Robert Sachs

Robert Sachs

Fenwick & West LLP

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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

#AliceStorm: The Summertime Blues Continue

In my July post, I noted that Section 101 court decisions were issuing fast and furious, with twelve decisions in just the first ten days. I predicted that "At this pace, we could see some twenty to thirty decisions this...more

8/31/2015 - CLS Bank v Alice Corp Covered Business Method Patents Patent Invalidity Patent Trial and Appeal Board Patents Section 101 Technology USPTO

Versata: What's Technological and The New Rule Against Improvements

What Is a "technological invention"? The other part of the CBM definition at issue in Versata is the exclusion of a technological invention from the scope of CBM review. Correctly, the Court noted that the USPTO's...more

7/16/2015 - CLS Bank v Alice Corp Covered Business Method Patents Financial Products Inventions Patents Technology USPTO Versata

#AliceStorm: July is Hot, Hot, Hot…and Versata is Not, Not, Not

Part I: #AliceStorm and Versata - July invokes images of hot days, cool nights, and fireworks. When it comes to #Alicestorm, the fireworks are happening in the courts, with the Federal Circuit lighting up the sky....more

7/14/2015 - Agency Deference CLS Bank v Alice Corp Covered Business Method Patents Financial Products Inventions Patent Trial and Appeal Board Patent-Eligible Subject Matter Patents Section 101 USPTO Versata

#AliceStorm In June: A Deeper Dive into Court Trends, and New Data On Alice inside the USPTO

The most important thing that happened in June was not the invalidation of yet another pile of patents, but the rather more consequential decision of the Supreme Court to recognize the right of same-sex couples to marry. ...more

7/2/2015 - Abstract Ideas CLS Bank v Alice Corp Patent-Eligible Subject Matter Patents Popular Section 101 USPTO

The One Year Anniversary: The Aftermath of #AliceStorm

It's been one year since the Supreme Court's decision in Alice Corp. v. CLS Bank. On its face the opinion was relatively conservative, cautioning courts to "tread carefully" before invalidating patents, and emphasizing that...more

6/22/2015 - Abstract Ideas Alice Corporation CLS Bank v Alice Corp Covered Business Method Patents Myriad-Mayo Patent Invalidity Patent Prosecution Patent Trial and Appeal Board Patent-Eligible Subject Matter Patents Preemption SCOTUS Section 101 Software USPTO

Tracking #AliceStorm: Spring Showers Continue to Rain Patent Destruction

It's been six weeks since my last AliceStorm update, and we've had plenty of action: twelve §101 decisions, and fourteen patents invalidated in just that period. That said, the success rate of motions on the pleadings is...more

6/1/2015 - AIPLA Alice Corporation Claim Construction CLS Bank v Alice Corp Patent-Eligible Subject Matter Patents Pleadings Software

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 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

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