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Patent Examinations Section 101 Patent Litigation

Kilpatrick

5 Key Takeaways | Alice at 10: A Section 101 Update

Kilpatrick on

It’s been 10 years since Alice was decided. Kilpatrick’s Steve Borgman and Andrew Saul recently presented at the 29th Annual Advanced Patent Law Institute in Austin, Texas, on recent cases and trends in the courts and the...more

McDonnell Boehnen Hulbert & Berghoff LLP

Congress’ latest attempt to address subject matter eligibility

Through the vicissitudes of the continuing chaos of subject matter eligibility, Senators Coons and Tillis have been steadfast in attempting to provide a legislative solution. They chaired a series of Congressional hearings in...more

McDonnell Boehnen Hulbert & Berghoff LLP

Senators Tillis and Coons Once More Attempt to Fix Patent Eligibility

Patent eligibility is broken. The only semi-cogent arguments that I have ever heard in support of the status quo is that the U.S. Patent and Trademark Office issues too many broad, vague patents, and that 35 U.S.C. § 101...more

McDonnell Boehnen Hulbert & Berghoff LLP

PTAB Remains Hostile to Section 101 Appeals

There is ample evidence that patent examiner allowance rates vary dramatically from examiner to examiner and art unit to art unit.[1]  This has resulted in the general understanding that there are "easy" examiners and "tough"...more

McDonnell Boehnen Hulbert & Berghoff LLP

Think Twice About Appealing a § 101 Rejection to the PTAB

The U.S. Patent and Trademark Office (USPTO) established its Patent Trial and Appeal Board (PTAB) in September 2012.  As mandated by the America Invents Act, the PTAB conducts administrative trials, such as inter partes...more

McDonnell Boehnen Hulbert & Berghoff LLP

Silly § 102 Tricks

With further apologies to David Letterman - Almost two years ago we published Stupid § 101 Tricks, an article discussing some of the annoying, improper, and yet disappointingly common patterns seen in rejection and...more

McDonnell Boehnen Hulbert & Berghoff LLP

Senator Tillis' Patent Eligibility Reform Proposal: A Biopharma Perspective

Senator Thom Tillis (R-NC) introduced S. 4734, entitled "A Bill to amend Title 35, U.S. Code, to address matters relating to patent subject matter eligibility, and for other purposes" last night, as was discussed in an...more

McDonnell Boehnen Hulbert & Berghoff LLP

USPTO Director's Blog Post Extolling Certainty in § 101 Determinations Paradoxically Increases Uncertainty

Kathi Vidal, Under Secretary of Commerce for Intellectual Property and Director of the U.S. Patent and Trademark Office (at right) released a blog post on the USPTO's Director's Blog on Monday addressing the fraught subject...more

McDonnell Boehnen Hulbert & Berghoff LLP

In re Board of Trustees of the Leland Stanford Junior University (Fed. Cir. 2021)

The Federal Circuit affirmed a decision by the U.S. Patent and Trademark Office Patent Trial and Appeal Board (PTAB) rejecting claims for failure to satisfy the subject matter eligibility standard under 35 U.S.C. § 101, in ex...more

McDonnell Boehnen Hulbert & Berghoff LLP

Gree, Inc. v. Supercell Oy (Fed. Cir. 2020)

One would think that inventions relating to computer game software would easily meet the requirements for patent eligibility, as these inventions fundamentally involve technological processes and require computer...more

McDonnell Boehnen Hulbert & Berghoff LLP

Stupid § 101 Tricks

If we have learned anything from the last six-and-a-half years of patent eligibility jurisprudence, it is that nobody knows what's going on. Subject matter eligibility is a fundamental requirement for an invention to be...more

Mintz - Intellectual Property Viewpoints

Recent USPTO Report Suggests Greater Consistency and Predictability in Patent-Ineligible Subject Matter Rejections

Last week, the US Patent and Trademark Office (“USPTO”) released a report detailing its findings on how the U.S. Supreme Court decision in Alice Corp. v. CLS Bank International, as well as subsequent USPTO guidance on 35...more

Knobbe Martens

Claims Including Computer Speed and Efficiency Improvements May Still Be Ineligible Under Section 101

Knobbe Martens on

CUSTOMEDIA TECHNOLOGIES, LLC V. DISH NETWORK CORPORATION, DISH NETWORK LLC. Before Prost, Dyk, and Moore. Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board. Summary: Claims...more

Holland & Knight LLP

USPTO Updates Its 2019 Patent Eligibility Guidelines

Holland & Knight LLP on

Late last week, the United States Patent and Trademark Office (USPTO) published updated guidance to patent examiners for evaluating subject matter eligibility. This update was in response to comments received in response to...more

Holland & Knight LLP

The PTAB Provides Guidance on Patent Eligibility Framework

Holland & Knight LLP on

Earlier this month, the Patent Trial and Appeal Board (PTAB) designated as informative four of its decisions applying the newest patent eligibility framework. This new eligibility framework, based on the United States Patent...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - April 2019

Grunenthal GMBH v. Alkem Labs., Ltd., Appeal Nos. 2017-1153, -2048, -2049, -2050 (Fed. Cir. Mar. 28, 2019) - This week the Federal Circuit issued a rare decision concerning the utility doctrine in patent law. In general,...more

Knobbe Martens

In Re: Marco Guldenaar Holdings B.V.

Knobbe Martens on

Federal Circuit Summaries - Before Chen, Mayer, and Bryson. Appeal from the Patent Trial and Appeal Board. Summary: Claims directed to the abstract idea of rules for playing a dice game are not transformed into patent...more

Fenwick & West LLP

Still No Path Out of the 101 Swamp?

Fenwick & West LLP on

Much ink has been spilled in recent times on the standards for, and outcomes of, patent eligibility questions under § 101. Consider, for example, USPTO Director Andrei Iancu’s remarks in September about providing additional...more

Kilpatrick

Berkheimer Increases Applicants’ Ability to Overcome Subject Matter Eligibly Rejections

Kilpatrick on

Subject matter eligibility rejections under 35 U.S.C. §101 have plagued applicants in numerous technology fields since the Supreme Court’s Alice Corp. v. CLS Bank International decision in 2014. Over the next few years, a...more

Schwabe, Williamson & Wyatt PC

Latest Federal Circuit Court Cases - June 2018

Aatrix Software, Inc. v. Green Shades Software, Inc., Appeal No. 2017-1452 (Fed. Cir. May 31, 2018) and Berkheimer v. HP Inc., Appeal No. 2017-1437 (Fed. Cir. May 31, 2018) - In these two, published, precedential orders...more

Schwabe, Williamson & Wyatt PC

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

Fenwick & West LLP

Update on Patent Eligibility Decisions for First Quarter, 2016

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Here are the updated numbers for #Alicestorm in the first quarter of 2016. First, the overall trend of decisions...more

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