News & Analysis as of

Software Preemption

Womble Bond Dickinson

Artificial Intelligence - The Promise of Early Disease Diagnosis and Improved Treatment and the Potential of Liability

Womble Bond Dickinson on

If there is one thing that everyone can agree on, it is that health is an important factor in life. In 2021, over 3 million people died in the United States with heart disease and cancer topping the list....more

Womble Bond Dickinson

Indefinite Covenants Within License Agreement May Not Be Enforceable

Womble Bond Dickinson on

Where a software license agreement precluded the licensee from developing similar software for an undefined period of time, the license agreement inhibited “free trade” and was therefore unreasonable and unenforceable. Triage...more

McDermott Will & Emery

Federal Copyright Law Does Not Preempt Trade Secret Claim

McDermott Will & Emery on

Addressing issues of preemption, the US Court of Appeals for the Fifth Circuit affirmed the district court’s decision that federal copyright law did not preempt the plaintiff’s trade secret claim because trade secret claims...more

Orrick - Trade Secrets Group

REDUCING RISKS: Court Finds Copyright Act Does Not Preempt State Trade Secret Claim

Over the years, it has proven difficult to fit software in any one category of IP protection. And while software’s ability to seemingly transcend patents, copyright, and trade secrets provides software developers and...more

Nutter McClennen & Fish LLP

McRO v. Bandai: Latest Federal Circuit § 101 Decision Breathes New Life into Software Patents

The Federal Circuit last week handed down the latest in a series of decisions finding computer-implemented inventions to be patent-eligible under 35 U.S.C. § 101. In McRO, Inc. v. Bandai Namco Games America, Inc. et al. (Fed....more

Manatt, Phelps & Phillips, LLP

Advertising Law - August 2016

Court Awake To Plaintiff’s Deceptive Sleep-Tracking Claims Against Fitbit - A challenge to Fitbit’s claims that certain models of its exercise monitoring device tracked users’ sleep patterns will move forward after a...more

McDonnell Boehnen Hulbert & Berghoff LLP

Patentable Subject Matter after Alice: Best Practices for Responding to 35 U.S.C. § 101 Rejections

It has been over 20 months since the Supreme Court handed down the landmark decision in Alice Corp. v. CLS Bank Int’l, effectively limiting the scope of patent-eligible subject matter. In particular, software and business...more

Burns & Levinson LLP

One Year After Alice

Burns & Levinson LLP on

It has been more than a year since the Supreme Court issued its decision in Alice Corp. Pty, Ltd. v. CLS Bank International, 134 S. Ct. 2347 (2014). Although a number of software patents have been invalidated for reciting...more

Seyfarth Shaw LLP

Recent Developments on Copyright Preemption of Trade Secret Claims in the Fifth Circuit

Seyfarth Shaw LLP on

For the latest on the copyright preemption doctrine (codified at 17 U.S.C. § 301(a)) look no further than the Fifth Circuit, which, together with its district courts, issued a string of recent decisions regarding the...more

Foley & Lardner LLP

USPTO Issues July 2015 Updated Guidance on Subject Matter Eligibility Analysis

Foley & Lardner LLP on

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

Orrick - Trade Secrets Group

Texas Federal Court: Copyright Law Doesn’t Preempt Trade Secrets Claim Where “Extra” Elements Exist

We’ve blogged on trade secret preemption before, but we’ve usually focused on trade secrets claims preempting other types of claims, and not the other way around. But, as the cowboy in the cult-classic film The Big...more

Fenwick & West LLP

The One Year Anniversary: The Aftermath of #AliceStorm

Fenwick & West LLP on

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

Morris James LLP

Banking software patent is found to be invalid

Morris James LLP on

Robinson, J. Defendant’s motion for summary judgment of invalidity is granted; plaintiff’s motion for validity is denied. Defendant’s motion for summary judgment of non-infringement is granted; plaintiff’s motion for...more

Fenwick & West LLP

The Day the Exception Swallowed the Rule: Is Any Software Patent Eligible After Ultramercial III?

Fenwick & West LLP on

The Supreme Court has consistently cautioned that the judicial exceptions to patent eligibility need to be carefully applied: At the same time, we tread carefully in construing this exclusionary principle lest it...more

Robins Kaplan LLP

After Alice: Patent Eligibility Considerations for All Technology Inventors

Robins Kaplan LLP on

The technological advances of post-WWII America spurred the growth of patenting of modern technology. From chemicals to useful bacteria, and from petroleum derivatives to computer chips, many of the inventions that are now a...more

McDonnell Boehnen Hulbert & Berghoff LLP

SAP America, Inc. v. Versata Development Group, Inc. (P.T.A.B. 2013)

In an example of judicial reasoning rolling downhill, the U.S. Patent and Trademark Office's Patent Trial and Appeal Board (PTAB) has struck down claims directed to a computer-implemented business method as failing to meet...more

Fenwick & West LLP

Intellectual Property Bulletin - Fall 2012

Fenwick & West LLP on

In This Issue: - Court Declines to Dish Out Preliminary Injunction in Commercial-Skipping Case Despite Likelihood of Infringement - Free and Open-Source Software Diligence in Mergers, Acquisitions, and Investments ...more

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