abstract idea : CAFC Alert

Claims Directed to the Abstract Idea of Encoding/Decoding Image Data are Found Not Patent Eligible

Bill Schertler | May 22, 2017

RecogniCorp v. Nintendo

April 28, 2017

Before Lourie, Reyna and Stoll.  Opinion by Reyna.


RecogniCorp sued Nintendo in district court for infringement of U.S. Patent No. 8,005,303 (“ the ‘303 patent”) directed to a method and apparatus for encoding/decoding image data.  Nintendo filed a motion for judgment on the pleadings, asserting that the claims were ineligible under 35 U.S.C. §101.  The district court concluded that RecogniCorp’s claims failed the Alice test, and granted Nintendo’s motion.  On appeal, the Court of Appeals for the Federal Circuit (CAFC) affirmed, finding that the ‘303 patent’s claims are directed to the abstract idea of encoding and decoding image data, and the claims do not contain an inventive concept sufficient to render the claims patent eligible.

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Another fatality attributed to 35 U.S.C. §101 abstract idea

Bill Schertler | August 5, 2016

Electric Power Group, LLC v Alstom

August 1, 2016

Before: Taranto, Bryson and Stoll.  Opinion by Taranto.


Electric Power Group sued Alstom alleging infringement of various claims of U.S. Patents Nos. 7,233,843; 8,060,259; and 8,401,710 directed to systems and methods for performing real-time performance monitoring of an electric power grid.  On Alstom’s motion for summary judgment, the district court held that Electric Power Group’s asserted patent claims fail the standard for patent eligibility under §101.  The CAFC affirmed finding the claims don’t go beyond the abstract idea of the collection, analysis, and display of available information in a particular field.

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Software can make non-abstract improvements to computer technology under 35 USC §101

Thomas Brown | June 24, 2016

Enfish, LLC v Microsoft Corp.

May 12, 2016

Precedential Opinion by Hughes, joined by Moore and Taranto.


Enfish sued Microsoft for infringement of several patents related to a “self-referential” table for a database. The district court found all claims invalid as ineligible under § 101 on summary judgment.  The CAFC reversed the summary judgment based on § 101 by finding that claims drawn to a “self-referential” table for a data base are not directed to an abstract idea under step one of the Alice analysis.

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If At First You Don’t Succeed, (Don’t) Try, Try Again?: Myriad Genetics Lost More Claims To 35 U.S.C. §101.

Cindy Chen | January 29, 2015

In re BRCA1- and BRCA2-Based Hereditary Cancer Test Patent Litigation, also known as University of Utah Research v. Ambry Genetics Corp.

December 17, 2014

Panel: Prost, Clevenger, and Dyk. Opinion by Prost.


A year after Association For Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107 (2013), in which Myriad saw its isolated DNA claims being invalidated by the Supreme Court for patent ineligibility, Myriad found itself once again trying to defend the patent eligibility of its patent claims. This time, the claims were directed to isolated single-stranded polynucleotides and the use of those polynucleotides to detect the presence of genetic mutations. Different claims, but the outcome was the same as the Federal Circuit, following the Supreme Court and its own precedents, invalidated Myriad’s claims as being directed to patent ineligible subject matter under  35 U.S.C. §101.

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Surviving Alice Gone Wild

John Kong | November 26, 2014

Before the Supreme Court’s decision in Alice Corp. v CLS Bank Int’l [1], Judge Moore said “this case is the death of hundreds of thousands of patents, including all business method, financial system, and software patents as well as many computer implemented and telecommunications patents.”[2] This concern is premised on about twenty years of patent practice grounded in the en banc 1994 Federal Circuit decision in In re Alappat which previously established the “special purpose computer” justification for patent eligibility under 35 USC §101 for computer-implemented inventions.[3]  The Alice decision essentially eliminated the “special purpose computer” bright line rule as applied generally to computer-implemented inventions.  The new Mayo 2-part §101 test for computer-implemented inventions is, however, fraught with issues from the lack of guidance on how to properly apply it.  Some strategic arguments for surviving a §101 attack are presented in this article, as well as a new way to address what is “significantly more.”

