Robert Sachs

Robert Sachs

Fenwick & West LLP

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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

The Problem of Patent Glossaries Part I: Ambiguity in Patent Claims and the Nature of Meaning

What motivates the USPTO to consider the use of glossaries in patent applications is surely the hue and cry that software patents are frequently, if not inherently, vague and ambiguous, and that something must be done to help...more

11/13/2013 - Ambiguous Claim Construction Infringement Patent Applications Patents Software USPTO

Legal Resource Guide for Startup Entrepreneurs

In this Guide: - Guide to Starting a Corporation - Venture Capital for High Technology Companies - Angel/Seed Financing Survey – 2012: Internet/Digital Media and Software Industries - Trends in...more

11/13/2013 - Entrepreneurs Patents Startups Venture Capital

Rader’s Olive Branch: Ultramercial II Resolves the Judicial Deadlock of CLS Bank

The Federal Circuit’s en banc decision in CLS Bank Int’l v. Alice Corp., 717 F.3d 1269, (Fed. Cir. 2013) has been roundly criticized as a “nightmare,” further cementing the impression that the court was confused and in...more

9/30/2013 - Patent Applications Patent-Eligible Subject Matter Patents

Software Development and the Use of Abstractions

The process of developing software typically involves the use of abstractions of concrete concepts to describe the operations performed by a computer and objects of such operations. Some software abstractions are so familiar...more

9/24/2013 - Computer-Related Inventions Functionality Patent Applications Patents Software Software Developers

Mirror, Mirror: The Alternative Legal Universes of Guidewire and Ultramercial II

Alternative universes make for compelling drama on the big screen, especially when the plot involves the reversal of identities or roles. What is surprising is how exciting this theme can be when set in the scholarly suites...more

9/11/2013 - Bilski Patent Litigation Patents Star Trek

Applying Can Openers to Real World Problems: The Failure of Economic Analysis Applied to Software Patents

A shepherd is tending a huge flock of sheep in a field beside a country road. A man comes walking down the road and approaches the shepherd. "I bet you $100 against one of your sheep that I can tell you the exact number in...more

8/15/2013 - Claim Construction Infringement Non-Practicing Entities Patent Reform Patent Trolls Patent-Eligible Subject Matter Patents Software

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