News & Analysis as of

Section 101

Guide to the U.S. Patent Office’s Materials on Subject Matter Eligibility

by Knobbe Martens on

Since 2014, the USPTO has periodically issued examination guidance, analysis examples, and other insights to guide evaluation of patent subject matter eligibility under 35 U.S.C. § 101. These documents are available on the...more

Copyrighting Design Elements of a “Useful Item”: Lessons From Star Athletica

by Revision Legal on

In general, no copyright protection is available for the design of something that is “useful.” “Useful” is defined by the Copyright Act as something with “an intrinsic utilitarian function that is not merely to portray the...more

Mayo at Five: Are Traditional Method of Treatment Claims in Danger Under Section 101?

by Fish & Richardson on

Just over five years ago, the Supreme Court began reshaping the concept of patent-eligible subject matter in the life sciences with its decision in Mayo v Prometheus. The Mayo case introduced a new two-step test for patent...more

Broadsoft, Inc. v. Callwave Communications, LLC (D. Del. 2017)

Telephone Call Processing Patent Claims Found Invalid under 35 U.S.C. § 101 - In the United States District Court for the District of Delaware, Plaintiff filed a declaratory judgment action on seeking a declaration that...more

USPTO Finds SureGene Personalized Medicine Treatment Unpatentable Under Mayo

by Foley & Lardner LLP on

In Ex Parte Timothy, the USPTO Patent Trial and Appeal Board (PTAB) affirmed the Examiner’s rejection of personalized medicine treatment claims. This decision highlights the PTAB’s willingness to invalidate claims that it...more

USPTO Update on Patent-Eligibility for Life Science Inventions

by Foley & Lardner LLP on

On August 2nd 2017, the USPTO hosted a Bicoastal Biotechnology/Chemical/Pharmaceutical Customer Partnership that focused on the USPTO’s current thinking on patent-eligibility. The meeting followed the USPTO’s June 25th, 2017...more

Shearman & Sterling’s Digest on Federal Circuit Jurisprudence Concerning the “Abstract Idea” Exception to 35 U.S.C. § 101

by Shearman & Sterling LLP on

At first glance, the development of Section 101 jurisprudence appears chaotic. The Supreme Court captured several different kinds of problems in Alice and its earlier patentable-subject-matter opinions, and the Federal...more

Patent Eligibility Pointers from the Federal Circuit – Part I

What characteristics of a claim do the courts use to determine if a claimed invention meets the statutory requirements under 35 USC §101? This question has been vexing patent attorneys for years, with the question becoming...more

Surviving Alice with an Appeal

by Fenwick & West LLP on

This third article in the “Surviving Alice” series examines how the USPTO’s Patent Trial and Appeal Board has responded to the U.S. Supreme Court’s June 2014 Alice decision. It also shows how applicants can use the PTAB’s...more

District Court Finds Mallinckrodt Patents Claim Unpatentable Natural Phenomena

by Knobbe Martens on

The recent district court ruling in INO Therapeutics LLC et al v. Praxair Distribution, Inc. et al employed the two-step analytical framework of Mayo/Alice to evaluate subject matter eligibility under 35 U.S.C. § 101, and the...more

Judge Talwani Dismisses Diagnostic Patent Infringement Case under Section 101

In a recent patent infringement case relating to a method for diagnosing a neuro-muscular disorder, Judge Indira Talwani in the District of Massachusetts found the asserted patent claims to be patent ineligible because the...more

Video Game Network Patent Found to Be Patent Eligible – Not an Abstract Idea

The Federal District Court in Delaware recently denied a motion to dismiss a patent infringement case involving a video game networking technology patent based on the patent allegedly being invalid for lack of...more

Preemption is “Part and Parcel” of the §101; But Lack of Preemption Does Not Necessarily Establish Patentability

In Return Mail, Inc. v. United States Postal Service, [2016-1502] (August 28, 2017), the Federal Circuit affirmed the PTAB’s decision that the US Postal Service had standing to challenge Return Mails patents in an CBMR, and...more

