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Can Legislation Resolve the Patent-Eligibility Mess?

A recent proposal by the Intellectual Property Owners Association for amending 35 U.S.C. § 101 to attempt to clarify the law of patent-eligibility has garnered a lot of attention.  In essence, the IPO proposes to curtail, if not eliminate, the Mayo/Alice “abstract idea” test.  The clear intention, and effect, of the proposal would be to make it harder for the USPTO, and the courts, to reject and invalidate software patent claims.  But as a practitioner, my interest in the proposal lies in whether it would enhance predictability of patent-eligibility analysis, thereby providing clients with better bases for making business decisions predicated on whether patent claims do – or do not – recite eligible subject matter.  Does the IPO’s proposal really further this goal? The IPO’s proposed amendment to Section 101 is as follows: 101(a) ELIGIBLE SUBJECT MATTER: Whoever invents or discovers, and claims as an invention, any new and useful process,…

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When Does Novelty Confer Patent-Eligibility?

Refusing to consider only elements of patent claims that differed from the prior art in considering patent-eligibility under the test of Alice Corp. v. CLS Bank and 35 U.S.C. § 101, a court has denied a defendant’s motion to dismiss.  Capstan AG Systems, Inc. v. Raven Indus., Inc., No. 16-cv-04132-DDC-KGS (D. Kans. Jan 11, 2017).  The patents-in-suit, U.S. Patent Numbers 8,191,795 and 8,523,085, claim systems and methods for controlling valves of agricultural sprayers.  For example, the claimed invention controlled flow rates to provide even spraying when a tractor was turning. There was no dispute that the claimed improvement included a mathematical formula, i.e., an abstract idea. The defendant seized on this fact, and argued that Federal Circuit precedent directed the court to base its patent-eligibility analysis only on claim elements that represented an advance over the prior art.  The court disagreed, citing that old warhorse, the Supreme Court’s 1981 decision…

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