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Patent-Eligible Subject Matter › Reaffirmation

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 -
McDonnell Boehnen Hulbert & Berghoff LLP

Is It Time for Federal Circuit to Rethink Its Subject Matter Eligibility Jurisprudence? 

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The Federal Circuit's inchoate attempts to fashion a consistent, rational application of the Supreme Court's recent subject matter eligibility jurisprudence, while understandably Herculean in view of the difficulties inherent...more

McDonnell Boehnen Hulbert & Berghoff LLP

American Axle & Mfg. v. Neapco Holdings LLC (Fed. Cir. 2019)

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Federal Circuit (Again) Hands Down Revised Opinion in Response to Petition for Rehearing - Recently the Federal Circuit has begun a practice of withdrawing an original opinion and handing down a substitute opinion in...more

McDonnell Boehnen Hulbert & Berghoff LLP

In re Zunshine (Fed. Cir. 2020)

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Last week, the Federal Circuit affirmed the rejection by the Patent Trial and Appeal Board of claims 1-3 of U.S. Patent Application No. 15/726,162 as being patent ineligible under 35 U.S.C. § 101.  The '162 application, which...more

McDonnell Boehnen Hulbert & Berghoff LLP

In re Rudy (Fed. Cir. 2020)

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Claims Directed to Selecting Fishing Hooks for Use Are Not Patentable - Christopher John Rudy, represented pro se, appealed from a decision of the Patent Trial and Appeal Board ("Board") affirming the rejection of claims...more

McDermott Will & Emery

Patent-Eligible Improvements to Computer Functionality Must Be Directed to an Improvement of the Computer or Network Platform

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Applying the US Supreme Court’s Alice v. CLS framework, the US Court of Appeals for the Federal Circuit upheld a Patent Trial and Appeal Board (PTAB) finding patent claims directed to data management and processing systems...more

Knobbe Martens

Federal Circuit Review - November 2019

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The Appointments Clause: Ensuring That PTAB Decisions Are Subject to Constitutional Checks and Balances  In Arthrex, Inc. v. Smith & Nephew, Inc., Appeal No. 18-2251, the Federal Circuit ruled that, under the then-existing...more

Knobbe Martens

Federal Circuit Review - October 2019

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The PTAB Cannot Approve or Deny Certificates of Correction - In Honeywell International, Inc. v. Arkema Inc., Arkema France, Appeal Nos. 2018-1151, -1153, the Patent Trial and Appeal Board (“Board”) does not have the...more

Knobbe Martens

Federal Circuit Review - September 2019

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State Sovereignty Principles Do Not Allow a State to Bring a Patent Infringement Suit in an Improper Venue - In Board of Regents v. Boston Scientific Corp., Appeal No. 2018-1700, the Federal Circuit ruled that the patent...more

Knobbe Martens

Federal Circuit Review - August 2019

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Mere Potential for Future Appeal Does Not Prevent Triggering Estoppel of Inter Partes Reexamination When Party Fails to Seek Relief in the First Instance - In Virnetx Inc. v. Apple Inc., Appeal Nos. 2017-1591, -1592,...more

Knobbe Martens

Federal Circuit Review - July 2019

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Broad Claim Language and Unpredictability in the Art Lead to Non-Enablement - In Enzo Life Sciences, Inc. v.  Roche Molecular Systems, Inc., Appeal Nos. 2017-2498, -2499, -2545, -2546, broad patent claims were invalid as...more

Knobbe Martens

Federal Circuit Review - May 2019

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Reasonably Continuous Diligence Is Not Negated If an Inventor Works On Improvements or Evaluates Alternatives to the Claimed Invention - In ATI Technologies ULC v. IANCU, Appeal Nos. 2016-2222, -2406, -2608, the Federal...more

Knobbe Martens

Federal Circuit Review - April 2019

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Just Because Something May Result From a Prior Art Teaching Does Not Make it Inherent in that Teaching - In Personal Web Technologies, LLC v. Apple, Inc., Appeal No. 2018-1599, the Federal Circuit clarified that the mere...more

