Does Claim Construction Matter in Determining Patent-Eligibility under 35 U.S.C. § 101?

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 (PTA… Read More

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,… Read More

Ho-Hum – Federal Circuit Affirms PTAB Decision that Claims Directed to Securities Trading System Are Not Patent-Eligible

In a one-word per curiam order, the Federal Circuit has affirmed the Patent Trial and Appeal Board’s holding that patent claims directed to a securities trading system are invalid under 35 U.S.C. § 101.  Chicago Board Options… Read More

Patent Directed to “Data Security System for a Database” Qualifies for Covered Business Method Review at PTAB

In Square Inc v. Protegrity Corp., CBM2014-00182 (March 2, 2016), the Patent Trial and Appeal Board (PTAB) offered some insight as to when patent claims will be subject to covered business method (CBM) review. The patent at issue… Read More

PTAB Denies Petition for CBM Review of Patent Directed to ATM Banking Transactions: a Portent for Patent-Eligibility of Business Methods? (Maybe Not)

The USPTO’s Patent Trial and Appeal Board (PTAB) has denied a petition for Covered Business Method (CBM) Review of U.S. Patent No. 6,081,792, whose claims recite methods of “providing money or an item of value to an account-ho… Read More

Federal Circuit Affirms PTAB's CBM Determinations

The PTAB was not arbitrary and capricious in determining that patent claims directed to transmitting digital data were Covered Business Method (CBM) claims, despite a seeming recitation of technological elements, and an omission o… Read More

PTAB Finds Means-Plus Function Indefiniteness

Following Williamson v. Citrix Online, LLC, the Patent Trial and Appeal Board has held means-plus-function patent claims indefinite under 35 U.S.C. § 112 for failing to “disclose sufficient corresponding structure for the [… Read More

Suit Tossed on Alice Grounds Does Not Merit Attorneys Fees Under Octane Fitness

A California district court recently considered the intersection between the patent-eligibility law of Alice and the fee award standard of Octane Fitness, set against the backdrop of a (mostly) successful challenge to the patent-i… Read More

How Expansive Is the Definition of “Covered Business Method Patent?” (Part 2)

Last week I wrote about institution of a Covered Business Method (CBM) patent post-grant review that seemed to stretch the bounds of the definition of “covered business method.” Here is a case denying a petition to ins… Read More

How Expansive Is the Definition of "Covered Business Method Patent?"

The USPTO’s Patent Trials and Appeals Board (PTAB) has held that patent claims directed to “de-identifying health care data” are directed to a “covered business method” under Section 18 of the America… Read More

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