Michael Borella Ph.D.

Michael Borella Ph.D.

McDonnell Boehnen Hulbert & Berghoff LLP

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USPTO issues new guidance on AI’s role in inventorship of patents

On February 12, 2024, the United States Patent and Trademark Office (USPTO) issued guidance clarifying the role of artificial intelligence (AI) in the inventorship of patents. The document exhibits a nuanced approach to the...more

2/13/2024  /  Artificial Intelligence , Federal Register , Intellectual Property Protection , Inventors , New Guidance , Patent-Eligible Subject Matter , Patents , Prior Art , USPTO

American Axle's Claims Found Eligible on Remand

The storied case of American Axle v. Neapco Holdings has entered a new chapter -- not the final chapter but the plot has thickened considerably.  As a recap, Judge Stark, then of the District Court for the District of...more

8/2/2023  /  Intellectual Property Protection , Patent Litigation , Patent-Eligible Subject Matter , Patents , Remand , Section 101

Senators Tillis and Coons Once More Attempt to Fix Patent Eligibility

Patent eligibility is broken. The only semi-cogent arguments that I have ever heard in support of the status quo is that the U.S. Patent and Trademark Office issues too many broad, vague patents, and that 35 U.S.C. § 101...more

6/26/2023  /  Intellectual Property Protection , Patent Examinations , Patent Litigation , Patent Trial and Appeal Board , Patent-Eligible Subject Matter , Patents , Section 101 , USPTO

Sequoia Technology LLC v. Dell Inc. (Fed. Cir. 2023)

The patent statute requires that, to be patentable, the subject matter of an invention must be at least one of a process, machine, article of manufacture, or composition of matter.  It is hard to find examples of things that...more

4/24/2023  /  Claim Construction , Patent Litigation , Patent-Eligible Subject Matter , Patents , Section 101 , USPTO

On Alice Rejections per USPTO Technical Center

The U.S. Patent and Trademark Office (USPTO) organizes its examining corps into technical centers (TCs).  Each TC is dedicated to one or more general technical fields.  In some cases, one TC may include two or more unrelated...more

3/7/2023  /  Double Patent , Intellectual Property Protection , Patent Applications , Patent Litigation , Patent-Eligible Subject Matter , Patents , Section 101 , USPTO

ITC Takes Section 101 to Its Illogical Extreme

We are all familiar with the rhetorical device of a parade of horribles -- a series of very bad things that could happen if some action is (or isn't) taken.  Often, these parades involve a degree of hyperbole.  In other...more

3/3/2023  /  Initial Determination (ID) , Intellectual Property Protection , International Trade Commission (ITC) , Patent Litigation , Patent-Eligible Subject Matter , Patents , Section 101

[Webinar] The Weird And Evolving Landscape Of Software And Business Method Patent Eligibility - March 9th, 10:00 am - 11:15 am CST

The interpretation of 35 U.S.C. 101 has been in flux for over a decade. Please join MBHB Partner Michael Borella, Ph.D., as he discusses its latest iteration, how patent eligibility is currently viewed by the USPTO and...more

2/28/2023  /  Continuing Legal Education , Covered Business Method Patents , Intellectual Property Protection , Patent Trial and Appeal Board , Patent-Eligible Subject Matter , Patents , Section 101 , Software Patents , USPTO , Webinars

PTAB Remains Hostile to Section 101 Appeals

There is ample evidence that patent examiner allowance rates vary dramatically from examiner to examiner and art unit to art unit.[1]  This has resulted in the general understanding that there are "easy" examiners and "tough"...more

2/1/2023  /  Intellectual Property Protection , Patent Applications , Patent Examinations , Patent Litigation , Patent Trial and Appeal Board , Patent-Eligible Subject Matter , Patents , Section 101 , USPTO

The Mental Process Exception to Patent Eligibility is Remarkably Brainless

In Liu Cixin's novel The Three Body Problem, the characters create a "computer" from human labor.  Millions of people serve as "bits" and hold up flags to indicate whether they represent 0s or 1s.  These individuals are given...more

