Already Alice Corp. v. CLS Bank Has Brought a Sea-Change in Patent-(In)eligibility

In the four years leading up to Alice Corp. Pty. Ltd. v. CLS Bank Int’l., 134 S. Ct. 2347 (2014), the U.S. Supreme Court addressed patent-eligible subject matter under 35 U.S.C. § 101 in Bilski v. Kappos and Mayo v. Prometheus.  Both decisions clearly cut back on the anything-goes approach to determining patent-eligible subject matter […]

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PTAB Reverses Obviousness Rejection because Nothing “Ties” Approaches of Prior Art References Together

In Ex parte Gilbert (Appeal 2012/005795; App. No. 11/200,749), the Patent Trials and Appeals Board (PTAB) held that the Examiner had not established that one of ordinary skill in the art would have had an apparent reason to combine the references because there is nothing that would “tie” the approaches of the references together. The […]

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Another Post-Alice Nail in the Coffin of Business Method Patents

In a case where the patent-owner had no chance following Alice Corp. Pty. Ltd. v. CLS Bank Int’l., 134 S. Ct. 2347 (2014), the Federal Circuit has affirmed a district court’s pre-Alice holding that patent claims directed to “providing a guaranty service for online transactions” are not patent-eligible under 35 U.S.C. § 101.  Buysafe, Inc. […]

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Use of Copyrighted Software’s Output and Mere Downloading of Copy Held Not to Constitute Infringement

Neither using output from copyrighted software, nor downloading (but not installing or using) the copyrighted software, constituted actionable copyright infringement under the US copyright statute.  Design Data Corporation v.  Unigate Enterprise, Inc., No. 12-cv-04131-WHO (N.D. Cal. Aug. 6, 2014).  Accordingly, the court in this case granted summary judgment in favor of the defendants on the […]

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Trade Secret Protection Requires Steps to Protect Trade Secrets

A defendant who misappropriated a plaintiff’s designs could not be liable for trade secret misappropriation no matter how nefarious the defendant’s conduct, where the plaintiff had not taken reasonable steps to protect prototypes embodying the designs. Accordingly, in Direct Technologies, LLC v. Electronic Arts, Inc., No. SACV 10-1336 AG (PJWx) (C.D. Cal. Aug. 4, 2014), […]

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Precedential PTAB Decision Provides Reminder That PG Patent Review Is Barred By Prior Civil Action Challenging Validity

On November 15, 2013, SecureBuy, LLC, petitioned the US Patent and Trademark Office for review of U.S. Patent No. 7,051,002 under the America Invents Act’s transitional program for covered business method patents. Two weeks earlier, on November 1, 2014, SecureBuy had filed actions in two different federal district courts seeking a declaratory judgment of invalidity […]

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Patent “Assignee” Lacks Standing to Sue

Clouding IP lacked standing to sue to enforce a set of patents it had purportedly purchased under a “Patent Assignment Agreement” because rights retained by Symantec, the seller, prevented Clouding from obtaining “substantially all rights” in the patents.  Clouding IP LLC v. AT&T Inc., No. 1:13-cv-01342 (D. Del. Jul 28, 2014). The Court’s consideration of […]

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The Alice Effect: Recent Patent-Eligibility Cases in the District Courts

As this blog and others have noted, the U.S. Patent and Trademark Office reacted quickly to change examination procedures in light of the U.S. Supreme Court’s recent decision in Alice Corp. Pty. Ltd. v. CLS Bank Int’l.  Moreover, as two recent district court cases suggest, Alice’s impact is being felt in ongoing patent litigation.  In […]

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Claims Directed to a Data Structure Are Not Patent-Eligible, Says Federal Circuit

In its first patent-eligibility case since the U.S. Supreme Court’s decision in Alice Corp. v. CLS Bank Int’l., the Federal Circuit has held that claims directed to a data structure are not patent-eligible, affirming the district court’s summary judgment of invalidity.  Digitech Image Techs., LLC v. Elecs. for Imaging, Inc. (Fed. Cir. July 11, 2014).  […]

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New Patent Prosecution Standard? USPTO Provides Preliminary Post-Alice Corp. Guidelines for Evaluating Patent-Eligibility

In the wake of Alice Corp. v. CLS Bank Int’l., the U.S. Patent and Trademark Office has issued “preliminary instructions effective today to the Patent Examining Corps relating to subject matter eligibility of claims involving abstract ideas, particularly computer-implemented abstract ideas, under 35 U.S.c. § 101.”  At the same time, the USPTO is clearly struggling […]

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