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Independently Performed, Publicly Disclosed Prior Work Can Lead to Joint Inventorship

Addressing an inventorship decision that added two co-inventors to patents covering cancer treatments, the US Court of Appeals for the Federal Circuit agreed that the co-inventors’ work constituted joint inventorship even...more

Specific, Discrete Implementation of Abstract Idea Is Patent Eligible

Once again addressing patent eligibility of software patent claims, the US Court of Appeals for the Federal Circuit this time reversed a finding of ineligible subject matter based on the Alice step two inventive concept...more

Previously Denied Section 101 Defense Rendered Meritorious by the Supreme Court’s Alice Decision (Mortgage Grader, Inc. v. First...

Addressing a summary judgment of patent ineligibility, the U.S. Court of Appeals for the Federal Circuit agreed with the district court that the Supreme Court’s Alice decision provided good cause for a defendant to amend its...more

PTAB Finds Claims to Be Directed to Covered Business Method, but Denies Institution Anyway - E-Loan, Inc. v. IMX, Inc.

Considering whether to institute a covered business method (CBM) review for a patent directed to mortgage loan systems and methods, the Patent Trial and Appeal Board (PTAB or Board) agreed that the patent was a covered...more

Steps that Simply Map Out an Application on a Computer Do Not Confer Patent Eligibility - Intellectual Ventures I LLC v. Capital...

Again addressing the issue of subject-matter eligibility of computer-implemented claims, the U.S. Court of Appeals for the Federal Circuit found two patents to be directed to non-eligible subject matter, concluding that the...more

Specific Application Will Not Avoid Ineligibility Unless Required by the Claims - Int’l Securities Exchange LLC v. Chicago Board...

Addressing the patent eligibility of claims from two challenged covered business method patents (CBMs), the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB or Board) found the challenged claims to be...more

Claims Directed to a Mental Task Are Abstract, but Computerizing an Old Practice Is Not

Cambridge Assocs., LLC v. Capital Dynamics; PNC Bank et al. v. Secure Axcess - Addressing the issue of patent-eligible subject matter for covered business method (CBM) patents, the U.S. Patent and Trademark Office...more

IP Update, Vol. 16, No. 10, October 2013

No Case or Controversy in DJ Against Patentee Who Sued Manufacturer’s Customers: Cisco Systems, Inc. v. Alberta Telecommunications Research Center - In a non-precedential opinion addressing declaratory judgment...more

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