USPTO to Examiners after Enfish: Claim Can Be Patent Eligible Without Physical Elements

Patent applicants who have been frustrated by patent examiners who reject claims under 35 U.S.C. § 101 alleging that “software per se” is not patent-eligible will be heartened by the USPTO’s May 19, 2016, memorandum concerning “Recent Subject Matter Eligibility Decisions” to the Patent Examining Corps.  In that memorandum, discussing the recent Federal Circuit case […]

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Administering Digital Images Not Patent-Eligible, Says Federal Circuit

The Federal Circuit has affirmed the invalidity under 35 U.S.C. § 101 of patent claims drawn to “recording and administering digital images.”  TLI Communications LLC v. AV Automotive LLC, Nos. 2015-1372[, etc.] (Fed. Cir. May 17, 2016).  In an opinion authored by Judge Hughes, author of the recent decision upholding the patent-eligibility of claims in […]

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Clinical Research Methods Not Patent-Eligible Under 35 U.S.C. § 101

Five patents claiming methods of performing and managing clinical research were held patent-ineligible under the Alice/Mayo abstract idea test in eResearchTechnology, Inc. v. CRF, Inc., No. 15-918 (W.D. Pa. May 10, 2016).  After finding each of U.S. Patent Nos. 8,065,180; 8,145,519; 8,433,605; 6,879,970; and 7,415,447 invalid under 35 U.S.C. § 101, the court granted a […]

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Federal Circuit Clearly Says Software Can Be Patentable

A Federal Circuit panel (Judges Moore, Taranto, and Hughes) has unambiguously stated that some — one might even say much — software is patent-eligible, reversing findings of invalidity under 35 U.S.C. § 101 for two patents “directed to an innovative logical model for a computer database.”  Enfish, LLC v. Microsoft Corp., No. 2015-1244 (Fed. Cir. […]

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No Interlocutory Appeal for Adverse Alice Ruling

Having denied a defendant’s motion to find patents invalid under 35 U.S.C. § 101, Delaware’s Judge Robinson has now denied the defendant’s request for interlocutory appeal under 28 U.S.C. § 1292(b).  Improved Search, LLC v. AOL, Inc., No. 1:15-cv-00262 (D. Del. May 6, 2016).  Judge Robinson explained that interlocutory appeal should be exceptional, and should […]

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New USPTO Patent-Eligibility Guidance Not So New

The USPTO’s “Subject Matter Eligibility” page has received updates as of May 4, 2016.  These updates include examples that will be of great interest to life sciences practitioners.  The rest of us will find little news.  The Office has provided a memorandum for its patent examiners on “Formulating a Subject Matter Eligibility Rejection and Evaluating […]

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Patent Invalidation under Alice Held Not to Justify Fee Award

A declaratory judgment plaintiff, having successfully invalidated patent claims under 35 U.S.C. § 101 and the Alice case, has lost a motion for its attorney fees under 285 U.S.C. § 285. Clarilogic, Inc. v. FormFree Holdings Corp., No. 3-15-cv-00041 (S. D. Cal. April 27, 2016).  The court had earlier granted a motion for summary judgment […]

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Digitally Labeling Website is Unpatentable Subject Matter under 35 U.S.C. § 101, Says E.D. Texas

Patent claims covering labeling websites were “directed to the abstract idea of gathering and labeling information to facilitate efficient retrieval of the labeled information,” without any saving inventive concept, and as such were patent-ineligible.  Gonzalez v. Infostream Grp., Inc., Nos. 2:14-cv-906-JRG; 2:14-cv-907-JRG (E.D. Texas April 25, 2016).  Accordingly, Judge Gilstrap granted summary judgment of invalidity […]

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