Archive | October, 2015

How Does Patent-Eligibility Relate to Novelty and Non-obviousness?

Is prior art relevant to determining patent-eligibility under 35 U.S.C. § 101, or isn’t it?  In finding, on a motion for summary judgment, that claims drawn to “presenting information on a space-constrained display of a portable device” were patent-eligible, Judge Sparks of the Western District of Texas invited this question.  In Versata Software, Inc. v. […]

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Technological Environment Will Not Save Patent-Eligibility Under Alice

A recent decision under 35 U.S.C. § 101 by Judge Robinson of the District of Delaware is notable for two things: (1) the invalidation of patent claims drawn to a technological environment, and (2) the frank acknowledgment of the frustrating murkiness of patent-eligibility law in the wake of Alice Corp. v. CLS Bank.  Parus Holdings, […]

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Is “Software Per Se” Not Patent-Eligible?

A recent decision by the Patent Trial and Appeal Board (PTAB) has sustained an Examiner’s rejection under 35 U.S.C. § 101 with the sole explanation that the rejected claim was “drawn to software per se.” In re Piepienbrink et al., Appeal 2013-000045, Application 11/963,923 (Sept. 15, 2015).  The independent claims at issue were “directed to […]

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Data Management Claims Held Patent-Ineligible

A court granted a motion to dismiss under FRCP 12(b)(6) where claim construction was not needed to determine that claims of three patents were invalid under 35 U.S.C. § 101 based on the two-part Alice / Mayo patent-eligibility test.  Intellectual Ventures I LLC v. Erie Indemnity Company, Nos. 1: 14-cv-00220, 2:14-cv-01130 and 2:14-cv-01131 (W.D. Penn. […]

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Another Federal Circuit Lesson on Functional Software Claims

The Federal Circuit’s most recent pronouncement on functional software patent claims can only reinforce drafters’ concerns about claim language being construed as a means-plus-function recitation.  In Media Rights Technologies, Inc. v. Capital One Financial Corp., No. 2014-1218 (Fed. Cir. Sept. 4, 2015), the court held that, under 35 U.S.C. § 112, ¶ 6, the term […]

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The Difficulty of Predicting Section 101 Patent-Eligibility

Two recent decisions by the Patent Trial and Appeal Board (PTAB), reported in detail on the “Patent Docs” blog, demonstrate the vagaries and unpredictability now intrinsic to preparing and prosecuting applications for software inventions.  In the wake of Alice Corporation Pty. Ltd. v. CLS Bank International, it has been somewhat of a truism that claims […]

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