News & Analysis as of

Patent Litigation Patent-Eligible Subject Matter

Amundsen Davis LLC

Is the Patent Eligibility Restoration Act a Good Thing? Probably Not.

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On September 6, 2024, House Representatives Kevin Kiley (R-CA) and Scott Peters (D-CA) introduced the Patent Eligibility Restoration Act (PERA) to Congress. Senators Thom Tillis (R-NC) and Chris Coons (D-DE) introduced an...more

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

Historical Development of Substantial New Question contrasted with the new Section 325(d) Criteria

Ex parte reexamination proceedings have been available for over 40 years. The reexamination statutes, Public Law 96-517 of July 1, 1981 (also known as the Bayh-Dole Act), included 35 U.S.C. § 303, which codified, in part,...more

A&O Shearman

Federal Circuit Affirms PTAB Unpatentability Findings Regarding Network Security Patents

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On October 31, 2024, the U.S. Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion affirming the final written decisions of the Patent Trial and Appeal Board (“PTAB”) finding that two of Centripetal Network,...more

McDermott Will & Emery

Legal Lens on the Unified Patent Court | October 2024

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The Unified Patent Court (UPC) is revolutionizing the way patents are enforced in Europe, and McDermott’s intellectual property (IP) team is here to help you navigate this dynamic landscape. Our Legal Lens on the Unified...more

Hudnell Law Group

The Hidden Hurdles Of Section 101 Eligibility Determinations

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On August 6, 2024, in Mobile Acuity Ltd. v Blippar Ltd., __F.4th__; 2024 U.S. App. LEXIS 17573* (Fed. Cir. Aug. 6, 2024), the Federal Circuit upheld the Rule 12 dismissal of Mobile Acuity’s patent infringement lawsuit against...more

Vedder Price

[Event] 2024 Intellectual Property Seminar - October 15th, Chicago, IL

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Please join Vedder Price’s Intellectual Property group for a half-day complimentary seminar designed for in-house counsel. Topics will focus on real issues faced by IP holders, and attendees will leave with practical advice...more

Baker Botts L.L.P.

Third Quarter 2024 Federal Circuit Law Update

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Since serving as a Federal Circuit clerk, Michael Hawes has monitored that court's precedential opinions and prepares a deeply outlined index by subject matter (invalidity, infringement, claim construction, etc.) of relevant...more

A&O Shearman

Federal Circuit Upholds Invalidation Of Photo-Tagging Patents Under 35 U.S.C. § 101 And Alice/Mayo

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On September 17, 2024, Judges Taranto, Chen and Cunningham of the United States Court of Appeals for the Federal Circuit (“CAFC”) upheld the invalidation of a patent belonging to Angel Technologies Group, LLC and dismissed...more

BakerHostetler

Federal Circuit Rebukes District Court for Patent Eligibility Decision Involving Extended-Release Formulation Patent

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The U.S. Court of Appeals for the Federal Circuit admonished the U.S. District Court for the District of Delaware on Wednesday for abuse of its discretion in finding the disputed claims invalid under 35 U.S.C. § 101, “a...more

Jones Day

USPTO Extends Comment Deadline on Patent Eligible Subject Matter Guidance for AI Inventions

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The USPTO has extended the public comment deadline in order to afford all stakeholders an opportunity to weigh in on the subject matter eligibility of AI inventions....more

McDermott Will & Emery

Stay Focused: New Point of View of Patent Eligibility

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The US Court of Appeals for the Federal Circuit reversed and remanded a district court’s decision that the asserted claims were patent ineligible under 35 U.S.C. § 101, finding that the district court improperly characterized...more

A&O Shearman

Federal Circuit Reverses § 101 Summary Judgment Of Invalidity, Holding That Describing Claims At High Level Of Abstraction And...

