Robert Sachs

Robert Sachs

Fenwick & West LLP

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Tracking #AliceStorm: The Dead Keep Piling Up

For the first week of April, AliceStorm continues unabated, and though the indices are down, the damage spreads. Not surprisingly, the Eastern District of Texas appears to have become the eye of the storm--that place of calm...more

4/13/2015 - Apple Carfax CLS Bank v Alice Corp Covered Business Method Proceedings Google Patent Trial and Appeal Board Patent-Eligible Subject Matter Patents Section 101

Recent Patent Eligibility Decisions: Ameritox, Certified Measurement, and MyHealth

In Ameritox v. Millenium Health (W.D. Wis., J. Conley) the court rejected the defendant's motion to reconsider its earlier ruling that Ameritox's patents were not ineligible. (The earlier decision cited my Law360 article,...more

4/6/2015 - Healthcare Patent Litigation Patent-Eligible Subject Matter Patents

Tracking #AliceStorm

To track #AliceStorm, we're maintaining a current count of the federal district court and Federal Circuit opinions invalidating patent under Section 101....more

4/3/2015 - Abstract Ideas CLS Bank v Alice Corp Patent Litigation Patent-Eligible Subject Matter Patents Section 101

Comments on USPTO’s Interim Patent Eligibility Guidance (Part 3)

Interim Guidance: Summaries of Patent Eligibility Cases - The Interim Guidance provides succinct summaries of various Supreme Court and Federal Circuit decisions. As explained by the Office at the January 21, 2015...more

2/27/2015 - Abstract Ideas CLS Bank v Alice Corp Interim Guidance Patent-Eligible Subject Matter Patents Section 101 USPTO

Comments on USPTO’s Interim Patent Eligibility Guidance (Part 2)

The Preemption Requirement - Preemption is the core concern that drives the Court’s “exclusionary principle”. The Supreme Court in Alice stated...more

2/23/2015 - CLS Bank v Alice Corp Computer-Related Inventions DNA Interim Guidance Mayo v. Prometheus Patent-Eligible Subject Matter Patents Preemption USPTO

#Alicestorm: Patent Invalidations and USPTO Practice After Alice

The Pineapple Express storms that hit California last December were largest since January 2008.  The joke going around the Bay Area was that the first thing San Franciscans do when a big storm is coming is think up a new...more

1/14/2015 - CLS Bank v Alice Corp Patent Litigation Patent Trial and Appeal Board Patent-Eligible Subject Matter Patents Section 101 USPTO

The Day the Exception Swallowed the Rule: Is Any Software Patent Eligible After Ultramercial III?

The Supreme Court has consistently cautioned that the judicial exceptions to patent eligibility need to be carefully applied: At the same time, we tread carefully in construing this exclusionary principle lest it...more

12/3/2014 - CLS Bank v Alice Corp Patent-Eligible Subject Matter Patents Preemption SCOTUS Software Ultramercial v Hulu

What are the Implications of Alice v. CLS? [Video]

While the Supreme Court’s ruling in Alice v. CLS Bank does not mean that software is ineligible for patent protection, the decision leaves many questions on patent eligibility unanswered. In the second video of a two-part...more

9/29/2014 - CLS Bank v Alice Corp Patent Litigation Patent-Eligible Subject Matter Patents Popular SCOTUS Software USPTO

The Alice Guidance Categories of Potential Abstract Ideas

The Alice Guidance lists four example categories of abstract ideas: - fundamental economic practices - methods of organizing human activities - an idea of itself (sic), and - mathematical...more

9/10/2014 - Abstract Ideas CLS Bank v Alice Corp Patent-Eligible Subject Matter Patents

How to Correctly Apply the Alice Examination Guidance

In my previous post, I provided an explanation of Abstract Ideas under Alice, emphasizing that to be an ineligible abstract idea, a claim must recite a fundamental building block of human ingenuity. How then does an examiner...more

9/8/2014 - Abstract Ideas CLS Bank v Alice Corp Patent-Eligible Subject Matter Patents SCOTUS

Analysis of Preliminary Examination Instructions in view of the Supreme Court Decision in Alice Corp. v. CLS Bank.

On June 25, 2014, just six days after the Supreme Court decided Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014), the USPTO issued its Preliminary Examination Instructions (“Guidance”) in view of the case. ...more

9/4/2014 - Alice Corporation CLS Bank CLS Bank v Alice Corp Patent Infringement Patent Litigation Patents SCOTUS USPTO

USPTO and "Telegate"

By now, we've all heard of the controversy regarding the lax oversight at the USPTO of examiners in the Office's Telework Program--what I'll unofficially dub as "Telegate." Now, the House Oversight and Government Reform...more

8/25/2014 - Congressional Investigations & Hearings Fraud Telecommuting USPTO

What Does the Supreme Court Ruling in Alice v. CLS Mean to a Software Entrepreneur? [Video]

The Supreme Court’s ruling against broadly claimed software patents in Alice Corp. v. CLS Bank leaves many questions on patent eligibility unanswered, which means the controversy and confusion over the scope of patent...more

8/20/2014 - Alice Corporation CLS Bank CLS Bank v Alice Corp Patent Infringement Patent Litigation Patents Popular SCOTUS Software

An Exchange with Michael Risch: Do the Facts Matter in Patent Eligibility?

