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CLS Bank v Alice Corp Patent Litigation United States Patent and Trademark Office

Fish & Richardson

Protecting Innovation in an AI-Powered Age: Patents

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With the advent of generative artificial intelligence (or “GenAI”), many companies have begun to shift their innovation strategies to incorporate and rely on GenAI tools. These tools can be powerful drivers of technological...more

Wolf, Greenfield & Sacks, P.C.

Practical Steps for Patent Prosecutors Addressing 101 Rejections

For many who draft, prosecute, or examine software-based claims, the Supreme Court’s 2014 opinion in Alice Corporation Pty. Ltd. v. CLS Bank International (Alice) kicked off an era of uncertainty and frustration. Based on a...more

Farella Braun + Martel LLP

What Patent Bills Would Mean for Infringement Litigation

Two bills recently introduced in Congress could significantly affect the current patent litigation landscape. The bipartisan bills are titled the Patent Eligibility Restoration Act of 2023 and the Promoting and Respecting...more

McDonnell Boehnen Hulbert & Berghoff LLP

Patent Eligibility Reform Introduced in Congress Once Again: Is the Second Time the Charm?

In an ideal world, patent eligibility would be a simple, clear, and non-controversial inquiry.  After all, the purpose of 35 U.S.C. § 101 is to inform the public which types of inventions are eligible for patenting and which...more

McDermott Will & Emery

PTO Issues Report to Congress on Patent Eligible Subject Matter

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On June 24, 2022, the US Patent & Trademark Office (PTO) issued a report to Congress titled “Patent Eligible Subject Matter: Public Views on the Current Jurisprudence in the United States.” The report comes in response to a...more

McDonnell Boehnen Hulbert & Berghoff LLP

The Supreme Court Sidesteps America's Patent Eligibility Crisis

In an order that is clearly less impactful and damaging than a number of opinions that the Supreme Court has disgorged in the last two weeks, the justices have denied certiorari in American Axle & Mfg. Inc. v. Neapco Holdings...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

McDonnell Boehnen Hulbert & Berghoff LLP

Gree, Inc. v. Supercell Oy (Fed. Cir. 2020)

One would think that inventions relating to computer game software would easily meet the requirements for patent eligibility, as these inventions fundamentally involve technological processes and require computer...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

McDonnell Boehnen Hulbert & Berghoff LLP

Stupid § 101 Tricks

If we have learned anything from the last six-and-a-half years of patent eligibility jurisprudence, it is that nobody knows what's going on. Subject matter eligibility is a fundamental requirement for an invention to be...more

McDonnell Boehnen Hulbert & Berghoff LLP

Electronic Communication Technologies, LLC v. ShoppersChoice.com, LLC (Fed. Cir. 2020)

Electronic Communication Technologies (ECT) sued ShoppersChoice in the Southern District of Florida for allegedly infringing claim 11 of U.S. Patent No. 9,373,261.  The claim recites...more

Mintz - Intellectual Property Viewpoints

Recent USPTO Report Suggests Greater Consistency and Predictability in Patent-Ineligible Subject Matter Rejections

Last week, the US Patent and Trademark Office (“USPTO”) released a report detailing its findings on how the U.S. Supreme Court decision in Alice Corp. v. CLS Bank International, as well as subsequent USPTO guidance on 35...more

Knobbe Martens

Claims Including Computer Speed and Efficiency Improvements May Still Be Ineligible Under Section 101

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CUSTOMEDIA TECHNOLOGIES, LLC V. DISH NETWORK CORPORATION, DISH NETWORK LLC. Before Prost, Dyk, and Moore. Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board. Summary: Claims...more

McDonnell Boehnen Hulbert & Berghoff LLP

What is an Abstract Idea, Anyway?

In 2014's Alice Corp. v. CLS Bank Int'l case, Justice Thomas famously wrote, "we need not labor to delimit the precise contours of the 'abstract ideas' category in this case."  Instead, he found the claims of patentee Alice...more

Benesch

Curver reaffirms Alice Analogue for Design Patents

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In Curver Luxembourg, SARL v. Home Expressions Inc. (No. 2018-2214, Fed. Cir. Sept. 12, 2019), the Federal Circuit affirmed the dismissal of a design patent infringement suit that alleged infringement of U.S. Des. Pat. No....more

Knobbe Martens

Federal Circuit Review - July 2019

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Broad Claim Language and Unpredictability in the Art Lead to Non-Enablement - In Enzo Life Sciences, Inc. v.  Roche Molecular Systems, Inc., Appeal Nos. 2017-2498, -2499, -2545, -2546, broad patent claims were invalid as...more

Womble Bond Dickinson

The Uncertain Future of Patent Eligibility

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For many companies in many industries, patents are an important tool for driving innovation. At the same time, patents limit competition, so that companies must also be wary of their competitors’ patent portfolios. The result...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

McDermott Will & Emery

Abstract Idea Analysis Not Always So Concrete

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A divided panel of the US Court of Appeals for the Federal Circuit affirmed the district court, finding that a claimed method for monitoring and analyzing a computer network was directed to an improvement in computer...more

Knobbe Martens

Legislators Propose “Section 101 Reform”

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Yesterday Democrat and Republican legislators from both the Senate and the House of Representatives released a one page outline of a proposal to change the law of patent eligibility. The legislators supporting this proposal...more

Kilpatrick

Years After Alice: Eligibility-Rejections Outflow from a Different Part of the USPTO

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A concise set of statutes dictate the characteristics that a patent application must have to be allowed to grant as a patent. Patent examiners are tasked with reviewing individual applications to determine whether these...more

Kilpatrick

Berkheimer Increases Applicants’ Ability to Overcome Subject Matter Eligibly Rejections

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Subject matter eligibility rejections under 35 U.S.C. §101 have plagued applicants in numerous technology fields since the Supreme Court’s Alice Corp. v. CLS Bank International decision in 2014. Over the next few years, a...more

Foley & Lardner LLP

Federal Circuit Finds Detection Claims Invalid Under 101

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In Roche Molecular Systems, Inc. v. Cepheid, the Federal Circuit affirmed the summary judgment decision of the U.S. District Court for the Northern District of California that held nucleotide primer claims and detection...more

Blank Rome LLP

Out of Wonderland from Diehr to Aatrix: Three Steps to Overcoming 101 Rejections – Part II

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This second part of a two-part article discusses four decisions by the U.S. Court of Appeals for the Federal Circuit finding subject matter eligibility under step 2 of Alice Corporation Pty. Ltd. v. CLS Bank International, et...more

K&L Gates LLP

Implementing Berkheimer: Shifting the Examination Burden at the USPTO

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In the Supreme Court’s 2014 decision in Alice Corp. v. CLS Bank Int’l, the Supreme Court cemented a two-step framework for determining whether a patent claim is ineligible for patenting under §101. The first step assesses...more

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