CLS Bank v Alice Corp

News & Analysis as of

#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

Federal Circuit Review | August 2015

Online Banking Patents Based On “Abstract Ideas” Held Patent Ineligible Under Alice - In Intellectual Ventures I LLC v. Capital One Bank (USA), NA, Appeal No. 2014-1506, the Federal Circuit held that claims directed to...more

Patenting: A Guidebook For Patenting in a Post-America Invents Act World

Patenting - Patenting generally offers a superior means for legally protecting most inventions, particularly since: • copyright, when available, does not provide a broad scope of protection; and • the ability...more

July 2015 Update on Subject Matter Eligibility

On July 30, 2015, the U.S. Patent and Trademark Office updated its subject matter eligibility guidance ("Eligibility Update"). This update provides recommendations and resources for examiners in addition to those in the...more

Protecting Diagnostic Innovation – Two Actor Infringement Liability

In Akamai Techs. Inc. v. Limelight Networks, Inc., (August 13, 2015 Fed. Cir.) an en banc Federal Circuit unanimously held that direct infringement under Section 271(a) can occur...more

Intellectual Property Alert: The USPTO Announces Additional Guidelines for Determining Subject Matter Eligibility Under 35 U.S.C....

On July 30, 2015, the United States Patent and Trademark Office issued additional guidelines for use by USPTO personnel in determining subject matter eligibility under 35 U.S.C. § 101. These additional guidelines follow the...more

Court Recognizes Alice Decision Potentially Impacts Case by Allowing Late Motion for Judgment on Pleadings

Mobile Telecommunications Technologies, LLC (“Mobile”), initiated a patent infringement case against United Parcel Service, Inc. (“UPS”), in 2012 on U.S. Patent No. 5,786,748 on a method and apparatus for giving notification...more

Federal Circuit Continues to Nix Financial Patents

Patents covering software for use in the financial industry are increasingly being invalidated by the courts. Because of the Supreme Court’s decision in Alice Corp. v. CLS Bank International, 134 S. Ct. 2347 (2014), district...more

The USPTO Offers Additional Clarifications on Patent Eligibility

Since the U.S. Supreme Court issued its most recent ruling on patentable subject matter in June 2014, examiners, applicants, and practitioners have had a difficult time determining what is patentable subject matter. In Alice...more

Covered Business Patents Jurisdiction Continues to Develop - Apple Inc. v. Smartflash LLC

In three parallel decisions, the Patent Trial and Appeal Board (PTAB or Board) determined that patents directed to validating payment and then granting access to data were eligible for covered business method (CBM) review and...more

PTAB Institutes Very First Post-Grant Review (PGR) - American Simmental Association v. Leachman Cattle of Colorado, LLC

Representing the first decision of its kind, the Patent Trial and Appeal Board (PTAB or Board) instituted the first post-grant review (PGR) under the American Invents Act (AIA). American Simmental Association v. Leachman...more

PTAB Decisions Add Some Clarity to Estoppel in AIA Post-Grant Proceedings

The Leahy-Smith America Invents Act (“AIA”) created three new mechanisms for members of the public, including competitors, to challenge the validity of an issued U.S. Patent. As of June 30, 2015, 3,160 petitions for inter...more

USPTO Issues Newly Updated Guidance on Subject Matter Eligibility that Further Clarifies Examination Standards under 35 U.S.C....

Over the past few years, the Supreme Court’s decisions in Alice (Alice Corp. v. CLS Bank Int’l, 134 S.Ct. 2347 (2014)) and Mayo (Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289 (2012)), and other cases...more

Alice Strikes Again! - Internet Patents Corp. v. Active Networks, Inc.

Addressing the issue of patent eligibility under § 101, the U.S. Court of Appeals for the Federal Circuit affirmed the district court’s dismissal of a complaint on the grounds that the asserted patent, directed to web browser...more

Price Optimization in E-Commerce Not Patent Eligible - OIP Technologies, Inc. v. Amazon.com, Inc.

In the wake of the Supreme Court’s decision in Alice addressing patent-eligible subject matter (IP Update, Vol. 17, No. 7), the U.S. Court of Appeals for the Federal Circuit affirmed grant of judgment on the pleadings that a...more

Further Guidance from the PTO

And yet diagnostic methods are still wandering in the wilderness… The PTO has issued yet another revision of its Subject Matter Eligibility Guidance for Examiners. The ?rst of these Guidance documents arrived in March...more

Biotech-specific Subject Matter Eligibility Materials Delayed

Pursuant to the Notice published in the Federal Register today, the U.S. Patent and Trademark Office provided additional materials related to the Office's interpretation of what does (and what does not) satisfy the subject...more

Netflix, Inc. v. Rovi Corporation (NDCA 2015): Five TV Guide Patents Dropped by Abstract Idea Ineligibility

How did we go from the claims in Alice being considered abstract, claims that clearly involved a well-known financial concept (e.g, intermediated settlement) merely implemented on a computer, to admittedly novel (and likely...more

The “Oracle” Predicts It: Supreme Court Declines to Hear Landmark Software Copyright Case

The U.S. Supreme Court declined to grant certiorari in the case of Google, Inc. v. Oracle America, Inc., a closely watched case regarding the eligibility of software for copyright protection. The Supreme Court’s decision...more

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

Versata Development Group, Inc. v. SAP America, Inc. (Fed. Cir. 2015)

Section 18 of the Leahy-Smith America Invents Act (AIA) established a transitional program through which the USPTO conducts post-grant reviews of covered business method (CBM) patents. For the most part, § 18 incorporates...more

#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

Motion To Dismiss For Failure To Claim Patent-Eligible Subject Matter Is Granted In Part

Andrews, J. Defendants’ motion to dismiss amended complaints for failure to claim patent-eligible subject matter pursuant to § 101 is granted in part. The court heard oral argument and considered plaintiff’s proposed claim...more

9 Key Factors That Impact Patent Valuations

Figuring out what a patent is worth can often feel like black magic. But, doing so can be critical during an IP due diligence or when trying to assess the value of a company built around the intellectual property. In...more

Intellectual Ventures I LLC V. Capitol One Bank (USA) (Fed. Cir.): Mental Steps Doctrine Making A Strong Comeback, Courtesy Of...

In Intellectual Ventures I LLC v. Capitol One Bank (USA), Case No. 2014-1506 (Fed. Cir. July 6, 2015), the Federal Circuit affirmed the Eastern District of Virginia’s holding that the claims of two patents were invalid under...more

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