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On September 9, 2024, the United States Court of Appeals for the Federal Circuit (“CAFC”) reversed the U.S. District Court for the Northern District of California’s decision finding asserted claims invalid under 35 U.S.C. §...more

Jones Day

Petitioners Beware: Screenshots Showing Product May Not Qualify as Printed Publication

Jones Day on

In a recent decision, the PTAB determined that images of products offered for sale via online retailers, such as Amazon, did not alone qualify as printed publications—even if the images showed the product and the date it was...more

Sheppard Mullin Richter & Hampton LLP

Celanese v. ITC: How the On-Sale Bar Can Turn Sweet Sales into Spoiled Patents

Celanese International Corporation, Celanese (Malta) Company 2 Limited, and Celanese Sales U.S. Ltd. (collectively, “Celanese”) filed a petition before the United States International Trade Commission (the “ITC”), alleging...more

Fish & Richardson

Federal Circuit Finds Conventional Components Can Provide a Technological Advantage at Alice Step 1

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On September 9, the Federal Circuit reversed a Northern District of California decision that invalidated two video camera patents as being directed to patent-ineligible abstract ideas under 35 U.S.C. § 101. Contour IP...more

WilmerHale

Federal Circuit Patent Watch: An Expert Need Not Have Acquired the Requisite Skill Level Prior to the Time of the Invention

WilmerHale on

Precedential and Key Federal Circuit Opinions - WISCONSIN ALUMNI RESEARCH FOUNDATION v. APPLE INC. [OPINION] (2022-1884, 8/28/2024) (Prost, Taranto, and Chen) - Prost, J. The Court affirmed two final judgments of the...more

Knobbe Martens

Combining Abstract Ideas Does Not Make Them Less Abstract

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Before Dyk, Reyna, and Stark. Appeal from the United States District Court for the Western District of Texas. Summary: When assessing patent eligibility under 35 U.S.C. § 101, combining two abstract ideas does not make...more

BakerHostetler

Federal Circuit Reverses Ineligibility Finding on POV Cameras and Processing

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On September 9, the Court of Appeals for the Federal Circuit reversed a finding by the District Court for the Northern District of California that point-of-view camera claims were ineligible. ...more

Knobbe Martens

Federal Circuit Review | August 2024

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Specify the Steps of Information Manipulation or Lose under § 101 - In Mobile Acuity Ltd. v. Blippar Ltd. Appeal No. 22-2216, the Federal Circuit held that patent claims that merely recite result-orientated, functional...more

Foley & Lardner LLP

Another Step Forward for the Patent Eligibility Restoration Act

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I have been waiting for developments on the Patent Eligibility Restoration Act (PERA) since I testified before the Subcommittee on Intellectual Property of the Senate Judiciary Committee in January 2024, and in the meantime...more

Baker Donelson

Patent Cases to Watch for in the Second Half of 2024

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As we move into the second half of the year, we are alerting you to 11 patent cases that you should look out for during the second half of 2024. This judicial mix touches on a range of industries and interests, such as...more

Hudnell Law Group

Intrinsic Record Paramount In Rule 12 Eligibility Determinations

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In the recent decision of Miller Mendel, Inc. v. City of Anna, Texas, 2024 U.S. App. LEXIS 17637 (Fed. Cir. July 18, 2024), the Federal Circuit upheld the district court’s grant of a motion for judgment on the pleadings under...more

A&O Shearman

Federal Circuit Holds That America Invents Act Does Not Affect On-Sale Bar To Patentability

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In Celanese Int’l Corp. v. ITC, the Federal Circuit addressed whether the America Invents Act (“AIA”) changed the on-sale bar such that the sale of a product made using a secret process would no longer invalidate later-sought...more

Fish & Richardson

Texas Patent Litigation Monthly Wrap-Up: July 2024

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Our Texas Patent Litigation Monthly Wrap-Up for July 2024 covers three decisions of interest from the Eastern District of Texas granting motions related to subject matter eligibility, stays pending inter partes review (IPR),...more

McDermott Will & Emery

Not Just a Blip: Section 101 as Affirmative Defense

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On appeal from a motion to dismiss based on subject matter eligibility, the US Court of Appeals for the Federal Circuit held that a district court appropriately analyzed certain claims as representative claims and that the...more

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