Archive | Patentable Subject Matter

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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Therapeutic Treatment Regimen Not Patent Eligible Despite Computer Implementation

In a decision that was probably made easy by the Supreme Court’s recent Prometheus decision, a D.C. district court has invalidated, as patent ineligible under 35 U.S.C. § 101, patent claims that recite using a computer to recommend a therapeutic treatment regimen.  SmartGene, Inc. v. Advanced Biological Laboratories, SA, No. 08-00642 (D. D.C. March 30, […]

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Divided Infringement and Non-Infringement

A patent claim for configuring a “satellite” credit card of a main credit card was not infringed directly by any defendant, nor was the claim directly infringed by any third party, and therefore it could not be indirectly infringed.  Spendingmoney LLC v. American Express Co., No. 3:08cv1376 (D. Conn. March 27, 2012).  The claim of […]

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Software Claims Held Patent Eligible

A Northern District of California court has rejected an argument that “a method of executing an instruction” was not patent eligible subject matter.  Nazomi Communications, Inc. v. Samsung Telecommunications, Inc., No. C-10-05545 (N.D. Cal. March 21, 2012).  The representative claim, reproduced below, recited a method by which a Java interpreter could more efficiently access byte […]

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Software Patent (and Other) Lessons From Prometheus v. Mayo

In addressing claims directed to medical diagnoses, the Supreme Court’s opinion in Mayo Collaborative Services v. Prometheus Laboratories, Inc. may actually lend some clarity to questions of patentability pertaining to software patents.  True, a clearer understanding of software patentability might not be the most obvious take-away from Prometheus.  And we are still a long way from […]

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