News & Analysis as of

Software Inventions

Baker Botts L.L.P.

Intellectual Property Report

Baker Botts L.L.P. on

Properly pleading inequitable conduct claims is a challenge, a challenge that can be met with early due diligence and attention to detail in your pleading. The leading case that set forth the legal framework for inequitable...more

Hudnell Law Group

Intrinsic Record Paramount In Rule 12 Eligibility Determinations

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In the recent decision of Miller Mendel, Inc. v. City of Anna, Texas, 2024 U.S. App. LEXIS 17637 (Fed. Cir. July 18, 2024), the Federal Circuit upheld the district court’s grant of a motion for judgment on the pleadings under...more

MoFo Tech

USPTO Guidance: Artificial Intelligence Inventions That Solve A Technical Problem Eligible For Patenting

MoFo Tech on

The U.S. Patent and Trademark Office (USPTO) has issued guidance regarding patent eligibility with respect to patenting artificial intelligence (AI) inventions. See an overview of the eligibility test applied by the USPTO....more

Fitch, Even, Tabin & Flannery LLP

IP Alert: USPTO Issues Guidance for Examining Means-Plus-Function and Step-Plus-Function Claim Limitations

On March 18, the USPTO issued a guidance document on how to examine claims that recite functional limitations without necessarily using the term “means” under 35 U.S.C. § 112. The guidance document aims to improve clarity,...more

Mintz - Intellectual Property Viewpoints

Is Your Blockchain Invention Patentable?

Blockchain is becoming central to more FinTech patent portfolios than ever – but it’s harder to obtain protection on blockchain than most other technologies. The US Supreme Court’s decision in Alice v. CLS Bank (2014)...more

JAMS

How Do We Protect Intangible Assets - A neutral’s perspective on how ADR may be impacted

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One may be surprised to learn that in 2020, according to a study on intangible assets undertaken by Ocean Tomo (Intangible Asset Market Value Study - Ocean Tomo), 90% of the value of S&P 500–listed companies was accounted for...more

Foley & Lardner LLP

Protecting Innovations in SaMD & Biomedical Applications

Foley & Lardner LLP on

With the ever-growing adaptation of software in all realms of health care, the market for software for medical devices (SaMD) is forecasted to grow 16.7% per year over the next decade and surpass $5 billion by 2032....more

Pietragallo Gordon Alfano Bosick & Raspanti,...

The Domination of Cybersecurity

Key takeaway: Despite the Supreme Court’s recent pronouncement of patent-eligible subject matter, cybersecurity innovation will remain an active area for intellectual property protection through the patent application and...more

Dunlap Bennett & Ludwig PLLC

How Technology Licensing Lawyers Help Unleash AI

Inventors may hire a technology licensing lawyer to protect their creations, but can artificial intelligence (AI) create legally protectable technology? The answer depends on several things, including how a company...more

Weintraub Tobin

AI Systems May Invent, But Are They Inventors?

Weintraub Tobin on

Previously, the Court of Appeals for the Federal Circuit (“Federal Circuit”) has found that a non-human may infringe patents. Arguably, an AI system, which is a non-human, can also create or invent. But can an AI system be a...more

Weintraub Tobin

Trade Secret or Patent?

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Business owners often ask whether they should protect their intellectual property with a trade secret or a patent. The answer is: It depends. What Can Be Protected? The first thing to consider is what it is that...more

Manatt, Phelps & Phillips, LLP

Read Your Contract: Prior Invention Assigned to Employer When Incorporated into Employer’s Software

In Apprio, Inc. v. Zaccari, the U.S. District Court for the District of Columbia held an agreement enforceable where if, in the course of employment, the employee incorporated a prior invention into the employer’s product,...more

Manatt, Phelps & Phillips, LLP

User Identification Module Held Means-Plus-Function Element, Lacked Structure/Algorithm and Invalid

In Rain Computing, Inc. v. Samsung Elecs. Am., Inc., the Federal Circuit held that the claimed language “user identification module” was a means-plus-function element with no corresponding structure disclosed in the...more

Fox Rothschild LLP

How To Patent Software And Computer-Implemented Business Methods In The US And Abroad

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It is well known that in the U.S., abstract ideas, laws of nature, natural phenomena, and products of nature are all excluded from patenting under 35 U.S.C. § 101. This article briefly outlines various U.S. approaches to...more

Seyfarth Shaw LLP

Peloton Surges to the Top of the Leaderboard in Competitor Spat

Seyfarth Shaw LLP on

In 2012, Peloton rode into the home fitness scene with its now ubiquitous at-home exercise bike, which features a tablet that allows riders to stream both live and pre-recorded classes while competing against other riders on...more

Robinson+Cole Manufacturing Law Blog

Manufacturers are Not Immune to Claims that their Inventions are Patent-Ineligible

It is no secret that the competitive edge of U.S.-based manufacturers is often predicated, at least in large part, on technological innovation and the patents that protect them. The broader the patents, the better. Usually...more

Knobbe Martens

Big Picture on Software Patent Eligibility: The Forces at Work

Knobbe Martens on

Much of the modern economy is driven by software development. Companies are creating and refining new apps that run on mobile devices, and using machine learning to provide users with personalized user interfaces and...more

Fenwick & West LLP

AliceStorm in the Dog Days of Summer

Fenwick & West LLP on

Over the past two months, the trends I've discussed in my previous blogs on AliceStorm have continued and become more entrenched. In particular, the Federal Circuit has been quite active, issuing nine decisions since late...more

Bradley Arant Boult Cummings LLP

The Government Whittles Away at Life Sciences Patents

The current U.S. Supreme Court has been noted for its hostility to patent holders in general, but the Supreme Court has been especially hostile to any sort of life sciences or software invention. The Court has attempted to...more

Fenwick & West LLP

The Mind as Computer Metaphor: Benson and the Mistaken Application of Mental Steps to Software (Part 1)

Fenwick & West LLP on

Of the three recognized judicial exceptions to Section 101—laws of nature, natural phenomena, and abstract ideas—none has proved more resistant to reasoned judicial analysis than the last. From its inception in Gottschalk v....more

Seyfarth Shaw LLP

The PTAB Giveth, and the PTAB Taketh Away

Seyfarth Shaw LLP on

The PTAB cancelled claims of a financing patent as lacking patentable subject matter in Westlake Services LLC v. Credit Acceptance Corp., CBM2014-00176 (PTAB January 25, 2016, Order) (McKone, APJ). Westlake is interesting...more

Winstead PC

Still Alice: Not all software patents are being invalidated under Alice Corp. v. CLS Bank Int’l

Winstead PC on

On June 19, 2014, the U.S. Supreme Court issued a unanimous decision in Alice Corp. v. CLS Bank Int’l (Alice). In Alice, the Court held that several patents that pertained to a computerized platform for eliminating risk in...more

Seyfarth Shaw LLP

Trade Secrets or Patents – Why Software Presents No “One Size Fits All” Solution

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There are many ways to obtain intellectual property protection for software creations. Many keep the software code confidential and maintain the software as a trade secret....more

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