the toll of the Alice Corp. v. CLS Bank Int'l decision on software and business method patents became apparent. Post Alice, approximately 70% of all patents challenged under 35 U.S.C. § 101 have been...more

1/7/2016 - CLS Bank v Alice Corp Covered Business Method Patents Exceptional Case Octane Fitness v. ICON Patent Infringement Patent-Eligible Subject Matter Patents SCOTUS Section 101 Software Patents Totality of Circumstances Test

Inphi Corp. v. Netlist, Inc. (Fed. Cir. 2015)

Many patent attorneys have a visceral, disapproving reaction to negative claim limitations -- elements that specify what a claim does not cover. While a line of Federal Circuit cases has established that negative limitations...more

11/18/2015 - Inter Partes Reexamination Patent Litigation Patent Trial and Appeal Board Patents Written Descriptions

MacroPoint, LLC v. FourKites, Inc. (N.D. Ohio 2015)

In a previous article on the USPTO's publication of its 2014 Interim Guidance on Patent Subject Matter Eligibility, we wrote: Despite the Interim Guidance offering a reasonably fair and thorough overview of the current...more

11/11/2015 - Claim Construction CLS Bank v Alice Corp Patent Litigation Patent-Eligible Subject Matter Patents SCOTUS USPTO

Comments on the USPTO's Subject Matter Eligibility Guidance -- BSA

On July 30, 2015, the U.S. Patent and Trademark Office updated its subject matter eligibility guidance ("July Update"). In the July Update, the Office provided recommendations and resources for examiners in addition to those...more

11/6/2015 - Abstract Ideas CLS Bank v Alice Corp Examiners Guidance Update Patent Infringement Patent Litigation Patent-Eligible Subject Matter Patents Public Comment SCOTUS Software Patents USPTO

Comments on the USPTO's Subject Matter Eligibility Guidance -- The ABA

On July 30, 2015, the U.S. Patent and Trademark Office updated its subject matter eligibility guidance ("July Update"). The update provided recommendations and resources for examiners in addition to those in the Office's...more

11/4/2015 - Abstract Ideas American Bar Association (ABA) AMP v Myriad CLS Bank v Alice Corp Guidance Update Intellectual Property Protection Inventions Mayo v. Prometheus Patent Infringement Patent Litigation Patent-Eligible Subject Matter Patents Public Comment SCOTUS TRIPS Agreement USPTO

PTAB Finds Two Sets of Claims to Be Not Abstract

USPTO SealAs the fallout from the Supreme Court's Alice Corp. v. CLS Bank Int'l case makes its way through the federal courts and the U.S. Patent and Trademark Office (USPTO), applicants and patentees continue to struggle...more

9/25/2015 - Abstract Ideas CLS Bank v Alice Corp Patent Infringement Patent Invalidity Patent Litigation Patent Trial and Appeal Board Patent-Eligible Subject Matter Patents SCOTUS USPTO

July 2015 Update on Subject Matter Eligibility

On July 30, 2015, the U.S. Patent and Trademark Office updated its subject matter eligibility guidance ("Eligibility Update"). This update provides recommendations and resources for examiners in addition to those in the...more

8/26/2015 - Abstract Ideas Bilski CLS Bank v Alice Corp Intellectual Property Protection Mayo v. Prometheus New Guidance Patent Infringement Patent Litigation Patent-Eligible Subject Matter Patents Preemption SCOTUS Ultramercial v Hulu USPTO

Federal Circuit Defines Joint Tortfeasor Infringement Liability in Akamai v. Limelight

The Federal Circuit issued a unanimous en banc decision yesterday regarding when joint tortfeasors may be held liable for literal infringement in Akamai Technologies Inc. v. Limelight Networks, Inc. In its opinion, the court...more

8/17/2015 - Covered Business Method Patents Direct Infringement Induced Infringement Joint Tortfeasors Limelight v Akamai Patent Infringement Patents

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