As we have previously covered, the Senate Subcommittee on Intellectual Property recently held hearings on proposed revisions to 35 U.S.C. § 101 and related sections of the patent statute. Chairman Thom Tillis (a Republican...more
On June 4, 5, and 11, the Senate Subcommittee on Intellectual Property held hearings on its recent proposal to revise 35 U.S.C. § 101, and in particular the current draft bill to do so. Chairman Tillis and Ranking Member...more
On May 22, a bipartisan and bicameral group of senators and representatives released a draft bill that proposes significant changes to 35 U.S.C. § 101 and the law of patent eligibility. This draft bill follows a framework...more
The second part of the patent-eligibility test of Alice Corp. v. CLS Bank Int'l involves an inquiry into whether certain elements of a claim directed to an unpatentable judicial exception are "well-understood, routine, and...more
In early February, the Federal Circuit published an opinion in HP Inc. v. Berkheimer stating clearly –- for the first time -- that patent-eligibility under 35 U.S.C. § 101 should be determined as a matter of law, but with...more
As discussed in a previous article, the U.S. Patent and Trademark Office recently published new subject matter eligibility examples directed to the abstract idea exception to patentability under 35 U.S.C. § 101. These...more
Core Wireless Licensing brought an action against LG Electronics in the Eastern District of Texas. Core contended that LG infringed claim 21 of its U.S. Patent No. 7,804,850. LG moved for summary judgment on the grounds...more
8/31/2016
/ Abstract Ideas ,
Bascom Global v AT&T Mobility ,
CLS Bank v Alice Corp ,
Enfish v Microsoft ,
LG Electronics ,
Patent Infringement ,
Patent Litigation ,
Patent Validity ,
Patent-Eligible Subject Matter ,
Patents ,
Section 101 ,
Summary Judgment
It is abundantly clear that the Supreme Court's 2014 Alice Corp. v. CLS Bank decision has significantly changed the patent-eligibility landscape for business methods and some types of software inventions. For instance, in...more
8/22/2016
/ CLS Bank v Alice Corp ,
Computer-Related Inventions ,
Covered Business Method Proceedings ,
Enfish v Microsoft ,
Patent Litigation ,
Patent-Eligible Subject Matter ,
Patents ,
Section 101 ,
Software ,
Technological Tool Test ,
TLI Communications ,
USPTO
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
Patent owner Electric Power Group asserted U.S. Patent Nos. 7,233,843, 8,060,259, and 8,401,710 against Alstom S.A. and various other parties in the Central District of California. The District Court granted Alstom's motion...more
Douglas M. Shortridge, the named inventor of U.S. Patent No. 8,744,933, sued Foundation Construction Payroll Service, LLC ("Foundation") for infringement thereof in the U.S. District Court for the Northern District of...more
Every day, millions of people are subjected to a frustrating experience -- finding a place to park their automobiles. Whether at the train station, the sports stadium, a festival, or a popular restaurant, circulating through...more
35 U.S.C. § 101 states that "any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof" is patent-eligible. However, the Supreme Court has traditionally...more
Plaintiff Peschke Map Technologies ("Peschke") sued Rouse Properties ("Rouse") for infringement of U.S. Patent No. 6,397,143, directed to a computer-based map navigation and display system. Rouse filed a 12(b)(6) motion to...more
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
3/5/2016
/ Abstract Ideas ,
CLS Bank v Alice Corp ,
Corporate Counsel ,
Covered Business Method Patents ,
Patent-Eligible Subject Matter ,
Patents ,
Preemption ,
Rebuttable Presumptions ,
Section 101 ,
Software ,
Young Lawyers
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,...more
3/3/2016
/ AFCP ,
America Invents Act ,
Broadest Reasonable Interpretation Standard ,
CLS Bank v Alice Corp ,
Covered Business Method Patents ,
Cuozzo Speed Technologies v Lee ,
Defend Trade Secrets Act (DTSA) ,
Inter Partes Review (IPR) Proceeding ,
Patent Prosecution Highway ,
Patent-Eligible Subject Matter ,
Patents ,
Section 101 ,
Trade Secrets ,
USPTO Pilot Program
Earlier today, we presented a live webinar on the "Top Patent Law Stories of 2015." The webinar covered seven of the twenty stories that made it onto Patent Docs ninth annual list of top patent stories. The seven stories...more
1/22/2016
/ America Invents Act ,
Chevron Deference ,
CLS Bank v Alice Corp ,
En Banc Review ,
Limelight v Akamai ,
Patent Infringement ,
Patent-Eligible Subject Matter ,
Patents ,
Sandoz v Amgen ,
Section 101 ,
Sequenom ,
USPTO
The fallout from the Supreme Court's Alice Corp. v. CLS Bank Int'l case continues to reshape the landscape of patent-eligibility. Despite guidance from the USPTO, patentees still struggle with what exactly is patent-eligible...more
As 2015 drew to a close, the toll of the Alice Corp. v. CLS Bank Int'l decision on software and business method patents became apparent. Post Alice, approximately 70% of all patents challenged under 35 U.S.C. § 101 have been...more
1/7/2016
/ CLS Bank v Alice Corp ,
Covered Business Method Patents ,
Exceptional Case ,
Octane Fitness v. ICON ,
Patent Infringement ,
Patent-Eligible Subject Matter ,
Patents ,
SCOTUS ,
Section 101 ,
Software Patents ,
Totality of Circumstances Test
Note: This coverage of a district court case from last year provides an overview of the patented invention, as well as the decision currently being appealed to the Federal Circuit. In a subsequent article, we will review the...more
6/30/2015
/ America Invents Act ,
CLS Bank v Alice Corp ,
Intellectual Property Litigation ,
Internet ,
Patent Infringement ,
Patent Litigation ,
Patent-Eligible Subject Matter ,
Patents ,
Section 101 ,
Ultramercial v Hulu ,
USPTO
Since late last year, the main theme of many 35 U.S.C. § 101 disputes has been whether claims under review are more like those in Ultramercial Inc. v. Hulu LLC or DDR Holdings, LLC v. Hotels.com. In the former case, the...more
The Ultramercial story is not over. In the latest step of a controversial case involving 35 U.S.C. § 101 that has been ongoing since 2009, patentee Ultramercial has petitioned the Supreme Court for a writ of certiorari. The...more
6/4/2015
/ CLS Bank v Alice Corp ,
Copyright ,
Hulu ,
Intellectual Property Litigation ,
Internet Streaming ,
Music ,
Online Videos ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patent-Eligible Subject Matter ,
Patents ,
Petition for Writ of Certiorari ,
Section 101 ,
Software ,
Technology ,
Ultramercial v Hulu ,
WildTangent v Ultramercial ,
YouTube