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Patents Bascom Global v AT&T Mobility

Dunlap Bennett & Ludwig PLLC

§101 Reform Bill’s Murky Language Might Do the Opposite of What It Intends, Killing Patents Upheld in Court Decisions

The law of unintended consequences provides that actions “always have effects that are unanticipated or unintended.” This folk wisdom holds true when it comes to the Patent Eligibility Restoration Act of 2022....more

McDermott Will & Emery

No Bones About It: McRO II Holds Patent Not Invalid and Not Infringed

The US Court of Appeals for the Federal Circuit vacated a summary judgment finding an asserted patent invalid for lack of enablement while affirming the holding of non-infringement. McRO, Inc. v. Bandai Namco Games America...more

Knobbe Martens

Patent Eligibility of Computer Implemented Inventions in the US

Knobbe Martens on

At a recent Knobbe Martens and Bugnion SpA Seminar, Vlad Teplitskiy presented on patentable subject matter in the U.S. ...more

Schwabe, Williamson & Wyatt PC

2017 Supreme Court and Precedential Patent Cases From the Federal Circuit, With Some Significant Cases from 2016

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

Mintz

Software Is Still Patent Eligible

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In recent years, software patents have come under fire from legislation (the American Invents Act) that has generally made patents easier to invalidate, and from court decisions (the Supreme Court’s decision in Alice v. CLS...more

McDonnell Boehnen Hulbert & Berghoff LLP

USPTO Publishes Business Method Subject Matter Eligibility Examples: Part II

As discussed in a previous article, the U.S. Patent and Trademark Office recently published new subject matter eligibility examples directed to the abstract idea exception to patentability under 35 U.S.C. § 101. These...more

McDonnell Boehnen Hulbert & Berghoff LLP

USPTO Publishes Business Method Subject Matter Eligibility Examples: Part I

About a week before the holidays, the U.S. Patent and Trademark Office quietly published a trio of new subject matter eligibility examples directed to the abstract idea exception to patentability. These are the latest in a...more

Burr & Forman

Improving Patent Eligibility for Your Software Despite the Prohibition of Patent Protection for "Abstract Ideas"

Burr & Forman on

As technologies advance, the Patent Office (as well as the Nation’s courts) must utilize Section 101 of the Patent Act to place reasonable limitations on patent eligibility to ensure that our patent system balances the...more

Knobbe Martens

Post-Alice Section 101 Eligibility Roadmap for Software Inventions

Knobbe Martens on

In the wake of Alice the waters of eligibility under section 101 can be challenging to navigate, and particularly so for those seeking to obtain or enforce software patents. A two-part test for eligibility is the standard,...more

McDermott Will & Emery

PTO Releases New Memo on Recent Subject Matter Eligibility Decisions

McDermott Will & Emery on

In a memorandum to patent examiners dated November 2, 2016, the US Patent and Trademark Office (PTO) addressed recent subject matter eligibility decisions. The memorandum was spurred by two precedential US Court of Appeals...more

McDonnell Boehnen Hulbert & Berghoff LLP

Guest Post -- USPTO Charting the Way for Subject Matter Eligibility

On November 2, 2016, the United States Patent and Trademark Office (USPTO) issued an important and forward-looking memo on Recent Subject Matter Eligibility Decisions for patent applications that offered guidance for drafting...more

Mintz - Intellectual Property Viewpoints

Intellectual Ventures Petitions Federal Circuit for Full Court Review

Earlier this week, Intellectual Ventures (IV) petitioned the full Federal Circuit to review the panel opinion in Intellectual Ventures v. Symantec, which invalidated two of its patents under section 101. Both patents—the...more

Mintz - Intellectual Property Viewpoints

The USPTO’s Latest Memo on Subject Matter Eligibility Provides Hope For Modern Innovators

On November 2, 2016 the United States Patent and Trademark Office (USPTO) issued a memo to Examiners on its stance on subject matter eligibility in response to the McRO and BASCOM Federal Circuit decisions, previously...more

McDonnell Boehnen Hulbert & Berghoff LLP

USPTO Issues Memorandum on Recent Subject Matter Eligibility Decisions

On November 2nd, the U.S. Patent and Trademark Office published an update to its guidance regarding the examination of claims with respect to the patent-eligibility requirements of 35 U.S.C. § 101 (see Memorandum entitled...more

McDonnell Boehnen Hulbert & Berghoff LLP

Synopsis, Inc. v. Mentor Graphics Corp. (Fed. Cir. 2016)

Synopsys brought a patent infringement action against Mentor Graphics in the Northern District of California, alleging infringement of various claims of U.S. Patent Nos. 5,530,841, 5,680,318, 5,748,488, and 6,836,420. Claim...more

McDermott Will & Emery

Federal Circuit Sort of Clarifies the Waters of Patent Eligibility

McDermott Will & Emery on

In recent cases addressing patent eligibility of software patent claims, the US Court of Appeals for the Federal Circuit reached different conclusions in different cases, based on the Alice two-step inquiry. Most notable was...more

McDonnell Boehnen Hulbert & Berghoff LLP

Intellectual Ventures I LLC v. Symantec Corp. -- Judge Mayer on the First Amendment

Decided September 30th, this Federal Circuit case is already making waves. The majority opinion seems to be at tension with the Court's outcome in BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC, but the real...more

McDonnell Boehnen Hulbert & Berghoff LLP

September Was a Good Month for Patent Eligibility in the District Courts

Anecdotally, there seems to be a loosening up regarding the application of § 101 by the District Courts. The 2014 Supreme Court decision in Alice Corp. v. CLS Bank Int'l has been referred to as sounding a death knell for...more

McDonnell Boehnen Hulbert & Berghoff LLP

Intellectual Ventures I LLC v. Symantec Corp. (Fed. Cir. 2016) - Just When You Thought the Federal Circuit Was Softening...

Intellectual Ventures I LLC ("IV") sued Symantec Corp. and Trend Micro (defendants) for infringement of various claims of three U.S. Patents (Nos. 6,460,050; 6,073,142; and 5,987,610). The District Court held the asserted...more

McDonnell Boehnen Hulbert & Berghoff LLP

Core Wireless Licensing S.A.R.L. v. LG Electronics, Inc. (E.D. Tex. 2016)

Core Wireless Licensing brought an action against LG Electronics in the Eastern District of Texas. Core contended that LG infringed claim 21 of its U.S. Patent No. 7,804,850. LG moved for summary judgment on the grounds...more

McDermott Will & Emery

Specific, Discrete Implementation of Abstract Idea Is Patent Eligible

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Once again addressing patent eligibility of software patent claims, the US Court of Appeals for the Federal Circuit this time reversed a finding of ineligible subject matter based on the Alice step two inventive concept...more

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