News & Analysis as of

Section 101 Patents Preemption

McDonnell Boehnen Hulbert & Berghoff LLP

The Preemption Doctrine: A Necessary Course Correction After Recentive v. Fox

The landscape of patent law for artificial intelligence (AI) and machine learning (ML) innovations has become fraught with uncertainty. The U.S. Court of Appeals for the Federal Circuit's precedential opinion in Recentive...more

Fenwick & West LLP

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

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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

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

Blank Rome LLP on

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

Knobbe Martens on

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

Bracewell LLP

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

Bracewell LLP on

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

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...

Fenwick & West LLP on

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

Faegre Drinker Biddle & Reath LLP

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

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

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

Fenwick & West LLP

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

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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

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

Morris James LLP

Banking software patent is found to be invalid

Morris James LLP on

Robinson, J. Defendant’s motion for summary judgment of invalidity is granted; plaintiff’s motion for validity is denied. Defendant’s motion for summary judgment of non-infringement is granted; plaintiff’s motion for...more

Robins Kaplan LLP

After Alice: Patent Eligibility Considerations for All Technology Inventors

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The technological advances of post-WWII America spurred the growth of patenting of modern technology. From chemicals to useful bacteria, and from petroleum derivatives to computer chips, many of the inventions that are now a...more

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