The US Court of Appeals for the Federal Circuit reversed and remanded a district court’s decision that the asserted claims were patent ineligible under 35 U.S.C. § 101, finding that the district court improperly characterized...more
On September 9, 2024, the United States Court of Appeals for the Federal Circuit (“CAFC”) reversed the U.S. District Court for the Northern District of California’s decision finding asserted claims invalid under 35 U.S.C. §...more
Before Reyna, Prost, and Schall. Appeal from the United States District Court for the Northern District of California. Summary: Claims are patent-eligible under 35 U.S.C. § 101 where the written description discloses...more
The Mayo/Alice framework for determining subject matter eligibility of patents under 35 U.S.C. §101 has long since antagonized both patent prosecutors and litigators alike, causing significant uncertainty in the realm of...more
Before Dyk, Reyna, and Stark. Appeal from the United States District Court for the Western District of Texas. Summary: When assessing patent eligibility under 35 U.S.C. § 101, combining two abstract ideas does not make...more
On September 9, the Court of Appeals for the Federal Circuit reversed a finding by the District Court for the Northern District of California that point-of-view camera claims were ineligible. ...more
The US Patent and Trademark Office (USPTO) recently issued its 2024 Guidance on Patent Subject Matter Eligibility and July 2024 Subject Matter Eligibility Examples. This latest update builds on the 2019 Guidance by providing...more
In the recent decision of Miller Mendel, Inc. v. City of Anna, Texas, 2024 U.S. App. LEXIS 17637 (Fed. Cir. July 18, 2024), the Federal Circuit upheld the district court’s grant of a motion for judgment on the pleadings under...more
Before Lourie, Bryson, and Stark. Appeal from the United States District Court for the Central District of California. Summary: Patent claims that merely recite result-orientated, functional language without specifying the...more
Our Texas Patent Litigation Monthly Wrap-Up for July 2024 covers three decisions of interest from the Eastern District of Texas granting motions related to subject matter eligibility, stays pending inter partes review (IPR),...more
On appeal from a motion to dismiss based on subject matter eligibility, the US Court of Appeals for the Federal Circuit held that a district court appropriately analyzed certain claims as representative claims and that the...more
Before Moore, Stoll, and Cunningham. Appeal from the United States District Court for the Eastern District of Texas. Summary: No live controversy existed over patent claims omitted from infringement contentions prior to a...more
On July 17th, the USPTO issued a guidance update to help USPTO personnel and those who interact with the agency evaluate the subject matter eligibility of claims in patent applications involving artificial intelligence (AI)....more
The murky world of artificial intelligence-enabled inventions requires illumination. Did the USPTO’s recent guidance provide this much-needed illumination, or merely leave a trail of breadcrumbs? Some say the guidance is...more
On July 16, 2024, the United States Patent and Trademark Office (“USPTO”) announced new guidance for examination of patent applications directed to critical and emerging technologies, including artificial intelligence (AI)....more
On cross-appeals from a granted Fed. R. of Civ. Pro. 12(c) motion on subject matter eligibility, the US Court of Appeals for the Federal Circuit found that a patent directed to a method for “assist[ing] an investigator in...more
Precedential and Key Federal Circuit Opinions - 1. BACKERTOP LICENSING LLC [OPINION] (23-2367, 23-2368, 24-1016, 24-1017 Prost, Hughes, and Stoll) - Hughes, J. The Court affirmed the District Court’s orders (1)...more
The Federal Circuit has affirmed a lower court’s decision that the claims of a patent for software that manages pre-employment background checks weren’t patent-eligible. The case is In Miller Mendel, Inc. v. City of...more
The US Patent & Trademark Office (PTO) issued a 2024 Guidance Update on Patent Subject Matter Eligibility, Including on Artificial Intelligence, which focuses on subject matter eligibility for artificial intelligence...more
On July 17, 2024, the United States Patent and Trademark Office (USPTO) published guidance regarding the patent subject matter eligibility of claims concerning technology applicable to artificial intelligence (AI)....more
In a July 16 press release, The U.S. Patent and Trademark Office (USPTO) announced that it issued a guidance update on “patent subject matter eligibility to address innovation in critical emerging technologies including...more
The United States Patent and Trademark Office (USPTO) recently published new guidance on subject-matter eligibility as related to Artificial Intelligence (AI), opening a written comment window to respond with a deadline of...more
The US Court of Appeals for the Federal Circuit applied the Alice/Mayo framework to assess whether claims directed to remote gambling were patent eligible under 35 U.S.C. § 101 and determined that the claims were directed to...more
Recognizing a need for clarity in evaluating patent eligibility under 35 U.S.C. § 101 for critical and emerging technologies, including artificial intelligence (AI) innovations, the U.S. Patent and Trademark Office (USPTO)...more
From the U.S. Supreme Court’s perspective, its Mayo and Alice decisions from 2012 and 2014, respectively, are still sufficient to govern patent law’s § 101 analysis. This inference stems in-part of the Supreme Court’s cert...more