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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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Enfish=Patent-Eligibility for Software License Enforcement

Reversing a District Court decision, the Federal Circuit had held that patent claims directed to enforcing software licenses are patent-eligible under 35 U.S.C. §101 and the Alice abstract idea test. Ancora Technologies, Inc. v. HTC America, Inc., No. 2018-1404 (Nov. 16, 2018) (precedential) (opinion by Judge Taranto, joined by Judges Dyk and Wallach).  Claims of U.S. Patent No. 6,411,941 recite “methods of limiting a computer’s running of software not authorized for that computer to run.”  Relying on Enfish, LLC v. Microsoft Corp., (Fed. Cir. 2016), the Federal Circuit reversed the lower court’s Rule 12(b)(6) dismissal, holding that “the claimed advance” was patent-eligible as “a concrete assignment of specified functions among a computer’s components to improve computer security.” Claim 1 of the ’941 patent recites 1. A method of restricting software operation within a license for use with a computer including an erasable, non-volatile memory area of a BIOS of the computer, and a…

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