35 USC 101

Easy CAFC Patent-Eligibility Case: Digital Product Licensing

In a one-line order under its Rule 36, the Federal Circuit has affirmed a decision of Judge Schroeder in the Eastern District of Texas granted a Rule12(b)(6) motion to dismiss claims of patent infringement where claims were direct… Read More

How Is Collateral Estoppel Applied to Patent Invalidity?

A California court has held that a defendant is collaterally estopped from asserting patent-ineligibility under 35 USC § 101 because the defendant, in prior litigation, lost a post-trial motion in which it evidently raised other… Read More

CAFC: Alice Not a Change in Law Preventing Issue Preclusion

A Federal Circuit panel (Judges Lourie, Newman, and Reyna) has rejected a district court’s statement that Alice Corp. v. CLS Bank Int’l., was “an intervening change in the law” that would “exempt a potential applicat… Read More

Mass Spectrometry Method Not Patent Eligible in Ex Parte Appeal

The PTAB held that the claims in Ex parte Quimby, Appeal No. 2016-004681 (June 2, 2017) were directed toward unpatentable subject matter.  Of particular interest given the claim language, the Appellant was unsuccessful with argum… Read More

The Latest USPTO Patent-Eligibility Guidance (April 2017)

As you probably know, the USPTO maintains a “subject matter [patent-]eligibility” web page with a plethora of information.  Most recently, on April 26, 2017, the Office posted a “quick reference sheet” illustrating decisi… Read More

E.D. Texas Splits Patent-Eligibility of E-Mail Patents

Considering two e-mail patents, Judge Gilstrap of the Eastern District of Texas deferred a patent-eligibility determination of one of the patents as premature prior to claim construction, but held that claim construction was not r… Read More

CAFC: Handling Search Queries Is Not Patent-Eligible

A Federal Circuit Panel needed little analysis to determine that retrieving and displaying information is not patent-eligible subject matter, and affirmed a district court’s dismissal of a suit alleging infringement of claims of… Read More

PTAB Panel Can’t Agree on Patent-Eligibility

Lest anyone think that patent-eligibility determinations at the USPTO’s Patent Trial and Appeals Board (PTAB) are easy, even in appeals in ex parte patent prosecution, consider the recent case of Ex parte Plondke, Appeal 2016-00… Read More

E.D. Texas: Digital Product Licensing Not Patent-Eligible

Patent claims directed to “adjusting the number of devices allowed to use a digital product (e.g., software) under a license” are not patent-eligible, says Judge Robert W. Schroeder of the Eastern District of Texas.  Uniloc,… Read More

Alice Changed Law, No Issue Preclusion on Patent-Eligibility

Where a patent had survived a challenge under 35 U.S.C. § 101 in prior litigation between the parties, issue preclusion did not prevent a court from revisiting the question, and invalidating the patent claims, because, the court… Read More