November 2014

Webinar: How to Practice Patent Law After Alice

A recording of this webinar is available online. The PowerPoint presentation for this webinar is posted here: How to Practice Patent Law After Alice John Kong’s paper is posted here:  Surviving Alice Gone Wild 12-09-2014 Presented by the IP Legal Network, this free webinar on December 9, 2014, at 1 pm EST, will provide practical advice for navigating the tumult that has followed the U.S. Supreme Court’s decision in Alice Corp. v. CLS Bank.  Many people are talking about how to respond to Section 101 challenges and draft applications to make patent claims survive Section 101 scrutiny – and we will, too.  However, if the post-Alice world has made anything clear, it is that some subject matter that previously would have been found patent-eligible is now very unlikely to be issued by the USPTO – and even if claims issue, surviving the scrutiny of a federal court or the Patent Trial and Appeals Board presents a challenge.  So what are intellectual property owners to do? Topics will include: Section 101 and Patent Prosecution: How to counsel patent applicants and potential applicants on what is patent-eligible (and what is not) Different approaches taken by the examining corps and the PTAB Strategies… Read More »Webinar: How to Practice Patent Law After Alice

Ho-hum: More Rule 12 Motions, More Patent Claims Held Invalid Under 35 U.S.C. § 101

In the wake of Alice Corp. v. CLS Bank, court after court has held patent claims invalid for failing to recite patent-eligible subject matter under 35 U.S.C. § 101.  And courts are not waiting for claim construction or summary judgment to make their decisions, instead granting motions brought at the pleadings stage under FRCP 12.  Here are some recent cases that continue this trend (there is an exception in the Genetic Tech case below, but I do not believe the exception disproves the trend). Amdocs (Israel) Ltd. v. Openet Telecom, Inc., No. 1:10cv910 (LMB/TRJ) (E.D. Va. Oct. 24, 2014).  Claims of four patents (U.S. Patent Nos. 6,836,797, 7,631,065, 7,412,510, and 6,947,984 ) were directed to “software which allows telecommunications providers to track customer usage of computer network services.”  The defendants successfully brought a motion for judgment on the pleadings under FRCP 12(c).  The courts held claims of all patents to be patent-ineligible.  Claim 1 of the ‘065 patent “amount[ed] to ‘nothing significantly more than an instruction to apply the abstract idea’ of correlating two network accounting records ‘using some unspecified, generic’ computer hardware.”  Other claims were similarly broad and were directed to similar abstract ideas. Wolf v. Capstone Photography, Inc.,… Read More »Ho-hum: More Rule 12 Motions, More Patent Claims Held Invalid Under 35 U.S.C. § 101