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Judge Mayer’s Concurrence in IV Shows the Problem with Judicially Created Exceptions

The press is all abuzz with reactions to Judge Mayer’s concurring opinion bluntly stating that “claims directed to software implemented on a generic computer are categorically not eligible for patent.” Intellectual Ventures...more

Intellectual Property Bulletin - Fall 2015

Judge Leval Illuminates Google Books Fair Use Issues - Second Circuit Affirms Summary Judgment for Defendant in Massive Copying Case - Based on the defense of fair use, the Second Circuit affirmed summary judgment...more

Intellectual Property Bulletin - Summer 2015

28 U.S.C. § 1782: A Powerful Tool in Global Disputes - As the number and complexity of cross-border and multi-jurisdictional disputes increase, companies can use 28 U.S.C. § 1782 to obtain evidence from U.S.-based...more

Well, that didn’t last long…

Last week, I reported on a September 4 decision from the District of Massachusetts in which the court emphasized that the presumption of validity applies to subject matter eligibility. This week, another judge in the same...more

Massachusetts Court Upholds Software Method Patent

On September 4, a Massachusetts district court issued an interesting ruling that calls into question many of the recent preliminary stage Alice-based invalidations we’ve seen over the past year. The decision, the latest...more

Federal Circuit Creates New (non-Alice) Hurdle for Software Patents

In the wake of last year’s Supreme Court decision in Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014), dozens of courts have declared scores of patents to be invalid as not satisfying the requirements of §101...more

6/25/2015

Intellectual Property Bulletin - Spring 2015

California’s Eraser Law: What IP Attorneys and Owners Need to Know - Hector recently graduated from UC Berkeley and is anxious about his upcoming job interview. He is about to enter the adult world. But he has also got...more

Intellectual Property Bulletin - Winter 2015

Copyrighting Player-Generated Content in Video Games - Last year, consumers spent more than $21 billion on the video game industry. The Entertainment Software Association reports that almost 60% of Americans—roughly...more

Are the Supreme Court’s exceptions to patentability mandated by the Constitution, or are they just “statutory stare decisis”?

There has been significant commentary, both before and after the Supreme Court’s decision in Alice, that the various judicially created exceptions to patentability under 35 USC § 101 are not only sound, but are also...more

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

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

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

Where are You, Congress? Alice v. CLS Bank and “The Case Against Patents”

A recent episode of NPR’s “Planet Money” was entitled “The Case Against Patents.” Several notable commentators in that episode questioned whether patents help or hinder innovation, whether history supports the benefits of a...more

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

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

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

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

Intellectual Property Bulletin - Spring 2014

Right of Publicity? First, Let Me Take a Selfie - “Oh, he wants to do a selfie,” President Barack Obama observed with amusement before gamely posing with Boston Red Sox designated hitter David Ortiz. Ortiz snapped the...more

Intellectual Property Bulletin - Winter 2014

The America Invents Act (AIA) came into law back in September 2011, but it was not until last March that its provisions were completely phased in. The changes last year included not only the switch from a “first-to-invent” to...more

Electronic Transfer of Copyright Approved by Fourth Circuit

The Fourth Circuit has confirmed what many copyright holders have long hoped was true: That copyright interests can be validly transferred through electronic means, despite language in the 1976 Copyright Act requiring that...more

Intellectual Property Bulletin - Summer 2013: ICANN Set to Launch New Generic Top-Level Domains: Understanding the Nuts and Bolts

The universe of generic top-level domains (gTLDs), currently limited to about a dozen such as .com, .net, and .org, will expand this year, as some of the more than 1,000 potential new gTLDs are rolled out. Businesses may want...more

Intellectual Property Bulletin - Summer 2013: Federal Circuit Holds That Failure to Abide by NDA Confidentiality Designation...

Prior to discussing or exchanging proprietary information with one another, companies frequently enter into non-disclosure agreements (NDAs) to afford protections beyond what they would otherwise be entitled to under their...more

Intellectual Property Bulletin - Summer 2013: Nash Bargaining Solution and Patent Damages: A 50 Percent “Rule of Thumb”?

The Federal Circuit rejected the use of the 25 percent “rule of thumb” as a basis for establishing a reasonable royalty in the Uniloc case in 2011. Uniloc USA, Inc. v. Microsoft Corp., 632 F.3d 1292 (Fed. Cir. 2011). Since...more

10/1/2013

Intellectual Property Bulletin - Summer 2013

January 2012 saw an explosion of controversy over two Internet-related bills that had been progressing through Congress: the Stop Online Piracy Act (SOPA) in the House, and the Preventing Real Online Threats to Economic...more

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