News & Analysis as of

Patent-Eligible Subject Matter

Patent-Eligible Subject Matter refers to the types of inventions that can be legally patented. The criteria for patentability varies depending on the jurisdiction. In the United States, for instance, if a... more +
Patent-Eligible Subject Matter refers to the types of inventions that can be legally patented. The criteria for patentability varies depending on the jurisdiction. In the United States, for instance, if a researcher discovers a naturally occurring substance, the substance itself cannot be patented. This issue was examined in a United States Supreme Court case, AMP v. Myriad, in regard to the patentability of human genes.  less -

"Strategies for Litigants in Patent Infringement Cases Using Motions to Dismiss Post-Alice"

Nearly three years have passed since the U.S. Supreme Court's decision on patent eligibility in Alice Corp. Pty. Ltd. v. CLS Bank Int'l. The decision, which ushered in an unprecedented wave of cases invalidating...more

Court Lacks Subject Matter Jurisdiction over Unasserted Claims

A party can raise lack of subject-matter jurisdiction at any time during a litigation. Illustrating this point, recently in Joao Control & Monitoring Systems, LLC v. Telular Corporation a patentee saved its unasserted patent...more

Genentech Will Not File Amended Complaint in Case Against Amgen

by Goodwin on

As we previously reported, the District of Delaware granted a motion to dismiss by Amgen in Genentech v. Amgen, finding a lack of subject matter jurisdiction over Genentech’s declaratory judgment complaint under the Federal...more

Heads Up: The Federal Circuit Sees Patent Eligibility in Knowing Which Way to Look

by Fenwick & West LLP on

The most significant Federal Circuit decision in March was Thales Visionix, Inc. v. United States, another case finding eligible subject matter. What distinguishes this case—and demonstrates the inherently subjective...more

Federal Circuit Confirms Judicial Review On PTAB's CBM Institution

by Brinks Gilson & Lione on

On April 4, 2017, the United States Court of Appeals for the Federal Circuit (“CAFC”) denied Google’s petition for rehearing en banc. Unwired Planet, LLC v. Google Inc., ___ F.3d. ___, Case No. 2015-1812 (Fed. Cir. Apr. 4,...more

Trading Technologies Decision Stands, Federal Circuit Denies CQG Petitions for Rehearing

by Fenwick & West LLP on

As many of you know, the Federal Circuit’s decision in Trading Technologies was the first time a graphical user interface had been found patent eligible by the Federal Circuit. The defendant CQG moved for both panel...more

AliceStorm Update for Q1 2017

by Fenwick & West LLP on

With the close of the first quarter of 2017, there have been some interesting patterns developing in AliceStorm. Let’s start with the big picture...more

Myriad, Mayo, Chakrabarty, Oh My: Strategies for Life Sciences Diagnostics – Part III

In Part III of “Myriad, Mayo, Chakrabarty, Oh My: Strategies for Life Sciences Diagnostics”, we consider the use of examiner interviews and how they can assist into obtaining allowable diagnostic claims. An examiner...more

Mixed Results: Federal Circuit’s Intervening § 101 Determination Faces PTAB Dissent

by McDermott Will & Emery on

After the US Court of Appeals for the Federal Circuit addressed the very same issue and patent, the Patent Trial and Appeal Board (PTAB) reached a split decision, finding the claims to be patent eligible under § 101 despite...more

Petitions Seeking CBM Review Continue Uphill Battle After Unwired Planet

by McDermott Will & Emery on

In a series of cases addressing the standard for initiating a covered business method (CBM) review, both the US Court of Appeals for the Federal Circuit and the Patent Trial and Appeal Board (PTAB) reached the same...more

Vague Claim Construction Arguments Before The PTAB May Trigger A Waiver On Appeal

by Brinks Gilson & Lione on

The Patent Trial and Appeal Board (PTAB) upheld the patentability of U.S. Patent No. 8,601,154 (“the ‘154 patent”), owned by SimpleAir, Inc. (“SimpleAir”) in an inter partes review petition filed by Google. Google Inc. v....more

Oversimplifying Patent Claims Dooms Government’s Case in Federal Circuit Decision

