News & Analysis as of

Section 101 Intellectual Property Protection Prior Art

Proskauer - The Patent Playbook

The Uncertain Future of Section 101: Patent Eligibility in the Wake of Recent Supreme Court (In)Action

Patent eligibility under 35 U.S.C. § 101 remains one of the most hotly contested and unpredictable areas of U.S. patent law. In the years following the Supreme Court’s landmark decisions in Alice Corp. v. CLS Bank Int’l...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

AI IP Year in Review - Patent Law and Generative AI 101

While Artificial Intelligence (AI) solutions, such as predictive AI, have been around for decades, generative AI systems are recent innovations with far reaching implications for patent law. Generative AI, such as ChatGPT,...more

Sheppard Mullin Richter & Hampton LLP

2023 Federal Circuit Case Summaries - Intellectual Property: Year End Report

We are pleased to share Sheppard Mullin’s inaugural “Year in Review” report that collects and reports on most key patent law-related Federal Circuit decisions for 2023. This is a follow up to the quarterly report we...more

Akin Gump Strauss Hauer & Feld LLP

Senior Circuit Judge Issues Split Decision on Patent Eligibility of Claims Directed to Restricting Access to Computer Files

Senior Circuit Judge Bryson of the Federal Circuit, sitting by designation in the District of Delaware, recently granted-in-part and denied-in-part a Rule 12(c) motion for judgment based on patent eligibility under 35 U.S.C....more

Sheppard Mullin Richter & Hampton LLP

Trinity Info Media, LLC, fka Trinity Intel Media, LLC, v. Covalent, Inc., No. 2022-1308 (Fed. Cir. July 14, 2023) (“Opinion”)

This case addresses whether patents relating to methods and systems for connecting users based on their answers to polling questions claim patentable subject matter under 35 U.S.C. § 101...more

Akin Gump Strauss Hauer & Feld LLP

District Court Dismissed Infringement Claims Regarding Online Video Streaming Because the Patents Recited Patent-Ineligible...

Judge Cronan in the Southern District of New York (S.D.N.Y.) recently granted a motion to dismiss Plaintiff’s complaint because the patents-in-suit are directed to patent-ineligible subject matter under 35 U.S.C. § 101. The...more

American Conference Institute (ACI)

[Event] 18th Annual Paragraph IV Disputes - April 19th - 20th, New York, NY

Hosted by ACI, 18th Annual Paragraph IV Disputes Conference returns to New York City for another exciting year with curated programming that not only addresses the hot topics, but also puts them within the context of pre-suit...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2022 Decisions

As part of the recovery from the global COVID-19 pandemic, the U.S. Court of Appeals for the Federal Circuit took steps to return to normal operations. It began requiring live oral arguments in August 2022 and, by November,...more

McDonnell Boehnen Hulbert & Berghoff LLP

Repifi Vendor Logistics, Inc. v. Inellicentrics, Inc. (Fed. Cir. 2022)

There is a theme running through many patent-eligibility disputes that is analogous to baiting-and-switching.  One party has claims that recite an invention.  The other party characterizes those claims at a high level or...more

McDonnell Boehnen Hulbert & Berghoff LLP

USPTO Announces Deferred Subject Matter Eligibility Response Pilot Program

On January 6, 2022, the U.S. Patent and Trademark Office announced a new program with the goal of increasing examiner efficiency.  The Deferred Subject Matter Eligibility Response (DSMER) Pilot Program will launch on February...more

Spilman Thomas & Battle, PLLC

IP 101: Patentable Subject Matter

Under the patent statute, any person who “invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent,” subject to the...more

McDonnell Boehnen Hulbert & Berghoff LLP

Could Alice Be Used to Invalidate Diehr? Of Course It Could

The Supreme Court's Alice Corp. v. CLS Bank Int'l case has been criticized for setting forth a patent eligibility analysis that is unworkably subjective. As a consequence, the validity of particular types of inventions,...more

Kilpatrick

Senators Push for USPTO Pilot Program Requiring Sequenced Approach to Patent Examination and Full Examination of the Grounds of...

Kilpatrick on

As previously reported on March 12, 2021, bipartisan members of the Senate Committee on the Judiciary Subcommittee on Intellectual Property sent a letter to the USPTO’s Commissioner for Patents “regarding the state of patent...more

McDonnell Boehnen Hulbert & Berghoff LLP

On the Patent Eligibility of Graphical User Interfaces: Part I

The evolution of graphical user interfaces parallels the evolution of computing technology itself.  As computers grow more powerful and sophisticated, so does their ability to display cutting-edge representations of...more

Goodwin

ITC 337 Quarterly Insider Q2 2020

Goodwin on

Goodwin’s 337 Quarterly Insider remains the premiere publicly available source for keeping up to date on all meaningful decisions coming out of the Commission. Please find below Goodwin’s insights on the months of April, May,...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - November 2019 #3

PATENT CASE OF THE WEEK - Columbia Sportswear North America, Inc. v. Seirus Innovative Accessories, Inc., Appeal Nos. 2018-1329, et al. (Fed. Cir. Nov. 13, 2019) - This week’s Case of the Week strikes close to home,...more

McDermott Will & Emery

The Door Closes on Abstract Patent Claim

McDermott Will & Emery on

The US Court of Appeals for the Federal Circuit, relying heavily on the specification of the asserted patent, found claims directed to an abstract idea of “wirelessly communicating status information about a system” as patent...more

Fenwick & West LLP

Patent Eligibility Reform in Congress: Updates on the Tillis-Coons Proposal

Fenwick & West LLP on

In April, Senators Chris Coons (D-DE) and Thom Tillis (R-NC) proposed a draft framework for legislation reformulating the standards for determining patent eligibility under § 101 of the Patent Act. The framework largely...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - July 2019 #2

PATENT CASE OF THE WEEK - In re: Global IP Holdings LLC, Appeal No. 2018-1426 (Fed. Cir. July 5, 2019) - The Federal Circuit vacated and remanded a decision of the Patent Trial and Appeal Board (“PTAB”) upholding an...more

Fenwick & West LLP

Intellectual Property Bulletin - Fall 2018

Fenwick & West LLP on

In This Issue - Gender Diversity in Patenting: Current Landscape and Recommendations - The gender gap in patenting is a current challenge that companies face. While this issue seems pervasive, companies and lawyers can...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

Sheppard Mullin Richter & Hampton LLP

Drafting Effective Blockchain Patents

As the number of blockchain-based patents and patent applications increases, more companies have become interested in pursuing these patents. Other companies still think that blockchain-based inventions are not patentable....more

Foley & Lardner LLP

An Economic Test For Patent Eligibility?

Foley & Lardner LLP on

In the non-precedential decision issued in Exergen Corp. v. Kaz USA, Inc., Judge Moore considered the time and money it took to develop the invention at issue when deciding that the claims satisfy the patent eligibility...more

Mintz - Intellectual Property Viewpoints

Berkheimer v. HP Inc.: Whether Claim Elements Are Well-Known, Routine, or Conventional Is a Question of Fact

The Court of Appeals for the Federal Circuit ruled in February that it was wrong for a judge to rule that a patent was ineligible under the Alice standard because there were underlying factual disputes that could not be...more

Fenwick & West LLP

AliceStorm Update February 2017

Fenwick & West LLP on

As many of my readers noticed, I didn't publish any of my own blogs in January and February. As it turned out, I suffered from a peculiar form of seasonal affective disorder (SAD), what I would call SMIAD: Subject Matter...more

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