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Patent-Eligible Subject Matter

Patent-Eligible Subject Matter refers to the types of inventions that can be legally patented. The criteria for patentability varies depending on the jurisdiction. In the United States, for instance, if a... more +
Patent-Eligible Subject Matter refers to the types of inventions that can be legally patented. The criteria for patentability varies depending on the jurisdiction. In the United States, for instance, if a researcher discovers a naturally occurring substance, the substance itself cannot be patented. This issue was examined in a United States Supreme Court case, AMP v. Myriad, in regard to the patentability of human genes.  less -

Aatrix Software, Inc. v. Green Shades Software, Inc. (Fed. Cir. 2018)

Aatrix brought an infringement action against Green Shades in the Middle District of Florida, alleging infringement of U.S. Patent Nos. 7,171,615 and 8,984,393. Green Shades filed a 12(b)(6) motion to dismiss on the grounds...more

The Master Review Form Provides Insight into How the U.S. Patent & Trademark Office Treats Eligible Subject Matter Rejections...

by K&L Gates LLP on

On February 9, 2018, the United States Patent and Trademark Office (“USPTO”) held its first Chicago Regional Seminar, hosted by Northwestern University Pritzker School of Law. Stefanos Karmis, the Acting Director of the...more

Factual Evidence of Conventionality May Be Required for Section 101 Findings

In Berkheimer v. HP Inc. (Fed. Cir. Feb. 6, 2018), the Federal Circuit affirmed the district court’s finding that certain claims of U.S. Patent No. 7,447,713—directed to digital processing and archiving in a digital asset...more

The MPEP Now Incorporates – and Expands Upon – § 101 Guidance

Since the Supreme Court decided Alice v. CLS Bank in June 2014, the USPTO regularly issues new memoranda explaining its implementation of the § 101 framework. This includes some of the more notable memos for prosecutors: the...more

Berkheimer v. HP Inc.

by Knobbe Martens on

Federal Circuit Summaries - Before Moore, Taranto, and Stoll. Appeal from the United States District Court for the Northern District of Illinois. Summary: (1) Terms of degree, including “minimal,” may render claims...more

USPTO Publishes Updated Subject Matter Eligibility in a New Revision of the Manual of Patent Examining Procedure

by K&L Gates LLP on

On January 30, 2018, the United States Patent and Trademark Office (USPTO) quietly published a new revision (Revision 08.2017) to the Ninth Edition of the Manual of Patent Examining Procedure (MPEP). The revision includes...more

Ex parte Kotanko (PTAB 2018)

In an interesting decision issued last year, the Patent Trial and Appeal Board reversed the final rejection of claims 1-5 and 9 in U.S. Application No. 12/959,017. The claims at issue had been rejected under 35 U.S.C. § 101...more

Fresh From the Bench: Latest Federal Circuit Court Cases

Berkheimer v. HP Inc., Appeal No. 2017-1437 (Fed. Cir. Feb. 8, 2018) - In Berkheimer v. HP Inc., the Federal Circuit reviewed the District Court’s summary judgment finding that certain claims of a patent were invalid as...more

Federal Circuit Finds Fact Issues Bar § 101 Ruling, Jeopardizing Early Motion Strategy

by Orrick - IP Landscape on

Berkheimer v. HP Inc., Fed. Cir. (February 8, 2018) - Last Thursday, the Federal Circuit decided Berkheimer v. HP Inc. It ruled, for the first time, that a district court had engaged in improper fact finding when deciding...more

Key Patent Decisions of 2017

by Jones Day on

In another noteworthy year for patent law, the U.S. Supreme Court and Federal Circuit issued a number of decisions that altered the patent landscape, including four Supreme Court decisions. The topics of the key cases...more

Methods of Genetic Testing Still Patentable

by K&L Gates LLP on

This afternoon the Federal Court handed down its highly anticipated decision in Meat & Livestock Australia Limited v Cargill, Inc [2018] FCA 51. The matter has attracted substantial media attention in Australia and generated...more