In my recent analysis of the Alice decision, I wrote the following: In Benson, the Court believed (wrongly it turned about, but that’s beside the point) that the claims covered the basic algorithm for converting...more

7/7/2014 - CLS Bank v Alice Corp Mayo v. Prometheus Patent-Eligible Subject Matter Patents Section 101 Software

Ultramercial back to Federal Circuit. Accenture & Bancorp done

On the final day of its 2013 term, the Supreme Court issued some interesting orders in Section 101 cases dealing with computer-implemented business methods. First, in WildTangent, Inc. v. Ultramercial, LLC (13-255),...more

7/3/2014 - Certiorari CLS Bank v Alice Corp Mayo v. Prometheus Patent-Eligible Subject Matter SCOTUS WildTangent v Ultramercial

Intellectual Property Alert: Supreme Court Rules Against Broadly Claimed Software Patents, But Offers No Clear Test for Abstract...

In a unanimous decision, the Supreme Court held that patent claims directed to abstract ideas do not become patent eligible by the “mere recitation” of generic computer elements. Alice Corp. Pty. Ltd. v. CLS Bank Int’l, No....more

6/23/2014 - Alice Corporation CLS Bank CLS Bank v Alice Corp Mayo v. Prometheus Patent Litigation Patent-Eligible Subject Matter Patents Popular Risk Mitigation SCOTUS Software USPTO

Alice v. CLS: More Questions Than Answers

Alice Corp. v. CLS Bank is out and the result is not unexpected: 1) Alice's patents for computer-implemented methods and systems for financial risk intermediation are invalid. 2) The patents claim abstract idea,...more

6/20/2014 - Alice Corporation CLS Bank CLS Bank v Alice Corp Mayo v. Prometheus Patent Litigation Patent-Eligible Subject Matter Patents Risk Mitigation SCOTUS Software

Octane Fitness and Patent Eligibility

The Supreme Court’s decision in the patent fee shifting case, Octane Fitness, LLC v. Icon Health & Fitness, Inc., No. 12-1184, has literally nothing to do with patent eligibility. However, it does demonstrate an approach to...more

5/7/2014 - Brooks Furniture Exceptional Case Octane Fitness v. ICON Patent Litigation Patent-Eligible Subject Matter Patents SCOTUS Section 101

SmartGene v. ABL: Already on a Law School Exam

One of the Section 101 cases we're handling has already made it into a law school exam. In SmartGene v. ABL, the Federal Circuit ruled that claims to a medical expert system were not patent-eligible. On behalf of ABL, we...more

5/6/2014 - CLS Bank v Alice Corp Patent Infringement Patent Litigation Patents

Fenwick & West and George Mason University Patentable Subject Matter Roundtable Recap

On January 31, 2014, Fenwick & West and the Center for the Protection of Intellectual Property (CPIP) at George Mason University School of Law held a roundtable on Patentable Subject Matter at Fenwick’s Silicon Valley office....more

2/17/2014 - Patent Applications Patent-Eligible Subject Matter Patents

Of Pies and Patent Eligibility: A Dialogue

You are heading to Grandma’s house for yet another family gathering. Upon entering the front door, you are belted by a thunderclap of the smells of mothballs, yellowed plastic sofa covers, cat hair and foot powder. As you...more

2/6/2014 - Patent Applications Patent-Eligible Subject Matter Patents

Alice Corp. v. CLS Bank Amicus Briefs Filed, Reckoning Day Approaches

Last week, we filed two amicus briefs with the Supreme Court in Alice Corp. v. CLS Bank, one on behalf of Advanced Biological Laboratories (ABL), and one for Ronald M. Benrey (Benrey). It goes without saying that this is the...more

2/4/2014 - CLS Bank CLS Bank v Alice Corp Computer-Related Inventions Patent Applications Patent-Eligible Subject Matter Patents Software

A Modest Proposal for Protecting the Laws of Nature from Being Burdened by Patents, and Making them Free to All Men and Reserved...

The Supreme Court’s actions to invalidate the patents at issue in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. ___ (2012) and Association for Molecular Pathology, et al. v. Myriad Genetics, Inc., et...more

1/2/2014 - AMP v Myriad FDA Mayo v. Prometheus Patents SCOTUS USPTO

Abstract Idea or Real World Software Solution?

On Dec. 6, the U.S. Supreme Court granted certiorari in CLS Bank Intl. v. Alice Corp. Pty. Ltd., 717 F.3d 1269 (Fed. Cir. 2013), to address the patent eligibility of computer implemented inventions. For some, the issue is...more

12/18/2013 - CLS Bank CLS Bank v Alice Corp Computer-Related Inventions Patent-Eligible Subject Matter Patents SCOTUS Software USPTO

Mental Steps, Computers and the Patent Eligibility of Expert Systems

Earlier this week, I argued before the Federal Circuit on behalf of my client Advanced Biological Laboratories (ABL) in SmartGene v. ABL. This is, as far as I can determine, the first time the Federal Circuit has addressed...more

12/9/2013 - Patent Applications Patent-Eligible Subject Matter Patents

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