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Preemption Abstract Ideas

Holland & Knight LLP

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

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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

Holland & Knight LLP

D. Delaware Invalidates Patent Directed to Onsite Data Backup; Discusses Role of Evidence, USPTO and Preemption

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The District of Delaware recently found a patent directed to onsite data backup to be abstract and ineligible for patent protection. The court's discussion went beyond the standard Alice inquiry, and touched on the roles of...more

Blank Rome LLP

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

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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

Knobbe Martens

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

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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

Fenwick & West LLP

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

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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

Fenwick & West LLP

Intellectual Property Bulletin - Fall 2016

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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

Knobbe Martens

Federal Circuit Judges Disagree Over Contours of Section 101

Knobbe Martens on

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

Fenwick & West LLP

More Lessons From McRo

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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

Fenwick & West LLP

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

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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

Nutter McClennen & Fish LLP

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

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

Sheppard Mullin Richter & Hampton LLP

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

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

Fenwick & West LLP

McRo: Preemption Matters After All

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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

McDonnell Boehnen Hulbert & Berghoff LLP

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

McDonnell Boehnen Hulbert & Berghoff LLP

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

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

Morris James LLP

Patent Is Invalid Under Alice

Morris James LLP on

The patent-in-suit is directed to redeeming discount offers by associating a machine-readable code with identifying items to be offered at a discount. Defendant asserts that the technology is patent ineligible under Alice....more

McDonnell Boehnen Hulbert & Berghoff LLP

Federal Circuit Denies Rehearing En Banc in Ariosa v. Sequenom

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

Fenwick & West LLP

Overview of Comments on the USPTO's July 2015 Update to the Interim Examination Guidance

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In late July, the USPTO issued its July 2015 Update to the 2014 Interim Section 101 Patent Eligibility Guidance (IEG). The July 2015 Update addresses a number of the issues and concerns raised in the public comments to the...more

Burns & Levinson LLP

One Year After Alice

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It has been more than a year since the Supreme Court issued its decision in Alice Corp. Pty, Ltd. v. CLS Bank International, 134 S. Ct. 2347 (2014). Although a number of software patents have been invalidated for reciting...more

McDermott Will & Emery

USPTO Releases Update on Subject-Matter Eligibility: July 2015 Update on Subject Matter Eligibility

On July 30, 2015, the U.S. Patent and Trademark Office (USPTO) released an update to the 2014 Interim Guidance on Patent Subject Matter Eligibility (the interim guidelines) (See IP Update, Vol. 17, No. 12.) The update is...more

McDonnell Boehnen Hulbert & Berghoff LLP

July 2015 Update on Subject Matter Eligibility

On July 30, 2015, the U.S. Patent and Trademark Office updated its subject matter eligibility guidance ("Eligibility Update"). This update provides recommendations and resources for examiners in addition to those in the...more

Foley & Lardner LLP

USPTO Issues July 2015 Updated Guidance on Subject Matter Eligibility Analysis

Foley & Lardner LLP on

On July 30, 2015, the United States Patent and Trademark Office (USPTO) issued updated guidance regarding subject matter eligibility analysis to address six major themes from comments received in response to the 2014 Interim...more

Fenwick & West LLP

The One Year Anniversary: The Aftermath of #AliceStorm

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It's been one year since the Supreme Court's decision in Alice Corp. v. CLS Bank. On its face the opinion was relatively conservative, cautioning courts to "tread carefully" before invalidating patents, and emphasizing that...more

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