Federal Circuit Finds Claims Directed to Protecting Against Malware Patent Eligible

In Finjan, Inc. v. Blue Coat Systems, Inc., No. 2016-2520 (Fed. Cir. Jan. 10, 2018), the Federal Circuit reviewed Finjan’s assertion of two patents related to methods for protecting against malware. The Court (1) affirmed...more

Berkheimer v. HP Inc. (Fed. Cir. 2018)

This first five or so weeks of 2018 have been busy for Federal Circuit 35 U.S.C. § 101 jurisprudence. At last count, four substantive decisions have come down so far (including this one, but not including Rule 36 judgments...more

Science Application International Corp. v. United States (Fed. Cl. 2018)

U.S. Government Fails in Attempt to Invalidate U.S. Patents under § 101 - In a bit of an ironic outcome, the U.S. government was unsuccessful in invalidating U.S. patents under § 101. It seems odd that the government...more

Core Wireless: Moving Beyond Eligibility as the Exception to the Exception?

by BakerHostetler on

January was an exciting month for patent professionals still attempting to make sense of the fallout from the Supreme Court’s 2014 Alice Corp. v. CLS Bank International decision. Hot on the heels of its Jan. 10 decision in...more

Another 101 Bites The Dust

In DCT Move, Inc. v. Real Estate Alliance, the CAFC affirmed the district court’s holding of invalidity of claims under 101. Here is the representative claim....more

PTAB Enters Sua Sponte Patent Eligibility Rejections

by Foley & Lardner LLP on

We’ve written previously about ex parte decisions of the Patent Trial and Appeal Board (PTAB) affirming patent eligibility rejections that seem to be inconsistent with the USPTO’s Subject Matter Eligibility Guidance....more

Patenting Software Methods

by Snell & Wilmer on

Software methods can be patented in the United States if the application is prepared to describe and claim subject matter legally defined as being patentable. Under Alice Corp. v. CLS Bank International, 134 S. Ct. 2347...more

App Display Given the OK (Under 101)

On January 25, 2018, the CAFC affirmed a district court’s denial of a motion for summary judgment for invalidity under 101 in Core Wireless Licensing v. LG Electronics, Inc, and found the claims to be directed to patent...more

Core Wireless Licensing v. LG Electronics: User Interfaces & Patent-Eligible Subject Matter

by Workman Nydegger on

On January 25, 2018 the Federal Circuit released its decision in Core Wireless Licensing v. LG Electronics. One of the issues was whether the asserted claims are directed to patent-eligible subject matter under 35 U.S.C. §101...more

Computer Interface Was Not an Abstract Idea

In Core Wireless Licensing S.A.R.L. v. LG Electronics, Inc., [2016-2684, 2017-1922] (January 25, 2018), the Federal Circuit affirmed the denial of summary judgment that, (1) claims 8 and 9 of U.S. Patent No. 8,713,476 and...more

Move, Inc. v. Real Estate Alliance Ltd. (Fed. Cir. 2018)

One of the more frustrating aspects of the current judicial patent eligibility framework is the propensity for courts, even the Federal Circuit, to carry out the two-part test from Alice Corp. v. CLS Bank Int'l in a...more

Spotlight on Upcoming Oral Arguments – February 2018

In this appeal, the Federal Circuit has been asked to decide whether the district court abused its discretion in denying Adobe’s request for attorney’s fees under 35 U.S.C. § 285. Blue Spike argues that the district court...more

Federal Circuit Starts 2018 With Two Favorable Decisions For Software Patents

by Fox Rothschild LLP on

After issuing two very negative decisions that called the future of software patent-eligbility into question, in January 2018 the Federal Circuit moved its software patent-eligibility pendulum back in the direction of finding...more

2017 and Early 2018 Supreme Court and Precedential Patent Cases From the Federal Circuit

Arbitration - Waymo v. Uber Technologies, 870 F.3d 1342 (Fed. Cir. 2017) - Waymo sued Uber and others for trade secret misappropriation and patent infringement. Uber contends that Waymo should be compelled to...more

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