News & Analysis as of September 19, 2024

Patent-Eligible Subject Matter › Preemption

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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 -

Patent Directed to Method of Payment Processing in Sales Transactions Found Abstract

Holland & Knight LLP on 5/20/2022

AuthWallet asserted a patent directed to methods and systems for processing financial transaction data against Block. Specifically, the claims outline a method for processing financial transaction data using authorization...more

Rough Ride for Split Federal Circuit on Eligibility of Driveshaft Vibration Reduction Method

Fenwick & West LLP on 10/11/2019

Sharply differing majority and dissenting opinions in the Federal Circuit’s recent American Axle & Manufacturing v. Neapco Holdings decision present yet another case where the Federal Circuit appears to be in need of further...more

Out of Wonderland from Diehr to Aatrix: 3 Steps to Overcoming 101 Rejections

Blank Rome LLP on 5/1/2018

Post-Alice, the United States Patent and Trademark Office (“PTO”) is aggressively rejecting software claims under the Alice two-part test, the parameters of which many examiners are still trying to understand. Not...more

Multi-level Encryption Patent Survives § 101 Challenge in District Court

Knobbe Martens on 7/13/2017

On May 23, 2017, the District Court for the Eastern District of Virginia (“District Court”) denied a motion for summary judgment that the patent claims asserted in a lawsuit brought by TecSec, Inc. (“TecSec”) are invalid...more

Misappropriation Versus the Copyright Act: Round 2 in the Fifth Circuit

Orrick - Trade Secrets Group on 2/10/2017

A few months ago, Trade Secrets Watch covered the GlobeRanger Corp. case in which the Fifth Circuit joined 10 other circuits in determining that the Copyright Act does not preempt state trade secret misappropriation claims....more

The Latest Memorandum from USPTO on Subject Matter Eligibility Provides Additional Guidance for Post-Alice Prosecution

Ward and Smith, P.A. on 12/15/2016

On November 2, 2016, the United States Patent and Trademark Office ("USPTO") issued a memorandum to Examiners ("Memorandum") updating the USPTO's May 2016 subject matter eligibility ("SME") guidance in light of recent...more

USPTO's Patent Subject Matter Eligibility Roundtable on Dec. 5, 2015

Fenwick & West LLP on 12/3/2016

On December 5, 2016 the USPTO will hold its second Patent Subject Matter Eligibility Roundtable to discuss issues in patent eligibility. The USPTO published a list of eighteen questions in anticipation of the event, dealing...more

Intellectual Property Bulletin - Fall 2016

Fenwick & West LLP on 11/17/2016

Mean Girls v. The Right of Publicity: Lessons Learned From the Lohan and Gravano Lawsuits - On September 1, 2016, a New York appellate court ended two closely watched right of publicity lawsuits brought by Lindsay...more

Federal Circuit Judges Disagree Over Contours of Section 101

Knobbe Martens on 11/16/2016

The increased prominence of Section 101 in computer-related patent disputes stems from the Supreme Court case of Alice Corp. v. CLS Bank. Before Alice reached the Supreme Court, ten judges of the Federal Circuit considered...more

Patentee's Day of Thanks Comes in Early November: Assessment of the USPTO's Recent Memorandum Regarding Patent Eligibility for...

Bracewell LLP on 11/11/2016

A recent U.S. Patent & Trademark Office (USPTO) memorandum to the Patent Examining Corps, in combination with precedential cases from the Federal Circuit, provides positive guidance to owners of software patents and patent...more

Federal Circuit Affirms District Court Decision Holding Asserted Software Claims Invalid as Directed to Patent Ineligible Subject...

Akin Gump Strauss Hauer & Feld LLP on 10/31/2016

Plaintiff FairWarning sued defendant Iatric Systems for infringement of U.S. Patent No. 8,578,500 (the “’500 patent”), titled “System and Method of Fraud and Misuse Detection”. The ’500 patent discloses ways to detect fraud...more

Software Patent Eligibility: Preemption Gets Starring Role at the Federal Circuit

Knobbe Martens on 10/4/2016

The Supreme Court decision Alice Corp. v. CLS Bank, 134 S. Ct. 2347 (2014) pronounced, in no uncertain terms, preemption “drives” patent subject matter eligibility and its exceptions. But after Alice, it appeared preemption’s...more

More Lessons From McRo

Fenwick & West LLP on 9/26/2016

My previous blog on McRo focused on the direct aspects of the decision, but there are other excellent points that the court makes and that can be derived from the opinion, and that should play an important role in how the...more

REDUCING RISKS: Court Finds Copyright Act Does Not Preempt State Trade Secret Claim

Orrick - Trade Secrets Group on 9/23/2016

Over the years, it has proven difficult to fit software in any one category of IP protection. And while software’s ability to seemingly transcend patents, copyright, and trade secrets provides software developers and...more

Litigation Alert: The Federal Circuit Forms a Trio of Patent Eligible Subject Matter for Software Methods, Reversing Finding of...

