Archive | Patentable Subject Matter

Patent-Eligibility Decision Considers CLS Bank and Bancorp

In denying the plaintiff’s request for reconsideration of summary judgment of invalidity under 35 U.S.C. § 101, the Court in Digitech Information Systems, Inc. v. BMW Financial Services NA, LLC, No. 6:10-cv-1373 (M.D. Fla. July 30, 3012), compared the claim at issue to the claims held not patent-eligible in the Federal Circuit’s recent decision in […]

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Insurance Valuation Patent Claims Invalid Under Section 101

The Federal Circuit has upheld a District Court decision invalidating, as patent-ineligible under 35 U.S.C. § 101, patent claims directed to calculating an amount that a third-party guarantor must pay based on market and book values of an insurance policy in the event the policy is paid out prematurely.  Bancorp Services, LLC. v. Sun Life […]

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Business Method Claims Patentable Says Fed. Cir.

Patent claims directed to using an intermediary in financial transactions to eliminate settlement risk have been held to recite patent-eligible subject matter under 35 U.S.C. § 101.  CLS Bank Int’l. v. Alice Corp., No. 2011-1301 (Fed. Cir. July 9, 2012).  Writing for the majority of a divided panel, Judge Linn, joined by Judge O’Malley, emphasized […]

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PTO Updates Mayo v. Prometheus Examining Guidelines

“Preliminary guidance” has been replaced by “interim guidance.”  The United States Patent and Trademark Office has released its 2012 Interim Procedure for Subject Matter Patentability Analysis of Process Claims Involving Laws of Nature.  The interim guidelines, based on the recent Supreme Court decision in Mayo Collaborative Services v. Prometheus Laboratories, Inc., are to be followed […]

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Is Claim Construction a Prerequisite for Determining Patent Eligibility?

A court has denied a motion for summary judgment of invalidity based on Bilski v. Kappos, in part because the motion had been brought in advance of claim construction, and ahead of the court’s normal schedule for dispositive motions.  Lendingtree, LLC v. Zillow, Inc., No. 3:10-cv-00439-W (W.D.N.C. June 4, 2012).  Calling the motion premature, the […]

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Supreme Court to Federal Circuit: Reconsider the Patent-Eligibility of Ultramercial’s Patent Claims

Last fall, in Ultramercial, LLC v. Hulu, LLC, the Federal Circuit Court of Appeals surprised many people by upholding patent claims directed to a “method for distribution of products over the Internet via a facilitator.”  As already reported on the PatentlyO blog and elsewhere, the U.S. Supreme Court has now granted defendant Wild Tangent’s petition […]

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Check Fraud Prevention Patent Passes Bilski Test

Saying the issue was a “close call,” a Missouri court has ruled that method and apparatus claims directed to using encrypted codes to prevent check fraud are patent-eligible under 35 U.S.C. § 101.  Advanced Software Design Corp. v. Fiserv, Inc., No. 4:07CV185 (E.D. Mo. May 15, 2012).  The question came before the Court on the […]

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Business Methods Patents Still Being Asserted in Litigation

Business methods patents are alive and well, based at least on an anecdotal review of recent court filings.  Consider, for example, a case that I have selected more or less at random, Phoenix Licensing LLC v. Nationwide Mutual Insurance Company, filed on April 16, 2012, in the Eastern District of Texas.  Phoenix Licensing, which Internet […]

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Section 101: USPTO Issues Preliminary Mayo Guidelines

In case you missed it, just a day after last month’s U.S. Supreme Court decision in Mayo Collaborative Services v. Prometheus Laboratories, Inc., a case with lessons for software patents, the U.S. Patent and Trademark Office issued “preliminary guidance” to patent examiners on how to proceed in light of Mayo.  The bottom line: examiners should […]

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Computerized Method of Managing Financial Instruments Not Patent Eligible

Yet another district court has invalidated patent claims under 35 U.S.C. § 101.  In Digitech Information Systems, Inc. v. BMW Financial Services NA, LLC, No. 6:10-cv-1373 (M.D. Fla. March 30, 3012), the court held that a “method for selecting leases to optimize an investment portfolio,” implemented in a computer, did not recite patentable subject matter […]

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