1/10/2023  /  Intellectual Property Protection , Patent Litigation , Patent Trial and Appeal Board , Patent-Eligible Subject Matter , Patents , Section 101 , USPTO

In re Smith (Fed. Cir. 2022)

In a ruling that should surprise absolutely nobody, the Federal Circuit rapidly scrapped an appeal of a PTAB decision that affirmed a 35 U.S.C. § 101 rejection of a business method claim.  This is the latest in a series of...more

9/16/2022  /  Intellectual Property Protection , Patent Applications , Patent Litigation , Patent Trial and Appeal Board , Patent-Eligible Subject Matter , Patents , Section 101

Think Twice About Appealing a § 101 Rejection to the PTAB

The U.S. Patent and Trademark Office (USPTO) established its Patent Trial and Appeal Board (PTAB) in September 2012.  As mandated by the America Invents Act, the PTAB conducts administrative trials, such as inter partes...more

9/14/2022  /  Corporate Counsel , Patent Applications , Patent Examinations , Patent Litigation , Patent Trial and Appeal Board , Patent-Eligible Subject Matter , Patents , Section 101 , USPTO

Silly § 102 Tricks

With further apologies to David Letterman - Almost two years ago we published Stupid § 101 Tricks, an article discussing some of the annoying, improper, and yet disappointingly common patterns seen in rejection and...more

9/12/2022  /  Anticipation , Patent Examinations , Patent Litigation , Patent-Eligible Subject Matter , Patents , Prior Art , Section 101 , Section 102 , Section 103

The EFF is Patently Wrong

The Electronic Frontier Foundation (EFF) is at it again, gaslighting the public in its ongoing crusade against patents.  While the EFF does perform some commendable work, mostly in the areas of individual privacy rights, its...more

8/25/2022  /  CLS Bank v Alice Corp , Intellectual Property Protection , Life Sciences , Mayo v. Prometheus , Patent Litigation , Patent-Eligible Subject Matter , Patents , Section 101 , Software Developers , Software Patents

Patent Eligibility Reform Introduced in Congress Once Again: Is the Second Time the Charm?

In an ideal world, patent eligibility would be a simple, clear, and non-controversial inquiry.  After all, the purpose of 35 U.S.C. § 101 is to inform the public which types of inventions are eligible for patenting and which...more

8/8/2022  /  CLS Bank v Alice Corp , Intellectual Property Protection , Mayo v. Prometheus , Patent Litigation , Patent-Eligible Subject Matter , Patents , Section 101 , USPTO

Senator Tillis Proposes Patent Eligibility Reform (Again)

Republican Senator Thom Tillis of North Carolina has released a new proposal to reform the text of 35 U.S.C. § 101.  The Senator's last effort in doing so died on the vine in 2019, purportedly due to stakeholders being too...more

8/3/2022  /  Innovative Technology , Patent Infringement , Patent Litigation , Patent Reform , Patent-Eligible Subject Matter , Patents , Section 101 , USPTO

Realtime Adaptive Streaming LLC v. Netflix, Inc. (Fed. Cir. 2022)

Bad law often gives rise to creative legal arguments.  But the application of such creative lawyering is necessarily bounded by ethical rules and notions of fair dealing.  Patent eligibility, in its current incarnation, has...more

8/1/2022  /  Forum Shopping , Intellectual Property Protection , Inter Partes Review (IPR) Proceeding , Patent Litigation , Patent-Eligible Subject Matter , Patents , Section 101

The Supreme Court Sidesteps America's Patent Eligibility Crisis

In an order that is clearly less impactful and damaging than a number of opinions that the Supreme Court has disgorged in the last two weeks, the justices have denied certiorari in American Axle & Mfg. Inc. v. Neapco Holdings...more

7/1/2022  /  CLS Bank v Alice Corp , Corporate Counsel , Denial of Certiorari , Intellectual Property Protection , Patent Applications , Patent Litigation , Patent-Eligible Subject Matter , Patents , SCOTUS , Section 101 , Statutory Interpretation , USPTO

Before You Complain About So-Called Bad Patents, Read This

This weekend The New York Times published an editorial opinion entitled "Save America's Patent System."  It bemoans the purported prevalence of "bad patents" -- including "uninspiring tweaks" to existing products -- that...more

