Robert Sachs

Robert Sachs

Fenwick & West LLP

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Alice Brings a Mix of Gifts For 2016 Holidays

Like the odd aunt whose holiday gifts can range from the wonderful to the recyclable, in 2016 Alice brought both good and bad tidings. Let’s start with the nice ones....more

12/27/2016 - Appeals CLS Bank v Alice Corp Covered Business Method Patents Patent Litigation Patent Trial and Appeal Board Patent-Eligible Subject Matter Patents Section 101 USPTO

USPTO's Patent Subject Matter Eligibility Roundtable on Dec. 5, 2015

On December 5, 2016 the USPTO will hold its second Patent Subject Matter Eligibility Roundtable to discuss issues in patent eligibility. The USPTO published a list of eighteen questions in anticipation of the event, dealing...more

12/3/2016 - Abstract Ideas CLS Bank v Alice Corp Computer-Related Inventions Covered Business Method Patents Diagnostic Method Exceptions Life Sciences Mayo v. Prometheus Method Claims Patent-Eligible Subject Matter Patents Preemption Product of Nature Doctrine SCOTUS Section 101 Section 102 Section 103 Software Patents Transformativeness USPTO

Busting the Myth of the Unlimited RCEs

In June, the Government Accounting Office (GAO) issued a performance audit of the U.S. Patent and Trademark Office (USPTO), “Patent Office Should Define Quality, Reassess Incentives, and Improve Clarity.” The report was...more

12/2/2016 - Audit Reports Audits GAO Patent Infringement Patent Litigation Patents Performance Reviews Request for Continued Examination USPTO

AliceStorm Update for October 2016

The Federal Circuit's recent decision in McRO has been interpreted by many in the patent community as a further signal that the so-called "pendulum" is swinging back to a more favorable position for patentees. There is some...more

10/20/2016 - Abstract Ideas Appeals CLS Bank v Alice Corp Computer-Related Inventions Covered Business Method Patents Enfish v Microsoft Ex Parte Patent-Eligible Subject Matter Patents Section 101 Software Patents USPTO

MAZ Encryption Technologies: The Proper Way to Decide a Rule 12(c) Motion for Ineligible Subject Matter

Given the volume of district court decisions regarding Section 101, I typically don't find ones that stand out enough to warrant discussion. But last week's decision by Judge Stark in MAZ Encryption Technologies LLC v....more

10/10/2016 - Abstract Ideas CLS Bank v Alice Corp Computer-Related Inventions Encryption Federal Rule 12(b)(6) Judge Stark Judgment on the Pleadings Myriad-Mayo Patent-Eligible Subject Matter Patents Pleadings Prior Art Section 101 Software Patents

More Lessons From McRo

My previous blog on McRo focused on the direct aspects of the decision, but there are other excellent points that the court makes and that can be derived from the opinion, and that should play an important role in how the...more

9/26/2016 - Abstract Ideas Bilski CLS Bank v Alice Corp Computer-Related Inventions Myriad-Mayo Patent-Eligible Subject Matter Patents Preemption Product of Nature Doctrine Section 101 Software Patents USPTO

Bad Science Makes Bad Patent Law—No Science Makes It Worse (Part II)

In Part I, I explained some general criteria for laws of nature, considering the prototypes of Newton's laws and Einstein's E=mc2. Now I'll turn to whether there are laws of nature in biology. Biological generalizations,...more

9/20/2016 - Biotechnology DNA Mayo v. Prometheus Patent-Eligible Subject Matter Patents Pharmaceutical Industry Pharmaceutical Patents

McRo: Preemption Matters After All

The Federal Circuit has released its long-awaited opinion in McRo v. Bandai, reversing the lower court’s decision that the claims were ineligible subject matter. McRo’s invention in U.S. 6,307,576 was a method used in 3D...more

9/16/2016 - Abstract Ideas Animation CLS Bank v Alice Corp Computer-Related Inventions Enfish v Microsoft Intellectual Property Protection Mayo v. Prometheus Patent Litigation Patent-Eligible Subject Matter Patents Preemption Section 101 Software Developers Software Patents USPTO

Bad Science Makes Bad Patent Law—No Science Makes It Worse (Part I)

I believe that the opinions of the Federal Circuit do not reflect a deep understanding of science and technology. In this blog I'll focus specifically on the issue of laws of nature. It appears that the Federal Circuit...more

9/14/2016 - Mayo v. Prometheus Patent Infringement Patent Litigation Patent-Eligible Subject Matter Patents

AliceStorm in the Dog Days of Summer

Over the past two months, the trends I've discussed in my previous blogs on AliceStorm have continued and become more entrenched. In particular, the Federal Circuit has been quite active, issuing nine decisions since late...more

9/8/2016 - Abstract Ideas Alice Corporation CLS Bank v Alice Corp Computer-Related Inventions Corporate Counsel Fitbit Inventions ITC Patent Litigation Patent-Eligible Subject Matter Patents Software Young Lawyers

Will the USPTO’s “Patents 4 Patients” Program Even Make It Off the "Cancer Moonshot" Launch Pad?

