Split Fed. Cir. Panel Bases Patent-Eligibility of Network Management Claims on Claim Construction

Co-authored by Mark St. Amour. How much does claim construction matter when determining patent-eligibility under 35 USC § 101? In Amdocs Ltd. V. Openet Telecom, Inc., (Fed. Cir. Nov. 1, 2016) a split Federal Circuit panel reversed a district court decision holding claims of four patents invalid under 35 U.S.C. § 101 as directed to […]

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How to Address Broadest Reasonable Interpretation in Ex Parte Patent Prosecution

Patent examiners often apply seemingly irrelevant prior art with the blithe statement that a claim rejection is justified by a broadest reasonable interpretation of claim terms.  I offer some tips on combating examiner abuses of broadest reasonable interpretation in this presentation, and in the accompanying paper, presented to the AIPLA’s Patent Law Committee at this […]

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Reconsidered After Recent Fed. Cir. Case, Vehicle Tracking/Monitoring Claims Mostly Patent-Eligible

After the Federal Circuit’s August 1, 2016, decision in Electric Power Group, LLC v. Alstom S.A., a defendant sought reconsideration of a Rule 12 motion to dismiss based on alleged patent-ineligibility of claims directed to “machine-to-machine communication platforms designed for tracking and monitoring the location and status of widely dispersed fleet vehicles and related mobile assets.” […]

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Claims Reciting Mental Steps Are Not Patent-Eligible, Says Federal Circuit

In an opinion authored by Judge Chen (joined by Judges Lourie and Moore), the Federal Circuit held claims of three patents to be patent-ineligible under 35 U.S.C. § 101 because “they are directed to the abstract idea of translating a functional description of a logic circuit into a hardware component description of the logic circuit.”  […]

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Patent Lessons From a Garbage Bag

Perhaps the most challenging aspect of patent preparation and prosecution is describing an invention in terms that are clear enough to show novelty and non-obviousness, while yet preserving sufficiently broad claim scope to capture potential infringers.  Here is a lesson from the world of garbage bags, in which the Federal Circuit held that a patentee […]

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Another Business Method Patent Falls at the Federal Circuit

A district court properly found that patent claims reciting “detecting improper access of a patient’s protected health information (PHI) in a computer environment” were directed to patent-ineligible subject matter under 35 U.S.C. § 101. Fairwarning IP, LLC v. Iatric Systems, Inc., No 2015-1985 (Fed. Cir., Oct. 11, 2016 (opinion by Judge Stoll, joined by Judges Lourie […]

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Patent Claims Found to be Directed to Abstract Idea, but Pass Alice’s “Inventive Concept” Prong

Having found that patent claims were directed to abstract ideas under the first prong of the Alice/Mayo test, a court then found that the claims were patent-eligible under 35 U.S.C. § 101 because the claims recited an inventive concept, satisfying the second prong of the Alice/Mayo test.  The court thus denied the defendant’s  Rule 12(b)(6) […]

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Federal Circuit Says Ex-Patent Owners Can Bring Inter Partes Reviews

In Husky Injection Molding Systems Ltd., v. Athena Automation LTD., Nos. 2015-1726, 2015-1727 (Sept. 23, 2016), the Federal Circuit rejected Husky’s appeal of a PTAB inter partes review decision that certain challenged claims were invalid. Husky’s grounds for appeal were based not on the PTAB’s final decision finding anticipation of the claims, but on an […]

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Three-Judge Fed. Cir. Panel Shows How Patent-Eligibility Law Is All Over the Map

A split Federal Circuit panel (Judges Dyk, Mayer, and Stoll) affirmed a district court’s holding that two Intellectual Ventures software patents were patent-ineligible under 35 U.S.C. § 101, while reversing the lower court’s holding that a third patent claimed eligible subject matter under the Mayo/Alice Section 101 test.  Intellectual Ventures I LLC v. Symantec Corp., […]

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