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. […]
Archive | September, 2014
Yet Another Business Method Patent Fails Section 101 “Abstract Idea” Test
By Charles Bieneman on September 28, 2014 in Litigation, Patentable Subject Matter, Software Patents
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 […]
PTAB Invalidates Business Method Claims in CBM Review
By Charles Bieneman on September 25, 2014 in America Invents Act, Covered Business Method Patent Review, Patentable Subject Matter
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. § […]
Goodbye to Form 18?
Form 18 appended to the Federal Rules of Civil Procedure provides a form complaint for pleading patent infringement. To the chagrin of many defendants, Form 18 has been used to justify very bare-bones complaints of patent infringement even after the Supreme Court’s Iqbal and Twombley decisions requiring more detailed pleading. Now Form 18 may be […]
Covered Business Method Patent Found Likely Patent-Eligible Under 35 U.S.C. § 101
By Charles Bieneman on September 20, 2014 in America Invents Act, Covered Business Method Patent Review, Patentable Subject Matter
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 […]
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 […]
PTAB Reverses Obviousness Rejection because Nothing “Ties” Approaches of Prior Art References Together
In Ex parte Gilbert (Appeal 2012/005795; App. No. 11/200,749), the Patent Trials and Appeals Board (PTAB) held that the Examiner had not established that one of ordinary skill in the art would have had an apparent reason to combine the references because there is nothing that would “tie” the approaches of the references together. The […]
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. […]