The White House recently announced the Cancer Moonshot Task Force, an effort to “focus on making the most of Federal investments, targeted incentives, private sector efforts from industry and philanthropy, patient engagement...more

7/1/2016 - Appeals China European Patent Office Innovation Mayo v. Prometheus Patent-Eligible Subject Matter Patents Patents 4 Patients Product of Nature Doctrine Section 101 USPTO

Two Years After Alice: A Survey of the Impact of a "Minor Case" (Part 2)

AliceStorm at the USPTO - While AliceStorm's effect is most visible in the courts, because of their public nature, the real impact is largely unseen: it is the widespread rejection of patent applications by the USPTO. ...more

6/21/2016 - Claim Construction Corporate Counsel E-Commerce Patent Applications Patents Software Patents Technology USPTO Young Lawyers

Two Years After Alice: A Survey of the Impact of a "Minor Case" (Part 1)

Two years ago this Sunday, the Supreme Court in Alice Corp. Pty Ltd. v. CLS Bank Int'l addressed a relatively narrow issue: does a claim reciting a generic computer implementation transform an abstract idea into a...more

6/17/2016 - Abstract Ideas CLS Bank v Alice Corp Computer-Related Inventions Covered Business Method Patents Myriad-Mayo Patent-Eligible Subject Matter Patents Product of Nature Doctrine Section 101 Software Patents USPTO

The Mind as Computer Metaphor: Benson and the Mistaken Application of Mental Steps to Software (Part 5)

Part V. The Fictional Mental Steps Doctrine Does Not Apply To Programmed General Purpose Computers - The fictional form of the mental steps doctrine is inapplicable to digital computers and computer-implemented...more

5/20/2016 - Algorithms Laptop Computers Patent-Eligible Subject Matter Patents Software Patents

The Mind as Computer Metaphor: Benson and the Mistaken Application of Mental Steps to Software (Part 4)

Part IV. The Continued Application Of Mental Steps To Software Inventions - Unfortunately, the Supreme Court’s misstatement of the relationship between computers and minds continues to this day to be cited as authority...more

5/19/2016 - Abstract Ideas CLS Bank v Alice Corp Patent Litigation Patent-Eligible Subject Matter Software Patents

USPTO Updates Alice Guidance with Examiner Instructions, More Work Needed

On May 4, the USPTO issued a new memorandum for patent examiners, “Formulating a Subject Matter Eligibility Rejection and Evaluating the Applicant's Response to a Subject Matter Eligibility Rejection” (“Examiner...more

5/16/2016 - Abstract Ideas Bilski CLS Bank v Alice Corp Computer-Related Inventions Life Sciences Patent-Eligible Subject Matter Patents USPTO

The Mind as Computer Metaphor: Benson and the Mistaken Application of Mental Steps to Software (Part 1)

Of the three recognized judicial exceptions to Section 101—laws of nature, natural phenomena, and abstract ideas—none has proved more resistant to reasoned judicial analysis than the last. From its inception in Gottschalk v....more

4/17/2016 - Abstract Ideas CLS Bank v Alice Corp Computer-Related Inventions Inventions Patent-Eligible Subject Matter Patents Software

The Mind as Computer Metaphor: Benson and the Mistaken Application of Mental Steps to Software (Part 3)

Part III. Functionalism: A Philosophical Argument In Support Of The Functional Equivalence Of Mental Steps And Computer - Even if UDC did not support the Solicitor General’s argument that “the functions themselves are...more

4/11/2016 - Abstract Ideas Computer-Related Inventions Patent-Eligible Subject Matter Patents Software Solicitor General

The Mind as Computer Metaphor: Benson and the Mistaken Application of Mental Steps to Software (Part 2)

The fictional form of the mental steps doctrine arose in Benson, where the Court stated: A digital computer, as distinguished from an analog computer, is that which operates on data expressed in digits, solving a problem...more

4/8/2016 - Abstract Ideas Computer-Related Inventions Patent-Eligible Subject Matter Patents Software Solicitor General

Supreme Court Vacates Alice in view of #AliceStorm

In a little-noticed order issued recently, the Supreme Court vacated the Alice decision. This comes less than a month after this tweet made the rounds in the patent community...more

4/1/2016 - Abstract Ideas CLS Bank v Alice Corp Covered Business Method Patents Patent Litigation Patent-Eligible Subject Matter Patents SCOTUS Software Vacated

#AliceStorm: When It Rains, It Pours...

Last year I christened the post-Alice impact on patents #Alicestorm, riffing on the hashtag #hellastorm used to refer to the Pineapple Express storms the drenched the Bay Area in December 2014. This year we have El Niño...more

3/7/2016 - Abstract Ideas CLS Bank v Alice Corp Corporate Counsel Covered Business Method Proceedings Patent Invalidity Patent Litigation Patent Trial and Appeal Board Patent-Eligible Subject Matter SCOTUS Section 101

7 Popular Patent Law Writers to Follow Right Now

A shortlist of JD Supra writers covering the many complex issues of Patent Law and featured here for a number of reasons, including that they recently authored popular work in this realm....more

10/29/2015 - Corporate Counsel Legal Perspectives Patents Popular Young Lawyers

Update on Section 101 Rejections at the USPTO

In my June post, The One Year Anniversary: The Aftermath of #AliceStorm, I surveyed the frequency of Section 101 rejections at the USPTO. My analysis was based on approximately 300,000 office action and notices of allowance...more

10/20/2015 - CLS Bank v Alice Corp Patent Applications Patent Prosecution Patent-Eligible Subject Matter Patents Popular Section 101 USPTO

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