News & Analysis as of

Software United States Patent and Trademark Office Patent Litigation

Procopio, Cory, Hargreaves & Savitch LLP

Nearshoring is Expected to Increase: What are the Patent Challenges for IP Owners?

The new U.S. administration’s interest in tariffs has put the process of nearshoring front and center. What is nearshoring? That’s when goods are sent into the U.S. tariff-free from a country with a free trade agreement and a...more

Jones Day

Similar Claims in Prior IPR Petition Leads to Denial

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The PTAB recently denied institution of inter partes review of a patent directed to deep packet inspection in software defined networks in Juniper Networks, Inc. v. Orckit Corporation, IPR2024-00895. Applying the General...more

Bradley Arant Boult Cummings LLP

Artificial Intelligence in the Modern Workplace: Safeguarding Source Code Generated with AI Assistance

Generally, an employer owns all rights in software code created by its employee in the scope of their employment. As outlined in the last edition of this series, this general rule typically applies to independent contractors...more

Jones Day

PTAB Doubles Down on Interference Estoppel Issue

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The Patent Trial and Appeal Board held all challenged claims of IGT’s patent unpatentable as obvious over two prior art patents. Zynga Inc. v. IGT, IPR2022-00199-32. In doing so, the PTAB further held that, contrary to...more

Holland & Knight LLP

Revisiting AI Inventorship in Thaler v. Vidal

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The U.S. Court of Appeals for the Federal Circuit recently released its decision in Thaler v. Vidal, No. 21-2347 (Fed. Cir.), the much-discussed case that addresses whether artificial intelligence (AI) software can be listed...more

McDermott Will & Emery

Rage against the Machine: Inventors Must Be Human

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The US Court of Appeals for the Federal Circuit found that an artificial intelligence (AI) software system cannot be listed as an inventor on a patent application because the Patent Act requires an “inventor” to be a natural...more

Holland & Knight LLP

A Bad Day for this Patent Applicant: Travel Itinerary Applications Ineligible Under Section 101

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In the case of In re Bongiorno, No. 2020-1835, 2021 WL 1997454, at *4 (Fed. Cir. May 19, 2021), patent applicant James Bongiorno appealed the Patent Trial and Appeal Board's (PTAB) finding that two of his patent applications...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

Of Technical Tools and Problems: Going Beyond the Two-Prong Alice Test

It is abundantly clear that the Supreme Court's 2014 Alice Corp. v. CLS Bank decision has significantly changed the patent-eligibility landscape for business methods and some types of software inventions. For instance, in...more

Dorsey & Whitney LLP

Federal Circuit Holds District Court Abstractness Analysis Too Abstract for Alice under 35 USC § 101

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Clients in the software space now have stronger arguments for subject matter eligibility, following the Federal Circuit decision in Enfish LLC v. Microsoft Corp. (May 12, 2016). The decision also touches on novelty,...more

Foley & Lardner LLP

Patent Subject Matter Eligibility – Impact on Litigation and Prosecution

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Personalized medicine relies on diagnostic technologies to accurately evaluate a patient’s clinical or genetic signature to guide treatment decisions. Protecting innovation by patenting the diagnostic methods and tools that...more

Carlton Fields

The Status of Business Method Patents

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Business method patents have a checkered history. They were once very much in vogue—numerous such patents issued, and many of them were litigated. Then, about two years ago, Congress enacted a special procedure that made it...more

McDonnell Boehnen Hulbert & Berghoff LLP

MBHB Snippets: Review of Developments in Intellectual Property Law: Spring 2015 - Vol. 13, Issue 2

In This Issue: - After B&B Hardware, What is the Full Scope of Estoppel Arising From a PTAB Decision in District Court Litigation? - When You Don’t Know What You Know: The Role of Unappreciated Inherency in the...more

McDermott Will & Emery

Claims Directed to a Mental Task Are Abstract, but Computerizing an Old Practice Is Not

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Cambridge Assocs., LLC v. Capital Dynamics; PNC Bank et al. v. Secure Axcess - Addressing the issue of patent-eligible subject matter for covered business method (CBM) patents, the U.S. Patent and Trademark Office...more

Carlton Fields

Patent Eligibility of Software

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Last year, a deeply divided set of opinions in an en banc Federal Circuit decision left doubt as to whether software programs would remain eligible for patent protection. Recently, the U.S. Supreme Court brought closure by...more

Fenwick & West LLP

What are the Implications of Alice v. CLS?

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While the Supreme Court’s ruling in Alice v. CLS Bank does not mean that software is ineligible for patent protection, the decision leaves many questions on patent eligibility unanswered. In the second video of a two-part...more

K&L Gates LLP

Abstract Ideas: The Patent Office’s First Take on Alice Corp. v. CLS Bank International

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The United States Patent Office periodically issues guidelines for Examiners, often in response to a recent court decision or new statute. These guidelines do not have the force of law, but nevertheless establish the specific...more

Womble Bond Dickinson

Aftermath of the Supreme Court Ruling regarding Patent-Ineligible Abstract Ideas in Alice v. CLS Bank

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Readers are likely aware that the Supreme Court of the United States has issued a ruling, in Alice Corporation Pty. Ltd. v. CLS Bank International, et al. CERTIORARI TO THE UNITED STATES COURT OF APPEALS FOR THE FEDERAL...more

Faegre Drinker Biddle & Reath LLP

Supreme Court Invalidates Business Method Patents: What you need to know about Alice Corp. v. CLS Bank International

The patent claims at issue required using a computer system as a third-party intermediary to facilitate the exchange of financial obligations between two parties to mitigate settlement risk. The patents included method,...more

Sheppard Mullin Richter & Hampton LLP

USPTO Issues Preliminary Examination Instructions in Light of Alice Corp.

In Alice Corporation Pty. Ltd. v. CLS Bank International, el al., Case No. 13-298 (decided June 19, 2014) (“Alice Corp.”), the Supreme Court unanimously held that the subject patent claims are not patent-eligible under 35...more

Fenwick & West LLP

Intellectual Property Alert: Supreme Court Rules Against Broadly Claimed Software Patents, But Offers No Clear Test for Abstract...

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In a unanimous decision, the Supreme Court held that patent claims directed to abstract ideas do not become patent eligible by the “mere recitation” of generic computer elements. Alice Corp. Pty. Ltd. v. CLS Bank Int’l, No....more

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