Alice Strikes Again: Patent for Biometric Identification and Verification System Invalidated as Directed to a “Well-Known” Idea...

by Orrick - IP Landscape on

Order Granting Motion to Dismiss, IQS US, Inc. et al. v. Calsoft Labs, Inc., et al., N.D. Ill. (August 18, 2017) (Judge Joan H. Lefkow) - Late last month, we reported on an Order from the Southern District of Texas...more

Spotlight on Upcoming Oral Arguments – September 2017

In this appeal, the Federal Circuit will decide whether a party has standing to participate in an inter partes reexamination proceeding if the original requester is acquired while the reexamination was pending. Knowles...more

Recent Federal Circuit Decisions Provide Mixed Messages on Patent Eligible Subject Matter

by Polsinelli on

The Supreme Court’s Alice decision is now more than three years old, however, stakeholders, the courts and the U.S. Patent and Trademark Office are still struggling to understand Alice and, in particular, how to determine...more

Judge Stark Denies Plaintiffs’ Motion For Reconsideration And Grants Defendants’ Motion For Summary Judgment In Part Finding...

by Fox Rothschild LLP on

By Memorandum Opinion entered by The Honorable Leonard P. Stark in Intellectual Ventures I LLC v. T-Mobile USA, Inc. et al., Civil Action No. 13-1632-LPS (D.Del. August 23, 2017) (consolidated), the Court denied Plaintiff’s...more

Preventing Identity Theft—A Tale as Old as Time According to Judge Palermo When She Invalidated Patent Claims for Identity Theft...

by Orrick - IP Landscape on

Order Granting Summary Judgment in favor of Defendants, Mantissa Corp. v Ondot Systems, Inc., et al, S.D. Tex. (August 10, 2017) (Magistrate Judge Dena Palermo) - Litigants continue to use Alice and its progeny as a...more

In a Reversal, Federal Circuit Finds Data Processing Claims Patent-Eligible under Section 101 in Visual Memory v. NVIDIA

Last week, the Federal Circuit held computer memory system patent claims not abstract and thus patent-eligible under Section 101, reversing a lower court dismissal of the case under Rule 12(b)(6).  Visual Memory LLC v. NVIDIA...more

Massachusetts Patent Litigation Wrap Up – July 2017

by Fish & Richardson on

This post is part of a monthly series summarizing notable activity in patent litigation in the District of Massachusetts, including short summaries of substantive orders issued in pending cases. PetEdge, Inc. v....more

3 Lessons from Federal Circuit Ruling on Computer Implemented Inventions

The fate of subject matter eligibility is far from certain today; however, there are a few application drafting takeaways from the Visual Memory case that can help in getting computer implemented inventions to allowance...more

Does Mayo Preclude the Patenting of Medical Diagnostics?

by Burns & Levinson LLP on

On August 4, 2017, the U.S. District Court in the District of Massachusetts found U.S. patent 7267820 (the ‘820 patent), owned by Athena Diagnostics, Inc., to be directed to non-patentable subject matter, and therefore...more

Federal Circuit Review - July 2017

by Knobbe Martens on

District Court Abused Discretion in Not Finding Case Exceptional - In Rothschild Connected Devices v. Guardian Protection Services, Appeal No. 2016-2521, the Federal Circuit held that a district court abused its discretion...more

Fresh From the Bench: Precedential Patent Cases From the Federal Circuit

Visual Memory v. Nvidia reverses the grant of a motion to dismiss under Rule 12(b)(6), ruling that the claims recite an enhanced computer memory system and not an abstract idea under § 101. In Georgetown Rail v. Holland, the...more

Clarity in §101: Half of the Judges Considering the Question Find Plaintiff’s Computer Memory System to be Patentable Subject...

In Visual Memory LLC v. NVIDIA Corp., [2016-2254] (August 15, 2017), the Federal Circuit reversed the district court’s determination that Visual Memory’s U.S. Patent No. 5,953,740, on a memory system with programmable...more

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