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MBHB Snippets: Review of Developments in Intellectual Property Law: Winter 2015 - Vol. 13, Issue 1

In This Issue: - Tips for Developing a Cost-Effective Foreign Patent Strategy - Supreme Court Holds that Trademark Tacking Should be Decided by a Jury in Hana Financial, Inc. v. Hana Bank - Amending...more

Patent Eligibility Under Alice: Reliance on Lack of Routine or Conventional Use

Federal courts have continued to wrestle with the standard for patent eligibility under 35 U.S.C. § 101 set by the Supreme Court’s ruling in Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014). This is...more

Post-Alice District Court Decisions Regarding the Patent Eligibility of Computer-Implemented Inventions

It has been about 9 months since Alice Corp. v. CLS Bank International was decided by the Supreme Court. In that time, many district court and Federal Circuit cases have resulted in grants of summary judgment or dismissal...more

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

Highlights From USPTO's Abstract Idea Examples

On January 27, 2015, the United States Patent and Trademark Office (USPTO) issued a set of examples for analyzing claims under the abstract idea exception to subject matter patent eligibility. The Abstract Idea Examples...more

Seeking Patent Protection on Computer Implemented Inventions? Disclose the Specific Algorithms Employed in the Implementation

I commented in a prior blog on the lack of clarity in the patent law with respect to the patent eligibility of computer-implemented inventions. Recent cases reflect an even further tightening of the rules with respect to...more

Navigating the USPTO Subject Matter Eligibility Guidance For Computer-related Inventions

On 16 December 2014, the USPTO issued revised subject matter eligibility Guidance. On 27 January 2015, the USPTO issued “abstract idea” computer-related invention examples of eligible and ineligible claims. The following...more

Blueprint Generation Software Not Eligible for Patenting

Speeding up a blueprint generation process that can be done by hand does not make computer software eligible for patenting. So reasoned the New Hampshire district court in another of a bevy of post-Alice district court...more

Method Implemented on Generic Computers Is Not Patent Eligible, but Method for Processing Paper Checks Is

Salesforce.com, Inc. v. Virtualagility, Inc. and U.S. Bancorp v. Solutrain, Inc. - In a pair of covered business method (CBM) decisions, the U.S. Patent and Trademark Office Patent Trial and Appeal Board (PTAB or...more

Australian Full Federal Court Confirms Position On The Patentability Of Computer-Implemented Business Methods

RESEARCH AFFILIATES LLC V COMMISSIONER OF PATENTS [2014] FCAFC 150 - The Full Court of the Australian Federal Court has handed down its much awaited decision in Research Affiliates LLC v Commissioner of Patents [2014]...more

IP & Technology Newsletter (Fall 2014)

The Supreme Court’s decision in Alice Corp. Pty. Ltd. vs. CLS Bank Int’l, 134 S. Ct. 2347 (decided June 19, 2014) (“Alice”) is an important decision that will have an impact on software and computer-related inventions. In its...more

Planet Bingo, LLC v. VKGS LLC (Fed. Cir. 2014)

Planet Bingo is the assignee of U.S. Patent Nos. 6,398,646 and 6,656,045, both directed to computer-implemented methods and systems for managing bingo games. Planet Bingo filed an infringement action in the United States...more

August 2014: ITC Litigation Update: ITC Tightens Domestic Industry Requirement for Licensors After Recent Federal Circuit...

ITC Tightens Domestic Industry Requirement for Licensors After Recent Federal Circuit Decisions: Certain Computers and Computer Peripheral Devices, and Components Thereof, and Products Containing Same, Inv. No. 337-TA-841...more

The Federal Circuit Reverse a Finding of Anticipation of the PTAB in Inter Partes Review

In re Rambus, Inc. - Addressing a finding of anticipation by the United States Patent and Trademark Office (PTO) Patent Trial and Appeal Board (PTAB) in an inter partes review, the U.S. Court of Appeals for the Federal...more

Australia awaits Federal Court guidance on the patentability of computer-implemented inventions

Anyone with an interest in the patentability of computer-implemented inventions in Australia has been awaiting judgment in the appeal to the Research Affiliates LLC v Commissioner of Patents decision. Anticipation is...more

The USPTO’s Response to Alice Corp. v. CLS Bank

Six days after the Supreme Court handed down its opinion in Alice Corp. v. CLS Bank, which invalidated certain patents disclosing “a computer-implemented scheme for mitigating ‘settlement risk,’” the USPTO issued its own...more

IP Newsflash - June 2014 #3

Federal Circuit Reinforces the Requirement to Disclose the Corresponding Algorithm for a Computer-Implemented Means-Plus-Function Term: On June 13, 2014, the Federal Circuit affirmed the Western District of...more

High Court Says Computerized Abstract Ideas Not Patent Eligible

In its highly anticipated decision in Alice Corp. Pty. Ltd. v. CLS Bank Int’l, the United States Supreme Court unanimously ruled that an abstract idea is not patentable simply because it is implemented on a computer....more

The Supreme Court Declines to Categorically Deny Patent Protection for Software

In a highly-anticipated case that had the potential to drastically change the patent landscape surrounding computer-implemented inventions, in Alice Corp. v. CLS Bank Int’l the Supreme Court took a measured approach to the...more

Supreme Court Hears Oral Argument in Alice Corp. v. CLS Bank Int'l

On Monday, March 31, the Supreme Court heard oral arguments in the closely-watched Alice Corp. v. CLS Bank Int'l case. The question presented was "[w]hether claims to computer-implemented inventions -- including claims to...more

Some Practical Approaches to Prosecution of Patents for Computer or Software Implemented Inventions

The patentability of inventions implemented with a computer or based on software have come under increased scrutiny in recent years. One of the primary issues related to the increased scrutiny is whether the patent...more

Alice Corp. v. CLS Bank Int'l: Alice's Supreme Court Brief

On December 6th, the Supreme Court granted certiorari to a case that presents the question of "[w]hether claims to computer-implemented inventions -- including claims to systems and machines, processes, and items of...more

District Courts Staying Cases Pending CLS Bank, but the Federal Circuit Decides One

In December, the Supreme Court granted certiorari in CLS Bank Int’l v. Alice Corp., No. 13-298, in which the question presented by the petitioner is “[w]hether claims to computer-implemented inventions — including claims to...more

Federal Circuit Holds Computer-Implemented Method Claims Invalid Under Section 101

Although SmartGene, Inc. v. Advanced Biological Laboratories, SA is a non-precedential Federal Circuit decision, it could be interesting for that very reason, if it is a reflection of what the court sees as settled aspects of...more

ITC Now Requires Satisfaction of the “Technical Prong” for Licensing-Based Domestic Industries - Certain Computers and Computer...

Reversing course from longstanding practice, the U.S. International Trade Commission (ITC or Commission) has held that proof of “articles protected by the patent” (i.e., a technical prong) is now required for satisfaction of...more

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