News & Analysis as of

Mayo v. Prometheus CLS Bank v Alice Corp Patent-Eligible Subject Matter

BakerHostetler

The Federal Circuit Once Again Shows Its Willingness to Reject Conclusory Allegations of Inventiveness

BakerHostetler on

The Federal Circuit recently affirmed a district court’s grant of Zillow Group Inc.’s (“Zillow”) motion to dismiss under Federal Rule of Civil Procedure 12(b)(6) because the two International Business Machines Corporation...more

Morrison & Foerster LLP - Federal Circuitry

Last Week In The Federal Circuit (October 17 – October 21): Mapping The Section 101 Landscape

As we’ve noted, the Supreme Court is once again considering whether to take up patent eligibility: it recently CVSGed two more Section 101 cases. While we wait for the government’s views, the Federal Circuit will continue...more

Seyfarth Shaw LLP

Ambiguity Begets Ambiguity: A Legislative Attempt to Bring Clarity to Patentable Subject Matter May Bring More Confusion

Seyfarth Shaw LLP on

On August 2, 2022, Sen. T. Tillis introduced the Patent Eligibility Restoration Act (S.4734) in an effort to clarify which inventions are actually patentable and to codify those that are not. Since the Supreme Court handed...more

McDonnell Boehnen Hulbert & Berghoff LLP

The EFF is Patently Wrong

The Electronic Frontier Foundation (EFF) is at it again, gaslighting the public in its ongoing crusade against patents.  While the EFF does perform some commendable work, mostly in the areas of individual privacy rights, its...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

AEON Law

Patent Poetry: Big Tech Companies and Startups Disagree about Impact of Patent Law

AEON Law on

The US Patent and Trademark Office (USPTO) recently issued a study entitled “Patent eligible subject matter: Public views on the current jurisprudence in the United States.” The report was prepared in response to a...more

Weintraub Tobin

Will the Supreme Court Unravel the Patent-Eligibility Tangle?

Weintraub Tobin on

Since the Alice v. CLS Bank and Mayo v. Prometheus decisions, district courts and the Court of Appeals for the Federal Circuit has struggled to determine and navigate the boundary between what is and what is not...more

McDonnell Boehnen Hulbert & Berghoff LLP

CardioNet, LLC v. InfoBionic, Inc. (Fed. Cir. 2021)

The Federal Circuit continued its stringent (if misguided) application of the scope of subject matter eligibility by invalidating claims asserted in CardioNet, LLC v. InfoBionic, Inc....more

Weintraub Tobin

USPTO Requests Input On Patent Eligibility From Critical Sectors Impacted By Current Law

Weintraub Tobin on

In recent years, the Supreme Court has decided a number of cases, including Bilski v. Kappos, Mayo Collaborative Servs. v. Prometheus Labs., Ass’n for Molecular Pathology v. Myriad, and Alice Corp. v. CLS Bank Int’l, which...more

McDermott Will & Emery

Diehr Alice, Yu are Superimposing Novelty onto Patent Eligibility. Love, Newman.

McDermott Will & Emery on

The US Court of Appeals for the Federal Circuit affirmed the district court’s grant of a Rule 12(b)(6) motion to dismiss on the basis that, under the two-step Alice analysis, the patent claims—directed to a digital...more

McDonnell Boehnen Hulbert & Berghoff LLP

An Analytic Approach to Patent Eligibility

The transcendental conundrum in patent law in these times is how to overcome the misinterpretation of the Supreme Court's decisions on patent eligibility law by district courts and the Federal Circuit.  That these courts...more

Haug Partners LLP

Will the Newest American Axle Case Create a Panel-Dependent Body of Law or Provoke the Supreme Court to Take Action? How the...

