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Shook, Hardy & Bacon L.L.P.

Lessons And Challenges Arising Out Of The Federal Circuit’s New Focus On Factual Issues In “Patent Eligibility” Disputes

With its Alice and Mayo opinions, the U.S. Supreme Court dramatically changed how patent eligibility under 35 U.S.C. § 101 is defined. ...more

Knobbe Martens

Graphical User Interface Patent Claims Found Eligible

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The Federal Circuit recently found claims to a specialized graphical user interface (GUI) for trading financial securities eligible in Trading Technologies Int’l v. CQG, No. 2016-2016 (Fed. Cir. Jan. 18, 2017). The Federal...more

Mintz - Intellectual Property Viewpoints

Another Friendly Reminder from the CAFC – Use of “the Present Invention” is Clear and Unequivocal Evidence of Disavowal

Disavowal can occur when a patent holder disavows the full scope of claim terms in the specification or during prosecution (e.g., through the doctrine of prosecution history estoppel). In either event, disavowal requires...more

Saul Ewing LLP

Patent Owner Asserts 101 Ineligibility Is Not a Defense That Can Be Raised in Litigation

Saul Ewing LLP on

On September 26, 2016, RPost Communications Limited (“RPost”) filed a brief in the United States Court of Appeals for the Federal Circuit (“Federal Circuit”), arguing that the district court did not have statutory authority...more

Fenwick & West LLP

AliceStorm in the Dog Days of Summer

Fenwick & West LLP on

Over the past two months, the trends I've discussed in my previous blogs on AliceStorm have continued and become more entrenched. In particular, the Federal Circuit has been quite active, issuing nine decisions since late...more

Neal, Gerber & Eisenberg LLP

Software Patents Aren’t Inherently Abstract—Patent Appeals Court Clarifies and Enhances Software Patent Eligibility

In Enfish, LLC v. Microsoft Corp., the U.S. Court of Appeals for the Federal Circuit reversed a California district court’s summary judgment that two software patents were directed to an “abstract idea” without...more

BakerHostetler

Patent Drafting Post-Alice: Broadly Define the Problem, and Narrowly Claim the Solutions

BakerHostetler on

The notion of strategic claim drafting, which experienced patent practitioners understand, is all about writing specific, narrowly defined claims to cover the strategically important “choke points” in a value chain. The...more

McDonnell Boehnen Hulbert & Berghoff LLP

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, effectively limiting the scope of patent-eligible subject matter. In particular, software and business...more

Foley & Lardner LLP

The Threshold of Exceptionality: There Is a Line, and It Can Be Crossed

Foley & Lardner LLP on

Non-practicing entity (“NPE”) plaintiffs beware and NPE defendants be delighted: sanctions for objectively unreasonable claims and conduct are alive and well. Defendants in NPE litigations, particularly in the Eastern...more

Miles & Stockbridge P.C.

Is the Patent Trial and Appeal Board Still a “Death Squad” in Instituting Covered Business Method Reviews?

Miles & Stockbridge P.C. on

Last year, then Federal Circuit Chief Judge Randall R. Rader referred to the Patent Trial and Appeal Board (the “PTAB”) as a “death squad,” a view not shared by the PTAB. The focus of this blog is to look at the latest trends...more

McDonnell Boehnen Hulbert & Berghoff LLP

"Software" Claims Reciting No Structural Components and Having Questionable Novelty Struck Down under 35 U.S.C. § 101

Two recent District Court decisions show examples of "weak" claims, which in the past would likely be found invalid as lacking novelty or being obvious, but today are struck down as being unpatentable under § 101. The cases...more

Robins Kaplan LLP

Drafting Software Patents In A Post-Alice World

Robins Kaplan LLP on

It has been a challenging year for software patent owners following the Supreme Court’s decision in Alice Corp. v. CLS Bank International. Since that ruling was handed down, a large number of software patents have been...more

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