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Patent-Eligible Subject Matter › Claim Limitations

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 -
McDermott Will & Emery

Count On It, Plural Term Means More Than One

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The US Court of Appeals for the Federal Circuit affirmed Patent Trial & Appeal Board (Board) patentability decisions after determining that the Board did not err in construing multiple terms within the challenged patents....more

Morrison & Foerster LLP - Federal Circuitry

Last Week in the Federal Circuit (July 12-16): Under Alice, Another Patent Bites The Dust

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Keniece Gray, Morrison & Foerster summer associate, co-authored this post.  We could have a new Federal Circuit judge today (achieving gender parity on the Court). Last week, the Senate invoked cloture (by a 63-34 vote) on...more

Smart & Biggar

Patentability of diagnostic methods – has the Canadian Patent Office drawn the line?

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The importance of medical diagnostic technologies has been brought to the fore with the COVID-19 pandemic. Rarely does a day pass when the media does not report on matters of approval and availability of tests, testing...more

Knobbe Martens

Federal Circuit Review - August 2020

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Claims Covering Human Engineering That Exploit a Naturally-Occurring Phenomenon Are Patent Eligible - In Illumina, Inc. V. Ariosa Diagnostics, Inc., Appeal No. 19-1419, the Federal Circuit modified its earlier decision...more

Knobbe Martens

Federal Circuit Review - November 2019

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The Appointments Clause: Ensuring That PTAB Decisions Are Subject to Constitutional Checks and Balances  In Arthrex, Inc. v. Smith & Nephew, Inc., Appeal No. 18-2251, the Federal Circuit ruled that, under the then-existing...more

Snell & Wilmer

Solicitor General Weighs in on Section 101, Prompts High Court to Grant Review in Athena Diagnostics v. Mayo Collaborative...

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At the Supreme Court’s request, the Solicitor General on Friday, December 6, weighed in on two pending cert petitions dealing with patent subject matter eligibility under 35 U.S.C. § 101. Though the Solicitor General urged on...more

Akin Gump Strauss Hauer & Feld LLP

Federal Circuit Remands CBM Review Decision, Asks PTAB to Explain Meaning of Part One of “Technological Invention” Exception

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The Federal Circuit vacated a PTAB decision invalidating all challenged claims of U.S. Patent No. 8,908,842 (’842 Patent) and ordered the PTAB to reconsider whether the patent should have been disqualified from covered...more

Knobbe Martens

Plausible and Specific Factual Allegations That Aspects of a Claim Are Inventive Are Sufficient to Defeat a Motion to Dismiss for...

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CELLSPIN SOFT, INC. V. FITBIT, INC. ET AL. Before Lourie, O’Malley, and Taranto. Appeal from the United States District Court for the Northern District of California. Summary: While not all factual allegations that are...more

Mintz - Intellectual Property Viewpoints

Understanding the USPTO’s Interpretation of 35 U.S.C. § 112 for Computer-Implemented Functional Claim Limitations

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Patent practitioners, inventors, in-house counsel, and patent examiners alike have been clamoring for more guidance on computer-implemented functional claim limitations invoking § 112(f) since the Federal Circuit’s en banc...more

Knobbe Martens

101 Patent Reform Progressing in Congress

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On May 22, 2019, a bipartisan committee of the U.S. Senate and House released a draft bill on § 101 reform, in a further attempt to reduce procedural obstacles for patent applicants. The draft bill would change the...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - April 2019 #3

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PATENT CASE OF THE WEEK - E.I. Du Pont De Nemours & Co. v. Unifrax I LLC, Appeal No. 2017-2575 (Fed. Cir. Apr. 17, 2019) - Our featured case of the week revolved primarily on the construction of a single claim term in...more

Jones Day

Battling Boredom While Building Virtual Cities: PTAB Denies Claims as Patent-Ineligible

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Video game companies occasionally will take to the PTAB, seeking to invalidate each other’s patents. Mobile game developer Supercell Oy (petitioner) filed a Post Grant Review (“PGR) after learning that the USPTO issued U.S....more

Knobbe Martens

Federal Circuit Review - September 2018

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Federal Circuit Finds Claims Issued from Reexamination Co-Pending with Appeal Ineligible Where the Changes Did Not Affect Section 101 Eligibility - In SAP AMERICA, Inc. v. InvestPic, LLC, Appeal No. 2017-2081, the...more

Sunstein LLP

Section 101 Gains a Toehold in IPRs

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Inter partes reviews (IPR) are limited by statute to grounds of invalidity under 35 U.S.C. §§ 102 (novelty requirement) and 103 (nonobviousness requirement) and on the basis of prior art patents or printed publications....more

Foley & Lardner LLP

When the Words of a Claim Don’t Matter - Federal Circuit Extends Printed Matter Doctrine to Information and Mental Steps in...

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In Praxair Distribution, Inc. v. Mallinckrodt Hospital Products IP Ltd., 890 F.3d 1024 (Fed. Cir. 2018), the Federal Circuit affirmed the PTAB’s application of the rarely relied on “printed matter doctrine” to conclude that...more

Foley & Lardner LLP

Federal Circuit Finds INOMax Mental Steps Obvious As Ineligible Printed Matter

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In Praxair Distrib., Inc. v. Mallinckrodt Hospital Prods. IP Ltd., the Federal Circuit found that the printed matter doctrine applies equally to physically embodied information and mental steps, and can be invoked in the...more

Schwabe, Williamson & Wyatt PC

Fresh From the Bench: Latest Federal Circuit Court Cases

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Praxair Distribution, Inc. v. Mallinckrodt Hospital Products IP Ltd., Appeal Nos. 2016-2616, -2656 (Fed. Cir. May 16, 2018) - In an appeal from a inter partes review, the Federal Circuit reviewed a PTAB obviousness...more

Jones Day

Change Is Coming (Maybe): Reviewing the AIA Reviews and 101 “Clarity”

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On April 18, 2018, the Director of the USPTO Andrei Iancu informed the U.S. Senate Judiciary Committee that he aims to propose changes to America Invents Act reviews by this summer 2018. The Director told the Committee that...more

Knobbe Martens

Will Courts Consider Evidence of Patent Eligibility?

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Patent enforcement by Texas-based DataTreasury Corp. (“DataTreasury”) was a key motivation for the creation of Covered Business Method Review (“CBM”) proceedings. Senator Charles Schumer of New York, referring to...more

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