Haug Partners LLP on

On October 23, 2020, in a remarkable order demonstrating how a “bitterly divided” Federal Circuit views post-Alice patent eligibility jurisprudence, the court denied the motion of American Axle & Manufacturing, Inc. (“AAM”)...more

Sunstein LLP

The Ongoing Saga of American Axle and Patent Eligibility

Sunstein LLP on

On July 31, the Federal Circuit withdrew its opinion in American Axle & Manufacturing, Inc. v. Neapco Holdings LLC and provided a substitute opinion. The court’s goal was to clarify why a claim directed to manufacturing a...more

Knobbe Martens

Natural Law and Nothing More

Knobbe Martens on

AMERICAN AXLE & MANUFACTURING v. NEAPCO HOLDINGS LLC - Before Dyk, Moore, and Taranto. Appeal from the District Court for the District of Delaware. Summary: Claims directed to a law of nature, without more, may not be...more

Troutman Pepper

Federal Circuit Review - Issue 274

Troutman Pepper on

274-1 Federal Circuit Revisits American Axle & Manufacturing; Case Remanded to Determine if One of the “Hooke’s Law” Claims is Ineligible under Other Theories of Eligibility - The Federal Circuit recently issued a modified...more

McDonnell Boehnen Hulbert & Berghoff LLP

American Axle & Mfg. v. Neapco Holdings LLC (Fed. Cir. 2019)

Federal Circuit (Again) Hands Down Revised Opinion in Response to Petition for Rehearing - Recently the Federal Circuit has begun a practice of withdrawing an original opinion and handing down a substitute opinion in...more

McDonnell Boehnen Hulbert & Berghoff LLP

The Three Properties of Patent-Eligibility: An Empirical Study

Patent eligibility is a bit of a mess these days.  Ever since the Supreme Court handed down the Alice v. CLS Bank decision six years ago, the distinction between what might be subject matter that can be patented and what is...more

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

Patent Prosecution Tool Kit: Update on Patent Subject Matter Eligibility & Abstract Ideas

Since the U.S. Supreme Court’s decision in Alice v. CLS Bank, patent stakeholders have faced many difficulties navigating the world of patent-eligibility. Through many Federal Circuit decisions and Guidance given by the U.S....more

Fox Rothschild LLP

Illumina v. Ariosa: Carving Out A New “Bucket” Of Section 101 Patent Eligible Claims

Fox Rothschild LLP on

Case Summary- On March 17, 2020, the Federal Circuit found that patents claiming methods of preparing an extracellular fraction of cell-free DNA that is enriched in fetal DNA were patent eligible and not invalid under 35...more

McDonnell Boehnen Hulbert & Berghoff LLP

Cardionet, LLC v. Infobionic, Inc. (Fed. Cir. 2020)

There are (at least) two ways of looking at the course of the Federal Circuit's evolving interpretation of the Supreme Court's subject matter eligibility jurisprudence under Mayo Collaborative Services v. Prometheus Labs.,...more

Holland & Knight LLP

Section 101 Update: Pharmaceutical and Life Sciences March 2020

Holland & Knight LLP on

This month, the U.S. Court of Appeals for the Federal Circuit has handed down a pair of opinions concerning Section 101 in the field of pharmaceuticals and life sciences. In both cases, the district courts held claims of the...more

McDonnell Boehnen Hulbert & Berghoff LLP

Illumina, Inc. v. Ariosa Diagnostics, Inc. (Fed. Cir. 2020)

The latest Federal Circuit decision on subject matter eligibility in the life sciences came down (by a divided court) in favor of eligibility, in Illumina, Inc. v. Ariosa Diagnostics, Inc.  The claims at issue fell into the...more

McDonnell Boehnen Hulbert & Berghoff LLP

A Step-by-Step Approach to Patent Subject Matter Eligibility Reform

There is a belief in some quarters that the most significant barrier to patent subject matter eligibility reform is an implacable opposition by companies in the high tech sector because those companies are convinced that the...more

Sheppard Mullin Richter & Hampton LLP

Intellectual Property Outlook: Cases and Trends to Follow in 2020 — Part 2

ART 2: EFFORTS TO CLARIFY PATENT ELIGIBILITY UNDER § 101 - In this four-part series, we take a look forward at the cases, legislation, and other trends that are likely to have a significant impact on intellectual property...more

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

Global Patent Prosecution - December 2019: Prosecuting Bioinformatics Patent Applications in the United States

This article discusses challenges in prosecuting bioinformatics patent applications before the United States Patent and Trademark Office (USPTO). Bioinformatics generally refers to an interdisciplinary field in which computer...more

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