Supreme Court of the United States Patent-Eligible Subject Matter

The United States Supreme Court is the highest court of the United States and is charged with interpreting federal law, including the United States Constitution. The Court's docket is largely discretionary... more +
The United States Supreme Court is the highest court of the United States and is charged with interpreting federal law, including the United States Constitution. The Court's docket is largely discretionary with only a limited number of cases granted review each term.  The Court is comprised of one chief justice and eight associate justices, who are nominated by the President and confirmed by the Senate to hold lifetime positions. less -
News & Analysis as of

IP Newsflash - August 2015 #4

SUPREME COURT CASES - The Supreme Court Upholds Prohibition on Charging Royalties After Patent Expiration - In Kimble v. Marvel Entertainment LLC, 576 U.S. ---- (2015), the Supreme Court declined to overrule its...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

Kimble v. Marvel Entertainment, LLC (2015)

In the 1977 Yale Law School Holiday Pageant there was a skit about the Supreme Court, with a song sung to the tune of Cole Porter's "Another Opening, Another Show" from the musical Kiss Me Kate... ...That parody...more

Sequenom Seeks Rehearing En Banc

Sequenom, Inc. has filed a petition for rehearing en banc of the Federal Circuit decision that held its diagnostic method claims invalid under 35 USC § 101. (You can read my synopsis of that decision here). Stakeholders in...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

Fetal DNA Test Cannot Give Birth to a Patent - Ariosa Diagnostics, Inc., et al. v. Sequenom Inc., et al.

Addressing the issue of patent eligibility of a pre-natal testing invention, the U.S. Court of Appeals for the Federal Circuit unanimously affirmed the district court’s judgement of invalidity under 35 U.S.C. § 101 with...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

USPTO Issues July 2015 Updated Guidance on Subject Matter Eligibility Analysis

On July 30, 2015, the United States Patent and Trademark Office (USPTO) issued updated guidance regarding subject matter eligibility analysis to address six major themes from comments received in response to the 2014 Interim...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

Federal Circuit Holds Medical Diagnostic Method Patent Invalid as Claiming Ineligible Subject Matter

Background - In two recent cases, Mayo v. Prometheus and Alice v. CLS Bank, the Supreme Court established a two-part test for determining eligibility for patenting. In step one, the court asks whether the claim is...more

The One Year Anniversary: The Aftermath of #AliceStorm

It's been one year since the Supreme Court's decision in Alice Corp. v. CLS Bank. On its face the opinion was relatively conservative, cautioning courts to "tread carefully" before invalidating patents, and emphasizing that...more

Job Applicant Software Patents Not Terminated for Invalidity

Although the subject matter eligibility of software patents has come under increased scrutiny since the Supreme Court issued its opinion last year in Alice Corp. v. CLS Bank, one Massachusetts court recently declined to...more

Back to the ‘Useful Arts’ — Supreme Court Reins in the Expansive Interpretation of Patent Eligibility

Section 8 of the United States Constitution authorizes Congress to “promote the progress of science and the useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings...more

Corporate E-Note - April 2015

In This Issue: - State Regulatory Boards Are Open to Antitrust Liability, Says the Supreme Court - USPTO Issues Patent Eligibility Guidelines…So Now What? - Bond Financing: The Best-Kept Secret For...more

Diehr in the Headlights | Photonics Patents Blog

Since last year’s decision in Alice v.CLS Bank by the Supreme Court, the number of patents for computer-based inventions that have been struck down by challenges of their eligibility for patent protection has skyrocketed. ...more

Drafting Software Patents In A Post-Alice World [Video]

It has been a challenging year for software patent owners following the Supreme Court’s decision in Alice Corp. v. CLS Bank International. Since that ruling was handed down, a large number of software patents have been...more

The Tyranny of the Judiciary

There has always been a tension between the need for a final arbiter of the law and the inherent power associated with such a role placed in the judicial branch. Jefferson himself was wary of this tendency, writing in a...more

Congress Takes Up Patent Litigation Reform – Innovation Act Reintroduced, Supreme Court Cases Examined

Congress v SCtPatent litigation reform has been on the U.S. House Judiciary Committee agenda, with the recent reintroduction of legislation seeking to address patent litigation abuses and a hearing examining recent U.S....more

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

246 Results
|
View per page
Page: of 10

"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 to create your digest using LinkedIn*

*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.
×