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It’s Official: Berkheimer and USPTO’s January 2019 Guidance Have Reduced Alice Rejections

According to a recent report by the USPTO’s Chief Economist, the Federal Circuit’s 2018 Berkheimer decision and the USPTO’s January 2019 patent-eligibility guidance have reduced both the frequency and uncertainty of examiners’ patent-eligibility rejections under and 35 U.S.C. § 101 and the Alice/Mayo test. Anecdotally, for a number of months it has seemed that examiners were making fewer patent-eligibility rejections than they had been in the years following Alice. The January 2019 guidance in particular, as I wrote at the time, seemed designed to reduce Alice rejections. As this graph illustrates, that has proven to be true. Alice rejections peaked prior to Berkheimer; the USPTO points to its April 2018 memorandum modifying § 101 examination procedure in light of Berkheimer as accelerating the downward trend. But again, the dramatic downturn in patent-eligibility rejections occurred after the January 2019 guidance. Perhaps even more interesting than the decrease in Alice rejections is…

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Extrinsic Evidence and Abstract Ideas in Patent-Eligibility: CardioNet, LLC v. InfoBionic, Inc.

What if any limits are there on the extrinsic evidence (prior art) that can be considered in determining whether a patent claim is drawn to an abstract idea under step one of the Alice/Mayo 35 U.S.C. § 101 patent-eligibility test? And to what extent does the answer to this question matter; is it merely academic? In CardioNet, LLC v. InfoBionic, Inc., No. 2019-1149 (Fed. Cir. April 17, 2020), a three-judge panel (Judges Stoll, Plager, and Dyk) reversed the district court’s grant of a Rule 12(b)(6) motion because claims  of U.S. Patent No. 7,941,207 “are directed to a patent-eligible improvement to cardiac monitoring technology and are not directed to an abstract idea.” The panel unanimously agreed that the ‘207patent’s claims were patent-eligible – and that a remand was not needed for a “review of the prior art or facts outside of the intrinsic record regarding the state of the art at the…

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Emergency Alert System Is Not Patent-Eligible: Tenaha Licensing LLC v. TigerConnect, Inc.

Patent claims directed to “alert and notification” are ineligible under 35 U.S.C. § 101 and the two-part Mayo/Alice patent-eligibility test, said a Delaware magistrate judge, recommending  granting a Rule 12(b)(6) motion to dismiss a lawsuit alleging infringement of U.S. Patent No. 8,238,869. Tenaha Licensing LLC v. TigerConnect, Inc., C.A. No. 19-1400-LPS-SRF (D. Del. Jan. 2, 2019). Further, the court recommended granting the motion with prejudice. Any attempt by the plaintiff to amend its complaint would be futile, the court said; the patent specification affirmatively provided intrinsic evidence of patent-eligibility that could not be contradicted by extrinsic evidence. The court began by describing the analysis it would follow – this explanation is worth quoting because it is the patent-eligibility analysis that most courts follow, but that few courts explain so clearly: In resolving Defendant’s Motion, the Court will first discuss which claim will be specifically addressed herein as representative. Thereafter, it will analyze…

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Patents Claim E-commerce not Technical Solution, Fail § 101

A court found that claims of two patents were ineligible under 35 U.S.C. §101 and the Alice/Mayo test because the claims were all “directed to the same economic practice: the idea of presenting discounts or offers for goods and services based on certain criteria, such as a user’s location.” Valentine Communications, LLC v. Six Continents Hotels, Inc., No. 1:18-cv-1815-WMR (N.D. Ga. Jan. 9, 2019). The court thus granted the defendant’s Rule 12(b)(6) motion to dismiss the plaintiffs complaint alleging infringement of U.S. Patent Nos. 8,567,672 and 8,590,785. Claim 18 of the ’672 patent recites a computer-implemented “method for providing a discount to a user associated with a user device.” Claim 1 of the ’718 patent recites a mobile device that “receives an offer for the product or service in response to the transmission of the subset of purchasing data and in accordance with a search function.” The plaintiff pointed to claim recitations of hardware…

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Courts Splits Patent-Eligibility of Method and System Claims

The Central District of California recently granted, in part, 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. 8,934,535,  directed to a method for data compression and decompression. Realtime Adaptive Streaming LLC v. Google LLC, et al., No. CV 18-3629-GW(JCx) (C.D. Cal. Oct. 25, 2018). The court denied the motion for two other patents (U.S. Patent Nos. 9,769,477 and 7,386,046) with claims directed to system of data compression and decompression. The method claims of the ’535 patent were ineligiblebecause the patent failed to state that the claimed method would result in an increased compression speed. Concerning the’477 and ’046 patents, on the other hand, Google failed to show that the claimed systems, which included multiple compression encoders selected for use based on evaluating data, did not impart structural organization to computer processing comparable to the computer memory…

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