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In the wake of Alice Corp. v. CLS Bank Int’l, the Federal Circuit strikes down another patentee’s claims for reciting patent ineligible abstract idea

Bill Schertler | August 18, 2014

Digitech Image Technologies v. Electronics For Imaging, Inc.

July 11, 2014

Panel: Moore, Reyna, Hughes. Opinion by Reyna.


Digitech is the assignee of U.S. Patent No. 6,128,415 (the ‘415 patent) directed to a device profile for a digital image reproduction system and a method of generating a device profile in a digital image reproduction system.  Digitech sued 32 defendants for infringement in the U.S. District Court for the Central District of California.  Several defendants filed summary judgment motions seeking to invalidate the asserted claims of the ‘415 patent under 35 U.S.C. §101.  The district court granted the defendants’ motions and found all of the asserted claims to be subject matter ineligible.  On appeal, the Court of Appeals for the Federal Circuit (CAFC) affirmed.

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Practical Points From The Supreme Court’s Alice Decision

John Kong | June 26, 2014

Alice Corp. v. CLS Bank Int’l

June 19, 2014


The Supreme Court’s Alice decision does not eliminate software patents as per se ineligible subject matter under 35 USC §101. The Court confirms the application of Mayo’s two step §101 analysis and provides some new considerations for addressing patent eligibility issues for computer-implemented inventions.  Unfortunately, the Supreme Court’s admonition that the mere addition of “conventional” computer functionality to an abstract idea does not transform the claim into patent eligible subject matter conflates the §101 analysis with patentability issues under 35 USC §§102 and 103.

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PTAB Finally Considers “Processor” As Clearly Structure

John Kong | June 19, 2014

Ex Parte Cutlip

June 2, 2014

Panel: Lorin, Mohanty and Hoffman.


After the debacle of three March 2013 PTAB decisions by a five judge PTAB panel relying on a strange American Heritage dictionary definition of “processor” as being software, this PTAB decision sets the record straight about a “processor” as clearly being structure.

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Predictably Divided CAFC Panel Finds Computer System Claims Not Patent-Eligible

Darrin Auito | September 17, 2013

Accenture Global Services, GMBH v. Guidewire Software, Inc.
September 5, 2013
Panel: Lourie (author), Reyna, Rader (dissent)

Not surprisingly, the decision of the latest Federal Circuit case on software patent eligibility can be predicted based on the makeup of the CAFC panel.  Judge Lourie, joined by Judge Reyna, issued the majority opinion that the system claims were invalid.  The Court followed the analysis for determining patent eligibility from CLS Bank, 717 F.3d 1269 (Fed. Cir. 2013) and affirmed the district court’s finding that the system claims of U.S. Patent No. 7,013,284 (“the ‘284 patent”) were ineligible.  Judge Rader dissented.

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Specific application of an abstract idea may be patent eligible

Rob Raheja | June 26, 2013

Ultramercial, Inc. v. Hulu, LLC.

June 21, 2013

Panel: Rader, Lourie and O’Malley.  Opinion by Rader.  Concurrence by Lourie


Ultramercial, Inc. sued Hulu, LLC for infringement of U.S. Patent 7,346,545 (the ‘545 patent) directed to a method of monetizing and distributing copyrighted products over the Internet. The district court dismissed the patent suit by holding that the patent claims an abstract idea; therefore, it is not a process under 35 U.S.C. §101. In an earlier decision, the Federal Circuit reversed the district court’s holding and remanded. The Supreme Court of the United States vacated the earlier decision by the Federal Circuit. The Federal Circuit again holds that the patent does not claim an abstract idea because the claims are not drawn to a mathematical algorithm or a series of purely mental steps because the claims require, among other things, a particular method for collecting revenue from the distribution of media products over the Internet by way of controlled interaction with a consumer over an Internet website. Therefore, the Federal Circuit again reversed the district court’s holding and remanded for further proceeding.

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