4/18/2022  /  Patent Litigation , Patent Ownership , Patent Reform , Patent-Eligible Subject Matter , Patents , USPTO

Repifi Vendor Logistics, Inc. v. Inellicentrics, Inc. (Fed. Cir. 2022)

There is a theme running through many patent-eligibility disputes that is analogous to baiting-and-switching.  One party has claims that recite an invention.  The other party characterizes those claims at a high level or...more

3/24/2022  /  Abstract Ideas , CLS Bank v Alice Corp , Federal Rule 12(b)(6) , Intellectual Property Protection , Inventive Concept Test , Patent Litigation , Patent-Eligible Subject Matter , Patents , Prior Art , Section 101

Mentone Solutions LLC v. Digi International Inc. (Fed. Cir. 2021)

Mentone sued Digi for alleged infringement of Mentone's U.S. Patent No. 6,952,413. The U.S. District Court for the District of Delaware found the claims of the patent to be ineligible under 35 U.S.C. § 101. Mentone...more

2/9/2022  /  CLS Bank v Alice Corp , Intellectual Property Protection , Inventive Concept Test , Patent Litigation , Patent-Eligible Subject Matter , Patents , Section 101

CosmoKey Solutions GmbH v. Duo Security LLC (Fed. Cir. 2021)

CosmoKey asserted U.S. Patent No. 9,246,903 against Duo in the U.S. District Court for the District of Delaware, alleging infringement.  The District Court found the patent's claims to be ineligible under 35 U.S.C. § 101...more

10/6/2021  /  Abstract Ideas , CLS Bank v Alice Corp , Inventive Concept Test , Patent Applications , Patent Litigation , Patent-Eligible Subject Matter , Patents , Prior Art , Section 101

MyMail, Ltd. v. ooVoo, LLC (Fed. Cir. 2021)

Two years ago, MyMail and ooVoo went to the mat in the Federal Circuit over claims that the District Court for the Northern District of California found ineligible under 35 U.S.C. § 101.  Patent holder MyMail was able to...more

8/23/2021  /  Abstract Ideas , Claim Construction , Patent Litigation , Patent Trial and Appeal Board , Patent-Eligible Subject Matter , Patents , Prior Art , Section 101

On the Nature of Prior Art in the 35 U.S.C. § 101 Inquiry

Diamond v. Diehr, decided by the Supreme Court in 1981, seemed to establish a bedrock principle of statutory construction for patent law.  The Court stated that "[t]he 'novelty' of any element or steps in a process, or even...more

8/11/2021  /  Abstract Ideas , Claim Construction , Inventive Concept Test , Obviousness , Patent Applications , Patent Litigation , Patent-Eligible Subject Matter , Patents , Prior Art , Section 101

Sensormatic Electronics, LLC v. Wyze Labs, Inc. (Fed. Cir. 2021)

Sensormatic asserted U.S. Patents 7,730,534, 7,936,370, 7,954,129, 8,208,019, and 8,610,772 against Wyze in the District of Delaware, alleging infringement.  Wyze moved the District Court to dismiss under Rule 12(c), on the...more

7/27/2021  /  Abstract Ideas , CLS Bank v Alice Corp , Inventive Concept Test , Patent Infringement , Patent Litigation , Patent-Eligible Subject Matter , Patents , Prior Art , Section 101

Yu v. Apple (Fed. Cir. 2021)

When the Supreme Court began poking around into the law of patent eligibility just over a decade ago, the invention topics that it considered under the abstract idea exception were limited to types of financial transactions. ...more

6/14/2021  /  Abstract Ideas , Apple , Bilski , CLS Bank v Alice Corp , Patent Infringement , Patent Invalidity , Patent Litigation , Patent-Eligible Subject Matter , Patents , Section 101
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Updated: Dec 28, 2021:

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JD Supra, LLC
150 Harbor Drive, #2760
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Privacy Officer
JD Supra, LLC
150 Harbor Drive, #2760
Sausalito, CA 94965

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Contacting JD Supra

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