January 2015

Four More Cases Holding Patent Claims Ineligible Under 35 U.S.C. § 101

Here are four cases decided in the course of a week in which U.S. district courts held patent claims ineligible under 35 U.S.C. § 101. Synopsis, Inc. v. Mentor Graphics Corp., No. C 12-6467 MMC (N.D. Cal. Jan. 20, 2015). Granted defense motion for summary judgment of invalidity under 35 U.S.C. § 101 for claims of U.S. Patent Nos. 5,748,488, 5,530,841 and 5,680,318. The patents “describe a method for synthesizing a complex logic circuit from a ‘user description specifying only signals and the circumstances under which the signals are produced, i.e., without requiring the designer to specify the hardware components or connections,’” which can then ultimately be “used to determine the appropriate hardware and connections.” The court found that the patent claims are directed to a mental process, and that the stated claims “lack the inventive concept necessary to transform a patent-ineligible abstract idea into a patent-eligible invention.” Certusview Techs. v. S&N Locating Servs., Civil. No. 2:13cv346 (E.D. Va. Jan. 21, 2015). Granted a defense motion under FRCP 12(c) for judgment on the pleadings under 35 U.S.C. § 101. Plaintiff alleged infringement of U.S. Patent Nos. 8,290,204, 8,407,001, 8,340,359, 8,265,344 and 8,532,341, directing to locating and using electronic records of… Read More »Four More Cases Holding Patent Claims Ineligible Under 35 U.S.C. § 101

How to Practice Patent Law After Alice

I don’t have all the answers about how to approach patent issues arising under 35 U.S.C. § 101 in the wake of the U.S. Supreme Court’s June 2014 decision in Alice Corporation Pty. Ltd. v. CLS Bank International, et al.  No one does.  The United States Patent and Trademark Office has just started to change its patent examination practices.   The effects of lower court decisions are just starting to be widely felt.  Nonetheless, there are lessons to be drawn.  I tried to cover some of these in a recent presentation to the Michigan Intellectual Property Law Association on Section 101 patent-eligibility and the impact of Alice on U.S. patent practice.  You can download the presentation here.

PTAB Denies a Petition for Inter Partes Review for Petitioners Failing to Identify All Real Parties-in-Interest

In Paramount Home Entertainment Inc. v. Nissim Corporation, IPR2014-00961, the Patent Trial and Appeal Board (“PTAB”) denied a Petition to institute inter partes review of claims 1-5 of U.S. Patent No. 6,304,715 (“the ‘715 patent”), ruling that the Petition failed to identify all real parties-in-interest as required by 35 U.S.C. § 312(a)(2). The December 29, 2014 decision highlights a sometimes-overlooked attack for patent owners against petitions seeking to institute PTAB review. George Schooff analyzes the decision on the Bejin Bieneman PLC blog.

Courts Hold Three Out of Four Patents Invalid Under 35 U.S.C § 101

I do not warrant the accuracy of the title of this post, which is based on anecdotally collected and reviewed data.  It is nonetheless instructive that, in cases I located after a fairly through search, an overwhelming majority of patents facing patent-eligibility challenges in federal courts since my last blog post on the subject, i.e., between December 15, 2014, and January 10, 2015, have been held invalid under 35 U.S.C. § 101.  In addition to two Federal Circuit cases upholding finding of patent-ineligibility, the district court cases summarized below evaluated twenty-two patents for patentable subject matter under Section 101.  Seventeen of these patents were held invalid, while five were upheld (and in each of the three cases where motions of invalidity were denied, the accused infringer remains free to assert the patent-ineligibility invalidity defense at a later stage of proceedings). A summary of these recent cases is as follows: Federal Circuit BRCA1- & BRCA2-Based Hereditary Cancer Test Patent Litig. v. Ambry Genetics Corp., Nos. 2014-1361, 2014-1366 (Fed. Cir. Dec. 17, 2014.) Claims of U.S. Patent Nos. 5,753,441, 5,747,282, and 5,837,492 were ineligible for patent protection under 35 U.S.C. § 101. Composition of matter claims were directed to patent-ineligible products of… Read More »Courts Hold Three Out of Four Patents Invalid Under 35 U.S.C § 101