News & Analysis as of

Alice/Mayo Software Patents

McDonnell Boehnen Hulbert & Berghoff LLP

Oasis Tooling, Inc. v. Siemens Industry Software Inc. (Fed. Cir. 2026)

If we have learned anything from the last twelve years of patent eligibility jurisprudence, it is that the Federal Circuit continues to find new ways to disappoint.  The Federal Circuit’s recent nonprecedential decision in...more

Vorys, Sater, Seymour and Pease LLP

The Precedent: Federal Circuit Affirms Ineligibility of Asynchronous Web Conferencing Patent in US Pat. No. 7,679,637 LLC v....

In US Pat. No. 7,679,637 LLC v. Google LLC, the Federal Circuit affirmed dismissal of a patent infringement suit, holding that the claims directed to asynchronous web conferencing were patent-ineligible under 35 U.S.C. § 101....more

McDermott Will & Schulte

Can’t patent idea of using asynchronous data streams during web conferencing

The US Court of Appeals for the Federal Circuit affirmed a district court’s dismissal of a patent infringement suit, holding that the asserted web conferencing claims were directed to an abstract idea, lacked any inventive...more

Hudnell Law Group

Result-Oriented Software Claims Fall Short as Federal Circuit Demands Technological Improvement

Hudnell Law Group on

On January 22, 2026, the United States Court of Appeals for the Federal Circuit affirmed the Rule 12 dismissal of a patent infringement action brought by US Patent No. 7,679,637 LLC against Google LLC, holding that the...more

Baker Botts L.L.P.

A New Playbook for § 101? The USPTO's Guidance on Using Technical Evidence

Baker Botts L.L.P. on

Section 101 eligibility remains one of the most unpredictable and frequently contested areas of U.S. patent practice, particularly for software, artificial intelligence, and machine learning....more

Sheppard

Not A Categorical Ban: Federal Circuit Narrowed Spectrum of Patent Eligible Machine Learning Claims

Sheppard on

Recentive Analytics, Inc. v. Fox Corp., No. 23-2437 (Fed. Cir. 2025) – On April 18, 2025, the Federal Circuit upheld the district court’s dismissal of the case on the ground that the patents were ineligible under § 101....more

Fenwick & West LLP

Federal Circuit Issues Precedential Decision Reframing Patent Eligibility Analysis Under Section 101

Fenwick & West LLP on

Patent eligibility decisions are not new. Courts have grappled with what can and cannot be patented for years, especially in the technology and software spaces. A recent decision from the U.S. Court of Appeals for the Federal...more

Alston & Bird

USPTO Clarifies Role of Declarations in Overcoming Subject Matter Eligibility Rejections

Alston & Bird on

The United States Patent and Trademark Office (USPTO) has issued new guidance encouraging applicants to use subject matter eligibility declarations (SMEDs), highlighting their potential influence at all stages of the...more

McDonnell Boehnen Hulbert & Berghoff LLP

Why the Alice Test is Stupid, Part IV: The Usefulness Paradox

One might be forgiven for assuming, based on a cursory reading of the Constitution or perhaps a fleeting bout of logic, that the U.S. patent system exists to promote the progress of science and useful arts. Historically, this...more

Venable LLP

The § 101 Reset for 2026

Venable LLP on

Patent practitioners have seen a shifting landscape for patent eligibility under 35 U.S.C. § 101 since the Supreme Court’s 2012 and 2014 seminal decisions in Mayo and Alice. Now, the United States Patent and Trademark Office...more

McDonnell Boehnen Hulbert & Berghoff LLP

Why the Alice Test is Stupid, Part III: Eligible Independent Claims Can Have Ineligible Dependent Claims

Once upon a time, patent eligibility was not controversial or difficult to understand. Then along came Alice Corp. v. CLS Bank, and with it the Supreme Court’s bright idea to replace statutory clarity with metaphysical...more

McDermott Will & Schulte

Precedential shift: USPTO clarifies patentability of AI training methods

McDermott Will & Schulte on

On November 4, 2025, the Director of the United States Patent and Trademark Office (USPTO) designated as precedential an appeals review panel (ARP) decision vacating the Patent Trial & Appeal Board’s § 101 rejection of claims...more

