Latest Publications


Federal Circuit Expanding Patent Eligibility Analysis in Finjan v. Blue Coat Systems, Inc. (Part 1)

The Court of Appeals of the Federal Circuit (CAFC) starts the new year off with a victory for patentees in the subject matter eligibility arena. In Finjan v. Blue Coat Systems, Inc. (case no. 2016-2520; January 2018), the...more

Unclaimed Features Doom Patent Claims Under Section 101 Eligibility Analysis — Lessons from Two-Way Media

When claims are subject to the subject matter eligibility inquiry under 35 USC 101, details matter. In previous posts, the Patent 213 blog has stressed the need to provide details of the invention not only in the...more

Patent Eligibility Pointers from the Federal Circuit – Part 2

In Part 1 of this post series, several decisions from the Court of Appeals for the Federal Circuit (CAFC) were analyzed to explore factors that may lead a court to find patent claims ineligible under §101. The cases discussed...more

Patent Eligibility Pointers from the Federal Circuit – Part I

What characteristics of a claim do the courts use to determine if a claimed invention meets the statutory requirements under 35 USC §101? This question has been vexing patent attorneys for years, with the question becoming...more

Lower Threshold for Indefiniteness Confirmed by PTAB in Ex Parte McAward

The courts have long stated that one goal of patent law is to provide certainty to both inventors and the public regarding the law that is applied in determining the metes and bounds of a patent claim....more

Diagnostic and Personalized Medicine Claims — Strategies for Navigating the §101 Minefield

In Cleveland Clinic Foundation v. True Health Diagnostic LLC, the Federal Circuit (CAFC) dealt another blow to the patent eligibility of diagnostic methods and the growing field of personalized medicine....more

Improved Computer Functionality Argument Fails 101 Eligibility Test in Evolutionary Intelligence

Not all abstract ideas fall under the scrutiny of 35 USC 101. Over the past year, the CAFC has chipped away at the granite façade that is 35 USC 101 issuing several opinions finding abstract ideas to be patent eligible under...more

Can You Be Reasonably Certain a Water Balloon Is Substantially Filled? Indefiniteness in Tinnus v. Telebrands

In Tinnus Enterprises, LLV v. Telebrands Enterprises (Fed. Cir. 2016-1410), the CAFC considered whether a claim requiring that a container (think water balloon) be “substantially filled” was indefinite under 35 USC §112....more

Eli Lilly v. Teva – Expert Testimony and the Indefiniteness Inquiry

In the patent world, claim scope depends on the meaning given to the individual words in the claim. If the meaning of a word in the claim is not clear, the claim may be attacked as invalid under the indefiniteness standard....more

Does Yeda v. Abbott Clarify Inherent Disclosure Under 35 USC 112

Recently, in Yeda Research and Development v Abbott GMBH & Co. KG, the U.S. Court of Appeals for the Federal Circuit (CAFC) weighed in on the issue of inherent disclosure as a means for satisfying the written description...more

MRCO v. Bandai Shows the Way to Broader Method Claims that Satisfy Alice and Mayo

It is said that one should cast a “wide net to catch the big fish.” In patent parlance, the wide net is the claims and the big fish are the competitors and customers. The computer/software industry and diagnostic industry,...more

USPTO Issues Patent Eligibility Guidance In View Of CellzDirect and Sequenom

The USPTO issued a memorandum to the examining corps entitled Recent Subject Matter Eligibility Rulings (Rapid Litigation Management v. CellzDirect and Sequenom v. Ariosa) on July 14, 2016. The Patent 213 Blog has previously...more

CAFC Dissects Alice Patent Eligibility Analysis in Bascom Global Internet Services

This case arose on an appeal from the grant of a motion to dismiss for failure to state a claim, with the district court finding the asserted claims of Bascom’s U.S. Patent No. 5,987,606 were invalid as a matter of law under...more

July Fireworks: Federal Circuit Finds Claims to Cryopreservation Method Eligible Under 35 USC §101

On July 5, the Federal Circuit found claims directed to cryopreservation methods for hepatocytes patent eligible under 35 USC §101, reversing the district court decision finding the claims invalid on motion for summary...more

USPTO Releases Update on Patent Eligibility Decision in Light of Enfish

On May 19, the USPTO released an update to patent examiners regarding the U.S. Court of Appeals for the Federal Circuit’s (CAFC) recent decision in Enfish, LLC v. Microsoft Corp. and TLI Communications LLC v. A.V. Automotive,...more

Abstract Idea Exception Rules the Day in TLI Communications

The Court of Appeals for the Federal Circuity (CAFC) has been busy on the patent eligibility front this month. After the recent Enfish decision, the CAFC handed down TLI Communications LLC v. AC Automotive, LLC the very next...more

Not All Software Claims are Abstract Ideas Under Alice

On May 9, Mercury navigated its way between the earth and the sun (a “transit “in astronomical terms), an event that will not occur again until 2019. The Federal Circuit in Enfish, LLC v. Microsoft Corp (2015-1244) provided a...more

Novel Applications of Natural Laws Remain Unpatentable Under 35 USC §101

In Genetic Technologies (GTG), the U.S. Court of Appeals for the Federal Circuit (CAFC) held the line in the patent eligibility saga in the field of biotechnology. GTG asserted U.S. Patent No. 5,612,179 against Merial and...more

Federal Circuit Denies Patent on Gaming Method

Do not pass go. Do not collect $200. This is the message often heard when claims are held to cover patent ineligible laws of nature, natural phenomena or abstract ideas. Once the claim is placed in the patent-ineligible box,...more

Be Critical When You Criticize The Prior Act

Your mom was right––sometimes saying bad things (in this case about the prior art) can get you in trouble. Many patent specifications highlight the advantages of the claimed products or methods by pointing out shortcomings of...more

Ultimate Pointer Prevails in Indefiniteness Challenge

When is a claimed device really a claimed device? Claims for many types of tangible items, particularly computer-related inventions, include functional terminology. As the 213 blog has noted in the past, functional claiming...more

How Much Homology is Enough Under § 112?

How much homology is required to claim a variant of a known nucleic acid sequence when the function of the nucleic acid is recited in the claims? The Patent Trial and Appeal Board (PTAB) provides some insight on this question...more

Eligibility of Isolated Nucleic Acid: Australian and U.S. Standards

This is the second of a two-part series comparing Australian and U.S. law and will focus on patent eligibility of an isolated nucleic acid sequence. Are the patent eligibility standards for isolated nucleic acid...more

What are the Rules on Indefiniteness of a Patent Specification under 35 USC § 112?

While the question was answered by the Supreme Court in Nautilus, Inc. v. Biosig Instruments, 134 S. Ct. 2120 (2014), the Federal Circuit, in The Dow Chemical Company v. Nova Chemicals Corporation (Canada), (2014-1431,...more

24 Results
View per page
Page: of 1

"My best business intelligence,
in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
Sign up using*

Already signed up? Log in here

*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
*With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name. Or, sign up using your email address.