The U.S. Supreme Court recently denied review of the Second Circuit decision in The Authors Guild et al. v. Google Inc., 804 F.3d 202 (2d Cir. 2015), finalizing a decision allowing Google to continue its mass digitization projects as fair use. This decision is a major victory for fair use - and for Google’s preservation […]
Archive | April, 2016
Haircuts Are Not Patent-Eligible, Says Federal Circuit
Claims in a patent application that were directed to a method of hair-cutting are not patent-eligible under 35 U.S.C. § 101, the Federal Circuit has held. In re Brown, No. 2015-1852 (Fed. Cir. April 22, 2016) (per curiam). Although the court went through the motions of applying the two-part Alice/Mayo test, one has to think […]
Does Claim Construction Matter in Determining Patent-Eligibility under 35 U.S.C. § 101?
By Charles Bieneman on April 26, 2016 in America Invents Act, Covered Business Method Patent Review, Patent Claim Construction, Patentable Subject Matter
Patent applicants and owners should position claims for narrow constructions where subject matter is susceptible to challenge under 35 U.S.C. § 101, suggests a recent decision from the USPTO’s Patent Trial and Appeal Board (PTAB). In a Covered Business Method (CBM) review Final Written Decision, the PTAB held that claims of U.S. Patent No. 8,402,281, […]
How Did the Supreme Court’s Akamai Decision Change the Law of Divided Patent Infringement?
The Federal Circuit has given new life to a patent owner alleging that actions of multiple parties constitute direct infringement under 35 U.S.C. § 271(a). Mankes v. Vivid Seats Ltd., No 15-1500 (Fed. Cir. April 22, 2016). The patent owner had alleged direct infringement of its patent by parties who carried out only some and […]
Can Arguments in a Patent Specification Overcome Alice?
The drafters of U.S. Patent No. 9,220,651 took an interesting approach to try to circumvent defeat of their claims as directed to an unpatentable abstract idea under 35 U.S.C. § 101. The application for the ‘651 patent was filed in 2012 in the interregnum between Bilski and Alice. In their specification, directed to an automated, […]
Plaintiff Stuck with Collateral Judgment of Patent Invalidity Under Alice in More Ways Than One
By Charles Bieneman on April 19, 2016 in Civil Procedure, Exceptional Case, Litigation, Patentable Subject Matter, Software Patents
Not only did collateral estoppel apply from a prior finding of patent invalidity under 35 U.S.C. § 101, but a plaintiff was denied a motion to voluntarily dismiss its claim of patent infringement, the court expressly leaving open the specter of a fee award to the defendant as a prevailing party under 35 U.S.C. § […]
Patent Claims to Collecting Website Feedback Not a “Financial Product or Service,” Do Not Qualify for CBM Review, Says PTAB
Patent claims reciting subject matter that, among other applications, could be used in the financial industry, do not qualify for Covered Business Method (CBM) review, said the USPTO’s Patent Trial and Appeal Board in Qualtrics, LLC v. OpinionLab, Inc., Case CBM2016-00003 (PTAB April 13, 2016). Claims of U.S. Patent No. 8,041,805 were directed to collecting […]
PTAB Reverses Patent-Eligibility Rejection of Business Method Implemented in a Vending Machine
Contrary to what some might think, the Patent Trial and Appeal Board (PTAB) does not always affirm rejections under 35 U.S.C. § 101, as evidenced by its recent decision in Ex parte Krampe, Appeal 2013-010784; Appl. No. 12/653,741; Technology Center 3600 (March 31, 2016). In this case, the PTAB held that the Examiner had failed […]
Claims Drawn to Monitoring and Analyzing Network Data Held Patent-Eligible
Claims drawn to “enterprise network” monitoring and analysis are patent-eligible, according to Delaware’s Judge Sue Robinson, who denied the defendant’s motion for Summary Judgment of invalidity under 35 U.S.C. § 101 in SRI International Inc. v. Cisco Systems Inc., No. 1:2013cv01534 (D. Del. April 11, 2016). Some people – including many patent examiners – will […]
How Do Biotech Patent-Eligibility Cases Speak to Computer Patent-Eligibility Cases?
The Federal Circuit recently held that a claim of U.S. Patent No. 5,612,179, reciting “methods of detecting genetic variations” was directed to unpatentable subject matter under 35 U.S.C. § 101. Genetic Technologies Ltd. V. Merial, LLC, Nos. 2015-1202, 2015-1203 (Fed. Cir. April 8, 2016). Anytime the Federal Circuit weighs in on Section 101 patent-eligibility, those […]