McDonnell Boehnen Hulbert & Berghoff LLP

Why the Alice Test is Stupid, Part II: The Mental Steps Doctrine Literally Makes No Sense

From a technical standpoint, everything a computer does involves reading, manipulating, and storing information through microcode instructions that move around 0’s and 1’s. Each operation performed by a processor, such as...more

Holland & Knight LLP

Judge Bryson Specifies 6-Part Synthesis of Section 101 Standards

Holland & Knight LLP on

In an opinion synthesizing and applying the current state of Section 101 law, Judge William Bryson of the U.S. Court of Appeals for the Federal Circuit, sitting by designation in a district court, held on summary judgment...more

Fitch, Even, Tabin & Flannery LLP

Federal Circuit Offers Some Helpful Patent Eligibility Guidance

On August 11, in Powerblock Holdings, Inc. v iFit, Inc., the Federal Circuit offered at least two observations that can benefit patentees seeking patent protection for inventions involving software. First, the court noted...more

ArentFox Schiff

USPTO Aims to Boost Patent Eligibility of AI and ML Inventions

ArentFox Schiff on

The US Patent and Trademark Office (USPTO) has issued new guidance to clarify and improve the evaluation of patent eligibility for artificial intelligence (AI) and machine learning (ML) inventions in order to foster...more

Womble Bond Dickinson

Developments in Patent Subject Matter Eligibility for Software-Related Inventions, in View of Guvera v. Spotify

Womble Bond Dickinson on

Innovators seeking patent protection for software inventions should be aware that all software inventions face patent-eligibility issues. Nevertheless, patent practitioners who are experienced in the art of software patent...more

WilmerHale

USPTO Issues Guidance Update on Subject Matter Eligibility of Artificial Intelligence

WilmerHale on

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

BakerHostetler

USPTO AI Examination Update Provides New Example Cases Analyzing Subject Matter Eligibility Under §101

BakerHostetler on

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

Akin Gump Strauss Hauer & Feld LLP

Senior Circuit Judge Issues Split Decision on Patent Eligibility of Claims Directed to Restricting Access to Computer Files

Senior Circuit Judge Bryson of the Federal Circuit, sitting by designation in the District of Delaware, recently granted-in-part and denied-in-part a Rule 12(c) motion for judgment based on patent eligibility under 35 U.S.C....more

Holland & Knight LLP

Federal Circuit Confirms Data Privacy Patent Is an Invalid Abstract Idea under Section 101

Holland & Knight LLP on

The U.S. Court of Appeals for the Federal Circuit looked at a patent directed to a data privacy system that described users operating mobile device apps to "socialize, bank, shop, and navigate." As users operate such apps,...more

Holland & Knight LLP

Federal Circuit: Digital Guitar Instruction Patent Directed to an Abstract Idea

Holland & Knight LLP on

A recent decision by the U.S. Court of Appeals for the Federal Circuit can be added to the list of cases invalidating claims under Section 101 that include "do it on a computer" limitations. Ubisoft asserted a patent...more

Bradley Arant Boult Cummings LLP

An Early Out Under § 101 Based on Claimed Long-standing Commercial Practices

Late last week, the U.S. Court of Appeals for the Federal Circuit delivered ShoppersChoice.com the affirmation it ordered in Electronic Communication Technologies, LLC (ECT) v. ShoppersChoice.com, LLC. In doing so, the court...more

McDermott Will & Schulte

Focusing on Functionality, Software Claims Found Patent Eligible

The US Court of Appeals for the Federal Circuit found that patent claims directed to a communication system were patent eligible under 35 U.S.C. § 101 because the claimed invention changes the normal operation of a...more

Bradley Arant Boult Cummings LLP

Done at Step 1: When a Claim Is Tied to an Improvement, No Need to Proceed to Alice Step 2

By reversing the lower court’s ruling that the asserted claims were not patent-eligible under 35 U.S.C. § 101 in Uniloc v. LG Electronics, the Federal Circuit resurrected Uniloc’s infringement suit against LG Electronics. It...more

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