Fenwick & West LLP on 9/21/2016

Last week, the Federal Circuit again addressed when claimed methods involving software are too abstract to be patentable. The Federal Circuit in McRO Inc. v. Bandai Namco Games America held that a combination of steps using...more

McRO v. Bandai: Latest Federal Circuit § 101 Decision Breathes New Life into Software Patents

Nutter McClennen & Fish LLP on 9/19/2016

The Federal Circuit last week handed down the latest in a series of decisions finding computer-implemented inventions to be patent-eligible under 35 U.S.C. § 101. In McRO, Inc. v. Bandai Namco Games America, Inc. et al. (Fed....more

What the Federal Circuit's Decision in McRO v. Bandai Could Mean for Computer-Based Inventions and Other Innovations

Faegre Drinker Biddle & Reath LLP on 9/19/2016

In McRO v. Bandai, the Federal Circuit provides particular guidance and clarity on the issue of preemption, which it describes as “The concern underlying the exceptions to § 101.” In addition to providing another guidepost...more

Federal Circuit is In Sync with Patent’s Validity Under Section 101

Sheppard Mullin Richter & Hampton LLP on 9/16/2016

The Federal Circuit overturned a District Court ruling that a patent directed to automated lip synchronization and manipulation of animated characters’ facial expressions was invalid under Section 101 as being an abstract...more

McRo: Preemption Matters After All

Fenwick & West LLP on 9/16/2016

The Federal Circuit has released its long-awaited opinion in McRo v. Bandai, reversing the lower court’s decision that the claims were ineligible subject matter. McRo’s invention in U.S. 6,307,576 was a method used in 3D...more

Avago Technologies General IP (Singapore) Pte Ltd. v. Asustek Computer, Inc. (N.D. Cal. 2016)

McDonnell Boehnen Hulbert & Berghoff LLP on 5/4/2016

"Quick Look Test" Used by District Court to Support Lack of Preemption and Find Software Claims Patent Eligible - On April 15, 2016, the U.S. District Court for the Northern District of California issued an Order Denying...more

Patentable Subject Matter after Alice: Best Practices for Responding to 35 U.S.C. § 101 Rejections

McDonnell Boehnen Hulbert & Berghoff LLP on 3/5/2016

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

Upcoming Federal Circuit Decision Presents Opportunity for Clarification of Patentable Subject Matter

BakerHostetler on 2/26/2016

Since Alice, consistently defining the bounds of statutory subject matter in computer arts confounds even the most experienced attorneys. E-commerce software combining visual elements of multiple parties’ websites is patent...more

Federal Circuit Denies Rehearing En Banc in Ariosa v. Sequenom

McDonnell Boehnen Hulbert & Berghoff LLP on 12/3/2015

The Federal Circuit declined to rehear en banc the panel decision in Ariosa v. Sequenom. This decision was not surprising but what may be surprising was that only three judges wrote opinions, one in dissent (Judge Newman)...more

A legal look at Patent Trial and Appeal Board decisions and trends: Image Scanning Patent Found Patent Subject Matter Eligible By...

Seyfarth Shaw LLP on 12/2/2015

Intellectual Ventures I, LLC and Intellectual Ventures II, LLC sued multiple Canon business entities in the United States District Court for the District of Delaware alleging infringement of nine patents, including patent no....more

Litigation Alert: Federal Circuit’s Ariosa Decision, Good Chance for Rehearing En Banc

Fenwick & West LLP on 11/5/2015

In June of this year, the Federal Circuit panel in Ariosa Diagnostics, Inc. v. Sequenom, Inc. invalidated a patent on the grounds of patent-ineligible subject matter. 788 F.3d 1371 (Fed. Cir. 2015). While the case is one of...more

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Patent-Eligible Subject Matter › Preemption

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