Any patent attorney who has been in the business for more than a few years understands from experience that some USPTO examiners are tougher than others. This should not be surprising, as each examiner is an individual who...more
There is a theme running through many patent-eligibility disputes that is analogous to baiting-and-switching. One party has claims that recite an invention. The other party characterizes those claims at a high level or...more
CosmoKey asserted U.S. Patent No. 9,246,903 against Duo in the U.S. District Court for the District of Delaware, alleging infringement. The District Court found the patent's claims to be ineligible under 35 U.S.C. § 101...more
Two years ago, MyMail and ooVoo went to the mat in the Federal Circuit over claims that the District Court for the Northern District of California found ineligible under 35 U.S.C. § 101. Patent holder MyMail was able to...more
Diamond v. Diehr, decided by the Supreme Court in 1981, seemed to establish a bedrock principle of statutory construction for patent law. The Court stated that "[t]he 'novelty' of any element or steps in a process, or even...more
Sensormatic asserted U.S. Patents 7,730,534, 7,936,370, 7,954,129, 8,208,019, and 8,610,772 against Wyze in the District of Delaware, alleging infringement. Wyze moved the District Court to dismiss under Rule 12(c), on the...more
When the Supreme Court began poking around into the law of patent eligibility just over a decade ago, the invention topics that it considered under the abstract idea exception were limited to types of financial transactions. ...more
The Supreme Court's Alice Corp. v. CLS Bank Int'l case has been criticized for setting forth a patent eligibility analysis that is unworkably subjective. As a consequence, the validity of particular types of inventions,...more
A computer does just three things: receives information in the form of bits, transforms this information, and provides output based on the information as transformed. The receiving may take place by way of various types of...more
This decision is bad. Not an American Axle level of bad, but still quite far from good.
Simio sued FlexSim in the District of Utah for alleged infringement of its U.S. Patent No. 8,156,468. FlexSim moved for dismissal on...more
12/30/2020
/ Abstract Ideas ,
Computer-Related Inventions ,
Functionality ,
Inventive Concept Test ,
Patent Infringement ,
Patent Litigation ,
Patent-Eligible Subject Matter ,
Patents ,
Prior Art ,
Section 101 ,
Software Patents
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
One of the more intellectually dishonest aspects of current patent eligibility law is that it allows one to ignore certain claim elements when evaluating claims under 35 U.S.C. § 101. In Mayo v. Prometheus, it was stated...more
This article is Part II of a study on the patent eligibility of graphical user interfaces. Part I was published yesterday. We continue from where we left off, with overviews of a handful of Federal Circuit § 101 decisions...more
The evolution of graphical user interfaces parallels the evolution of computing technology itself. As computers grow more powerful and sophisticated, so does their ability to display cutting-edge representations of...more
11/9/2020
/ Abstract Ideas ,
CLS Bank v Alice Corp ,
Computer-Related Inventions ,
Intellectual Property Protection ,
Inventive Concept Test ,
Patent Litigation ,
Patent-Eligible Subject Matter ,
Patents ,
Popular ,
Prior Art ,
Section 101 ,
Software Developers ,
Software Patents ,
USPTO
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
11/2/2020
/ Abstract Ideas ,
CLS Bank v Alice Corp ,
Examination Procedures ,
Intellectual Property Protection ,
Inventive Concept Test ,
Patent Examinations ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patent-Eligible Subject Matter ,
Patents ,
Section 101 ,
USPTO
One of the more frustrating aspects of current patent-eligibility law is that it lends itself all too easily to mischief. In particular, given that the eligibility test under 35 U.S.C. § 101 as interpreted by the courts is...more
Patent eligibility is a bit of a mess these days. Ever since the Supreme Court handed down the Alice v. CLS Bank decision six years ago, the distinction between what might be subject matter that can be patented and what is...more
8/1/2020
/ Abstract Ideas ,
Appeals ,
Claim Construction ,
CLS Bank v Alice Corp ,
DDR Holdings v Hotels.com ,
Enfish v Microsoft ,
Informational Studies ,
Mayo v. Prometheus ,
McRo v Bandai Namco ,
Novelty ,
Patent-Eligible Subject Matter ,
Patents ,
Product of Nature Doctrine ,
SCOTUS ,
Section 101 ,
Section 102 ,
Section 103 ,
Section 112 ,
USPTO
Note: The below is a sarcastic parody, in the spirit of our earlier sarcastic parodies.
WASHINGTON D.C., June 23, 1984. In a unanimous decision, the Federal Circuit has ruled U.S. Patent No. 4,405,829 invalid under 35...more
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
7/21/2020
/ Abstract Ideas ,
Appeals ,
CLS Bank v Alice Corp ,
Computer-Related Inventions ,
Dissenting Opinions ,
Judicial Exception ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patent-Eligible Subject Matter ,
Patents ,
Reversal ,
Section 101 ,
Section 102
Electronic Communication Technologies (ECT) sued ShoppersChoice in the Southern District of Florida for allegedly infringing claim 11 of U.S. Patent No. 9,373,261. The claim recites...more
7/20/2020
/ Abstract Ideas ,
Appeals ,
CLS Bank v Alice Corp ,
Judgment on the Pleadings ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patent-Eligible Subject Matter ,
Patents ,
Section 101 ,
USPTO
Uniloc, owner of U.S. Patent No. 6,993,049, brought an action for infringement of that patent against LG in the Northern District of California. The District Court granted LG's motion to dismiss on the pleadings, agreeing...more
In a post-truth world, it is more tempting than ever to evaluate data based on gut instinct, intuition, and anecdotal evidence. It is thus refreshing when results of a robust statistical analysis are published, even if the...more
In 2014's Alice Corp. v. CLS Bank Int'l case, Justice Thomas famously wrote, "we need not labor to delimit the precise contours of the 'abstract ideas' category in this case." Instead, he found the claims of patentee Alice...more
3/3/2020
/ Abstract Ideas ,
Appeals ,
Bilski ,
CLS Bank v Alice Corp ,
Covered Business Method Patents ,
Legal History ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patent-Eligible Subject Matter ,
Patents ,
SCOTUS ,
Section 101 ,
USPTO
Last month the U.S. Patent and Trademark Office published an update ("October Update") to its subject matter eligibility guidance. As we noted at that time, the October Update is more evolutionary than revolutionary, and...more
MyMail is the holder of U.S. Patent Nos. 8,275,863 and 9,021,070, both directed to "methods of modifying toolbars that are displayed on Internet-connected devices such as personal computers." MyMail initially asserted these...more