October 2019 USPTO Patent-Eligibility Guidance Provides Arguments for Software Patent-Eligibility (Especially Example 45)

The USPTO’s October 17, 2019, patent-eligibility guidance update (and new examples) have received copious attention from law firm commentators and other bloggers. As the PatentlyO blog notes, the USPTO’s guidance doesn’t nec… Read More

Patent Owner Loses under § 101 in CBM Where Claims Not Limited to Technological Innovation Allegedly Disclosed in Patent Specification

All claims of a patent directed to a “security-based order processing technique” are unpatentable under 35 U.S.C. § 101, said the Patent Trial and Appeal Board (PTAB) in a final written decision in a Covered Business Method R… Read More

Details Matter for Patent-Eligibility (and Other Bases for Patent Validity)

An important lesson for patent drafting – disclose and claim as much detail as you can about how the invention works, as opposed to simply what it does – falls out of a Federal Circuit panel’s split decision holding patent-i… Read More

Online User Authentication Service Fails § 101 Patent-Eligibility Test

Claims of a patent directed to “an interaction between a user, an ASP [authentication service provider] client, and an ASP” were invalid under 35 U.S.C. § 101 and the Mayo/Alice patent-eligibility test, said a Northern Distri… Read More

Death and Taxes and Patent-Ineligibility of Business Methods

For all the kvetching about the frustrating subjectivity and unpredictability of applying the Mayo/Alice patent-eligibility test, here is a case showing that there is a zone of certainty in determining patentability under 35 U.S.C… Read More

Your Garage Door Opener Is Not Patent-Eligible

Patent claims directed to a “movable barrier operator,” i.e., controlling a garage door, are not patent-eligible under 35 U.S.C. § 101 and the Alice/Mayo test. Chamberlain Group, Inc. v. Techtronic Industries Co. Ltd., Nos.… Read More

Determining Patent-Eligibility Requires Claim Construction!(?)

In a decision that Judge Lourie in dissent described as “based on a claim construction issue that is little more than a mirage,” a Federal Circuit panel vacated and remanded a district court’s Rule 12(c) judgment on the plea… Read More

Organizing Security System Display Data Survives Patent-Eligibility Challenge

Proving that application of the Mayo/Alice patent-eligibility test remains unpredictable and inconsistent, patent claims directed to a security system that monitors “premises using a graphical floor plan” have survived a motio… Read More

Check Processing Claims Fail Alice Test at Federal Circuit

Patent claims directed to a “method for processing paper checks” are invalid under 35 U.S.C. § 101 and the Mayo/Alice abstract idea test, the Federal Circuit held in Solutran, Inc. v. Elavon, Inc., Nos. 2019, 1345, 2019-1460… Read More

No Technical Improvement Means No Patent-Eligibility

Here is a case illustrating a far from unusual scenario that also illustrates the morass of the current law of patent-eligibility under the Mayo/Alice test and 35 U.S.C. § 101. In NetSoc, LLC. v. Match Group, LLC, No. 3:18-CV-018… Read More

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PTAB Practice: Recent Developments in Estoppel
November 21, 2019 at 12:00 pm EST
There are a wide range of estoppel issues that may be triggered under the America Invents Act (AIA) as a result of proceedings before the Patent Trial and Appeal Board (PTAB).  These estoppel issues complicate decision making in pursuing parallel pr…Register

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