Defendants in patent litigation frequently mount an invalidity defense under 35 U.S.C. § 101 by arguing that asserted claims are directed to abstract ideas, which are not eligible for patent protection under the first step of...more

Icon Health & Fitness, Inc. v. Polar Electro Oy (D. Utah 2017)

Claims Lacking Details Found to be Directed to Patent-Ineligible Subject Matter - In the U.S. District Court for the District of Utah (Central Division), Polar filed a motion for judgment on the pleadings contending that...more

Intellectual Property and Technology News (North America), Issue 33, Q1 2017

by DLA Piper on

A new year is upon us, bringing swift and deliberate change, uncertainty and myriad paradigm shifts in the political and social landscape. It is fitting, then, that intellectual property practice should reflect these shifts...more

ABA-IPL Section Proposes Amendments to s. 101 – Too Much of a “Good Thing”?

The ABA-IPL Section sent proposed amendments to PTO Director Lee intended to lessen the burden on patent applicants encountering the Mayo/Alice Rules for patent-eligible subject matter. The proposed amendments list exceptions...more

How Technical Must an Improvement be to Survive 101?

The technical nature of a claimed improvement is central to the evaluation of claims under 35 U.S.C. § 101. Two recent district court opinions illustrate that whether or not the claims describe an improvement in the...more

ABA IP Law Section Sends Section 101 Revision Proposal to USPTO Director Lee

The Intellectual Property Law Section of the American Bar Association (ABA-IPL) sent today to continuing U.S. Patent and Trademark Office Director Michelle Lee a letter containing its proposal for revising 35 U.S.C. § 10i in...more

TechConnect - Your Law Firm Link to Industry News - March 2017

by Mintz Levin on

Happy spring! This issue includes two articles that challenge conventional thinking. The first, called “Software is Still Patent Eligible,” makes the case that software patents can still be obtained. IP generally accretes in...more

Mobile Payment Patent Remains Legal Tender after Alice Challenge

In the post-Alice world, patents that relate in any material way to financial processes or systems have come under increased attacks in the early stages of infringement litigation—as defendants aim to secure a cheap and fast...more

The Federal Circuit Finds Broad Claims to Be Patent Eligible because the Claims Are “Nearly Indistinguishable” from Those in...

Nearly 40 years ago, the Supreme Court held in Diamond v. Diehr that while patent claims directed solely to abstract ideas, such as mathematical formulas, are not patent eligible, a claim containing a mathematical formula...more

U.S. Patent Office Provides Additional Examples of Eligible Subject Matter

After the Supreme Court case of Alice v. CLS Bank in 2014, the Patent Office has issued a series of examination guidelines and examples to guide examiners and patent practitioners in determining patent eligible subject...more

Sections 101 and 112: Eligibility, Patentability, or Somewhere in Between?

We wrote earlier about the Supreme Court’s renewed interest in patent eligibility and seemingly unintended confusion between the patent eligibility requirements of 35 U.S.C. § 101 and the remaining patentability requirements...more

Patents harder to obtain now, attorney say

by GableGotwals on

Back in 1899, Charles H. Duell, thencommissioner of the U.S. patent office, purportedly said “everything that can be invented hhttp://cms.jdsupra.com/docuploader/document/related/58d2c8cd-0e40-4396-bbfc-05ecd6f4c0ad/#as been...more

Shzoom Requests the Federal Circuit Reissue Trading Technologies as Precedential Opinion

by Fenwick & West LLP on

On January 18, 2017 the Federal Circuit issued an opinion in Trading Technologies Int’l., Inc. v. CQG, Inc., its first decision finding a user interface to be patent eligible subject matter. The court designated the opinion...more

Federal Circuit Invalidates Claim to Generating “Financial Risk” Reports

In the recent decision of Clarilogic v. Formfree Holdings, the Federal Circuit invalidated the patentee’s (Formfree) claim to a “computer-implemented method for providing certified financial data indicating financial risk...more

1,334 Results
|
View per page
Page: of 54
Cybersecurity

"My best business intelligence,
in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
Sign up using*

Already signed up? Log in here

*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
*With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name. Or, sign up using your email address.
Feedback? Tell us what you think of the new jdsupra.com!