abstract idea test

Courts Don’t Follow the PTO’s § 101 Patent-Eligibility Guidance so Why Should You?

The Federal Circuit’s recent dicta in a non-precedential decision stating that it need not give deference to the USPTO’s 35 U.S.C. § 101 patent-eligibility guidance highlights the challenges faced by patent applicants. In Cle… Read More

Radio over Internet Protocol (RoIP) is Patent-Eligible

The District of Delaware recently denied a motion to dismiss based on lack of patent-eligible subject matter, under 35 U.S.C. § 101 and the Alice/Mayo test, in claims of U.S. Patent No. 7,333,806 directed to two-way radio commu… Read More

PTAB: Derivatives Trading Patent Claim Passes Alice Test, Opinion Designated “Informative”

Here is a sign that the USPTO’s January, 2019, guidance on 35 U.S.C. § 101 and patent-eligibility may have an immediate and significant impact on USPTO rejections under the Mayo/Alice abstract idea test. The guidance became ef… Read More

Factual Dispute Precludes Summary Judgment on Alice / § 101 Motion

Finding that competing expert declarations raised a factual question concerning whether claims recited an inventive concept, a  Delaware magistrate judge found that a summary judgment motion for invalidity of claims of U.S.… Read More

Videoconferencing Services Switch System Claim is Patent-Eligible

The Eastern District of Texas recently denied a Rule 12(b)(6) motion to dismiss based on lack of patent-eligible subject matter, under 35 U.S.C. § 101 and the Alice/Mayo test, in claims of U.S. Patent Nos. 9,154,734; 9,253,444;… Read More

Network Monitoring Patents Fail Alice Test, Says Delaware’s Judge Stark

Two patents directed to monitoring network response times to determine responsiveness of network services are invalid under 35 U.S.C. § 101 and the Alice/Mayo test, held Judge Stark in the District of Delaware. Citrix Systems, I… Read More

Patent-Eligibility Not Supported by an Ordered Combination of Generic Technology Elements

Patent claims reciting “buying and selling an item relating to unique subjects” unsurprisingly could not meet the patent-eligibility bar of 35 U.S.C. § 101 and the Alice/Mayo test when the patent owner appealed a lower court… Read More

What Kind of Technical Improvement Is Enough for Patent Claims to Survive Alice?

Three patents directed to improving wireless digital signal transmission by “protecting data from loss due to transmission errors” have survived a summary judgment motion seeking to invalidate claims under 35 U.S.C. § 101 and… Read More

NASDAQ Patent Doesn’t Claim Covered Business Method

The PTAB has declined to institute a Covered Business Method (CBM) review for a patent, owned by NASDAQ, claiming a computerized system for executing securities transactions. Investors Exchange LLC v. NASDAQ, Inc., Case CBM2018-00… Read More

Automated Delivery Notification is Ineligible Subject Matter

The Southern District of Florida recently granted a motion to dismiss in favor of Minted LLC, and a motion for judgment on the pleadings in favor of ShoppersChoice.com LLC based on lack of patent-eligible subject matter, under 35… Read More

Upcoming Webinar

Christoper Francis and Charles Bieneman will conduct a two-part webinar to discuss best practices for preparing, and then prosecuting, patent applications at the USPTO. The presentation will dive underneath the basic legal requirements to provide ade…Register

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