Podcast: Patentable Subject Matter in 2019
Drafting Software Patents In A Post-Alice World
Polsinelli Podcasts - Hear How the SCOTUS Ruling May Impact Patent-Eligible Subject Matter for Software
Every month, Erise’s patent attorneys review the latest inter partes review cases and news to bring you the stories that you should know about: Federal Circuit Affirms PTAB’s Analogous Art Finding - As IP Watchdog...more
The Federal Circuit Court of Appeals has struck down many patents on the grounds that they are invalid as directed to an abstract idea, relying on the Supreme Court’s Alice decision. In In re Elbaum (Fed. Cir. 12/20/2023)...more
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
While there may have been no public tricks or treats from the Federal Circuit last week, the Court still managed to issue a range of precedential and non-precedential decisions. Below we provide our usual weekly statistics...more
CosmoKey asserted U.S. Patent No. 9,246,903 against Duo in the U.S. District Court for the District of Delaware, alleging infringement. The District Court found the patent's claims to be ineligible under 35 U.S.C. § 101...more
Diamond v. Diehr, decided by the Supreme Court in 1981, seemed to establish a bedrock principle of statutory construction for patent law. The Court stated that "[t]he 'novelty' of any element or steps in a process, or even...more
Keniece Gray, Morrison & Foerster summer associate, co-authored this post. We could have a new Federal Circuit judge today (achieving gender parity on the Court). Last week, the Senate invoked cloture (by a 63-34 vote) on...more
Stanford University applied for a U.S. patent for statistical methods of predicting haplotype phase. In 2019, the Patent Trial and Appeal Board rejected the application as ineligible subject matter. Last week, a panel of the...more
As previously reported on March 17, 2021, the Federal Circuit affirmed the Patent Trial and Appeal Board (PTAB) decision that the rejected claims of a patent application owned by The Board of Trustees of Leland Stanford...more
A computer does just three things: receives information in the form of bits, transforms this information, and provides output based on the information as transformed. The receiving may take place by way of various types of...more
In the case of In Re: SARADA MOHAPATRA, Appellant, No. 2020-1935, 2021 WL 408755 (Fed. Cir. Feb. 5, 2021), Sarada Mohapatra sought to overturn a decision of the Patent Trial and Appeal Board (PTAB), holding that his patent...more
This article is Part II of a study on the patent eligibility of graphical user interfaces. Part I was published yesterday. We continue from where we left off, with overviews of a handful of Federal Circuit § 101 decisions...more
Earlier this month, the U.S. Court of Appeals for the Federal Circuit affirmed the Patent Trial and Appeal Board's (PTAB) rejection of a patent application that described a method for weight loss that "removes hunger from...more
The U.S. Patent and Trademark Office released Revised Patent Subject Matter Eligibility Guidance (PEG) in January 2019, then released an update (PEG Update) in October 2019 to clarify certain issues in the PEG. The PEG and...more
Earlier this year, the United States Patent and Trademark Office (USPTO or “the Office”) published the 2019 Revised Subject Matter Eligibility Guidance (2019 PEG), which set forth newly revised procedures to be used by USPTO...more
Partner Mauricio Uribe hosted a webinar presenting, "Trends and Changes in View of the USPTO's Updated Revised Guidance." Topics Include: • Summary of the October 2019 Update to the Revised Guidance •...more
In The Chamberlain Group, Inc. v. Techtronic Industries Co., the Federal Circuit weighed in on the type of subject matter that can be characterized as an “abstract idea” and, thus, not eligible for patent protection....more
The Patent Trial and Appeal Board (PTAB) rejected all pending claims of Mr. Greenstein’s patent application, which was directed to adjusting the amount a person saves and choosing investments with the goal of saving enough...more
Judge Maryellen Noreika (D. Delaware) has been very active since receiving her judicial commission less than a year ago, including already issuing a handful of Section 101 opinions. In Sandbox Software v. 18Birdies, she holds...more
On May 22, 2019, U.S. Senators Thom Tillis (R-NC) and Chris Coons (D-DE), Chair and Ranking Member of the Senate Judiciary Subcommittee on Intellectual Property, and Representative Doug Collins (R-GA-9), Ranking Member of the...more
Q: In light of the Federal Circuit’s ruling in Ancora v. HTC, do you have any tips for patent draftspersons? Steven G. Saunders: The Ancora decision is the latest ruling in a string of post-Alice cases suggesting that...more
In January of 2019, the Patent Office, under Director Iancu, issued new guidance to all USPTO personnel evaluating patent subject matter eligibility under the requirements of 35 USC Section 101. The guidance sought to add...more
Patent stakeholders have recognized the difficulties in consistently predicting what subject matter is patent-eligible, given the inconsistent and varying manner in which the Alice/Mayo test has been applied over the years....more
On January 7, 2019, the U.S. Patent and Trademark Office (USPTO) issued new guidance on Patent Eligibility, seeking to improve the overall clarity, consistency, and predictability of patent eligibility analysis performed by...more
New guidance may lead to fewer patent applications rejected on eligibility grounds - Patentable subject matter eligibility under 35 U.S.C § 101 has been the subject of much attention since the Supreme Court articulated the...more