McDermott Will & Emery

Is Invention “Directed to” an Abstract Idea? Look to the Specification

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Addressing the various factors a court may consider in order to determine whether a claim is “directed to” an abstract idea, the US Court of Appeals for the Federal Circuit upheld the district court’s dismissal of all claims...more

Knobbe Martens

Federal Circuit Review - March 2019

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Federal Circuit Determines Time-Barred Petitioner Joined to an IPR Has Appellate Standing - In Mylan Pharmaceuticals Inc. v. Research Corporation Tech., Appeal Nos. 2017-2088, -2089, -2091, the Federal Circuit held that a...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Federal Circuit Upholds Invalidity of Cleveland Clinic’s Claims Directed to Methods for Detecting an Elevated MPO Concentration

Sterne, Kessler, Goldstein & Fox P.L.L.C. on

In Cleveland Clinic Foundation, Cleveland Heartlab, Inc. v. True Health Diagnostics LLC, (Cleveland Clinic II)[1], a unanimous panel of the Federal Circuit provided yet another guidepost illustrating what is not...more

Sunstein LLP

March 2019 IP Update - Once Again, the Federal Circuit Strikes Down Claims Directed to a Diagnostic Method

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In Athena Diagnostics Inc. v. Mayo Collaborative Services, LLC, the Federal Circuit has once again held that claims directed to a diagnostic method are invalid under 35 U.S.C. § 101 for being directed to ineligible subject...more

Knobbe Martens

Chargepoint, Inc. v. Semaconnect, Inc.

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Federal Circuit Summary - Before Prost, Reyna, and Taranto. Appeal from the U.S. District Court for the District of Maryland. Summary: An abstract idea cannot be used to supply an inventive concept that renders a claim...more

Knobbe Martens

Athena Diagnostics, Inc. v. Mayo Collaborative Services

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Federal Circuit Summaries - Before Judge Newman, Lourie and Stoll. Appeal from the United States District Court for the District of Massachusetts. Summary: Claims reciting only conventional steps to detect a natural...more

Knobbe Martens

In Re: Marco Guldenaar Holdings B.V.

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Federal Circuit Summaries - Before Chen, Mayer, and Bryson. Appeal from the Patent Trial and Appeal Board. Summary: Claims directed to the abstract idea of rules for playing a dice game are not transformed into patent...more

Knobbe Martens

Federal Circuit Review - November 2018

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Federal Circuit Finds Claims Directed to Tabbed Spreadsheets Patent Eligible and Claims Directed to Tracking Changes in Documents Ineligible Under Section 101 - In Data Engine Technologies LLC v. Google LLC, Appeal No....more

Knobbe Martens

Federal Circuit Review - September 2018

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Federal Circuit Finds Claims Issued from Reexamination Co-Pending with Appeal Ineligible Where the Changes Did Not Affect Section 101 Eligibility - In SAP AMERICA, Inc. v. InvestPic, LLC, Appeal No. 2017-2081, the...more

Knobbe Martens

How Unpredictable is the Alice Analysis?

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Over the last year, several Federal Circuit judges have filed opinions lamenting the state of the case law that interprets the abstract idea exception to patent eligibility under 35 U.S.C. § 101.  For example, Judge Linn...more

Knobbe Martens

Roche Molecular Systems, Inc. v. Cepheid

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Federal Circuit Summary - Before O’Malley, Reyna, and Hughes. Appeal from the District Court for the Northern District of California. Summary: Testing for the presence of a bacterium that causes tuberculosis and the...more

Knobbe Martens

Data Engine Technologies LLC v. Google LLC

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Federal Circuit Summary - Before Judges Reyna, Bryson, and Stoll. Appeal from the United States District Court for the District of Delaware. Summary: A claim that recites a specific method for navigating through...more

Knobbe Martens

BSG Tech LLC v. BuySeasons, Inc.

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Federal Circuit Summary - Before Reyna, Wallach, and Hughes. Appeal from the District Court for the Eastern District of Texas. Summary: When the only unconventional feature of the patent claim is what has already been...more

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