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Prior Art Found Pertinent to Patent-Eligibility Under 35 U.S.C. § 101

Quoting Bob Dylan in “You’re a Big Girl Now,” from the landmark album Blood on the Tracks, Judge Wu in the Central District of California has summed up the present state of patent-eligibility jurisprudence under 35 U.S.C. § 101: “A change in the weather has known to be extreme.” McRo, Inc. v. Codemasters Inc., No. […]

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Yet Another Business Method Patent Fails Section 101 “Abstract Idea” Test

Yet another court has held yet more business method patents invalid for failing to recite patent-eligible subject matter under 35 U.S.C. § 101. In Open Text S.A. v. Alfresco Software Ltd., No. No. 13-cv-04843-JD (Sept 19, 2014), the court granted the defendant’s Rule 12(b)(6) motion to dismiss, holding that claims of U.S. Patent Nos. 7,647,372 […]

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PTAB Invalidates Business Method Claims in CBM Review

Inter partes review (IPR) and post-grant review proceedings conducted by the Patent Trial and Appeal Board (PTAB) at the United States Patent and Trademark Office are emerging as a potent tool for invalidating patents. Under the Covered Business Method (CBM) PG-Review available to accused infringers, the PTAB can invalidate patent claims under 35 U.S.C. § […]

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Covered Business Method Patent Found Likely Patent-Eligible Under 35 U.S.C. § 101

The Patent Trial and Appeal Board (PTAB) at the United States Patent and Trademark Office has arguably held that business method patent claims may be patent-eligible under 35 U.S.C. § 101. In PNC Bank v. Secure Axcess, LLC, Case CBM2014-00100 (PTAB Sept. 9, 2014), the PTAB held that U.S. Patent No. 7,631,191 was eligible for […]

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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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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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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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Patent Practice Lessons from Alice Corp. v. CLS Bank

No one expected the U.S. Supreme Court to hold that claims directed to “financial matters and risk management” were patent-eligible in Alice Corp. v. CLS Bank Int’l., No. 13-298 (June 19, 2014).  Indeed, the Court did not so hold.  Now that we have the Court’s decision, if you scroll down you will see that I […]

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