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Patent Claims for “Two-step Pick and Place” fail § 101 at Rule 12 stage.

Patent claims directed to a two-step “pick and place” operation for attaching electronic parts to a circuit body (a “die attach” method) were held ineligible on a Rule 12(c) motion for judgment on the pleadings under 35 U.S.C. §101 and the Alice/Mayo test. Palomar Technologies, Inc., v MRSI Systems, LLC, Case no. 18-10236-FDS (D. Mass., May 28, 2020.) Background The plaintiff Palomar sued defendant MRSI for infringement of Palomar’s U.S. Patent No. 6,776,327. MRSI petitioned the Patent Trial and Appeal Board (PTAB) for inter partes review (IPR) of the patent. The PTAB upheld validity of claims 1-47 and held claim 48 invalid. Following the IPR, MRSI moved for summary judgement on the basis of patent-ineligibility under 35 U.S.C. §101. The ’327 patent discloses a method which utilizes “double pick and place” wherein a first workpiece is first moved to an intermediate location close to a target attach location on a…

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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 necessarily follow the case law, but instead “builds a nice straight bridge right over [the] top” of “the swamp” that is § 101 jurisprudence. One of those nice bridges is found in new Example 45, which shows how control software – not an unusual thing to try to patent – can be patent-eligible. Example 45 is about claims directed to “a controller for an injection molding apparatus.” If this sounds familiar, see Diamond v. Diehr, 450 U.S. 175 (1981). To elucidate, the  USPTO provides four example claims: 1. A controller for an injection molding apparatus having a mold defining a cavity for receiving uncured polyurethane that is heated to form a molded article during a cycle of operation of…

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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-ineligible claims directed to tuning liners of driveline propshafts to damp vibrations. In American Axle & Mfrg., Inc. v. Neapco Holdings LLC, No. 2018-1763 (Fed. Cir. Oct. 3, 2019) (precedential), the majority, Judge Dyk, joined by Judge Taranto, affirmed a summary judgment that claims of U.S. Patent No, 7,774,911 (“Method for Attenuating Driveline Vibrations”) are invalid under 35 U.S.C. § 101 as directed to a law of nature. The majority found that the claimed liner tuning of “merely amounts to an application of a natural law (Hooke’s law) to a complex system without the benefit of instructions on how to do so.” In dissent, Judge Moore identified numerous claimed inventive concepts…

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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 the two-part Alice/Mayo test. The California Institute of Technology v. Broadcom Ltd., (C.D. Cal. Jan. 18, 2019). The court found that claims of US Patent Nos. 7,116,710, 7,421,032, and 7,916,781 “improve[d] on previous data encoding methods by allowing for more efficient data transmission,” and that this was a patent-eligible technical solution. The three patents had a common priority claim and a common specification. At risk of oversimplification, the specification described, and the claims purportedly embodied, the technical improvement of manipulating bits of data to provide error correction codes to improve accuracy without bloating the amount of data being transmitted. After addressing claim construction issues in providing a general background of the law of patent-eligibility, the court turned to the heart of…

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