The advice to practitioners faced with marginally relevant prior art has long been "when in doubt, cite it." There was a small cost for the applicant (or practitioner) to cite such art by filing an information disclosure...more
On February 12, 2024, the U.S. Patent and Trademark Office released detailed guidance regarding inventorship of inventions created with the assistance of artificial intelligence (AI). The guidance, signed by Kathi Vidal,...more
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
Establishing a prima facie case of obviousness based on a multiple prior art references generally requires that the references teach or suggest all claim elements and that one of ordinary skill in the art would be motivated...more
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
Self-similarity is a characteristic found in many physical, natural, and human-made systems. In short, it describes a class of structures or behaviors that are at least partially-invariant to time or scale. Thus, these...more
Can a prior art reference with an error be considered to be a disclosure of the erroneous teaching? A Federal Circuit panel split over this issue, with their disagreement largely based on how apparent the error would be to...more
The U.S. Patent and Trademark Office handles hundreds of thousands of patent applications per year, as well as various types of administrative patent proceedings. While the USPTO has made incremental improvements in its...more
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
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
In academic settings, objective indicia of non-obviousness are sometimes presented as a common way of rebutting contentions that a claimed invention is obvious. These indicia, set forth in Graham v. John Deere Co. and...more
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
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
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
The Supreme Court's Alice Corp. v. CLS Bank Int'l case has been criticized for setting forth a patent eligibility analysis that is unworkably subjective. As a consequence, the validity of particular types of inventions,...more
The legal concept of obviousness is tricky. A claimed invention is found obvious if the prior art teaches or suggests all claim limitations and one of ordinary skill in the art would have been motivated to combine the...more
A computer does just three things: receives information in the form of bits, transforms this information, and provides output based on the information as transformed. The receiving may take place by way of various types of...more
This decision is bad. Not an American Axle level of bad, but still quite far from good.
Simio sued FlexSim in the District of Utah for alleged infringement of its U.S. Patent No. 8,156,468. FlexSim moved for dismissal on...more
12/30/2020
/ Abstract Ideas ,
Computer-Related Inventions ,
Functionality ,
Inventive Concept Test ,
Patent Infringement ,
Patent Litigation ,
Patent-Eligible Subject Matter ,
Patents ,
Prior Art ,
Section 101 ,
Software Patents
Adaptive Streaming, the owner of U.S. Patent No. 7,047,305, sued Netflix in the Central District of California for alleged infringement. Netflix moved to dismiss the case on the pleadings under Rule 12(b)(6), asserting that...more
This article is Part II of a study on the patent eligibility of graphical user interfaces. Part I was published yesterday. We continue from where we left off, with overviews of a handful of Federal Circuit § 101 decisions...more
The evolution of graphical user interfaces parallels the evolution of computing technology itself. As computers grow more powerful and sophisticated, so does their ability to display cutting-edge representations of...more
11/9/2020
/ Abstract Ideas ,
CLS Bank v Alice Corp ,
Computer-Related Inventions ,
Intellectual Property Protection ,
Inventive Concept Test ,
Patent Litigation ,
Patent-Eligible Subject Matter ,
Patents ,
Popular ,
Prior Art ,
Section 101 ,
Software Developers ,
Software Patents ,
USPTO
When considering the patent-eligibility of claims, size usually matters. Claims that are longer and recite more detailed inventions tend to be more likely to survive 35 U.S.C. § 101 challenges than those that are shorter and...more
Over the last 18 months, the Federal Circuit has been quietly shoring up the non-obviousness provisions of 35 U.S.C. § 103 by enforcing the requirement that an obviousness argument entails making the full prima facie case. ...more
An Obviousness Rejection in Patent-Eligibility Clothing? -
In Mayo v. Prometheus, the Supreme Court wrote "[w]e recognize that, in evaluating the significance of additional steps, the § 101 patent-eligibility inquiry and,...more
A post grant review (PGR) is an administrative reconsideration of a recent-granted U.S. patent. The proceeding is held in the USPTO, before that body's Patent Trial and Appeal Board. A petition for PGR is timely if it is...more
8/19/2016
/ Abstract Ideas ,
Claim Construction ,
CLS Bank v Alice Corp ,
Patent Applications ,
Patent Invalidity ,
Patent-Eligible Subject Matter ,
Patents ,
Post-Grant Review ,
Preponderance of the Evidence ,
Prior Art ,
Section 101