If At First You Don’t Succeed, (Don’t) Try, Try Again?: Myriad Genetics Lost More Claims To 35 U.S.C. §101.
| 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.
Summary
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.
Surviving Alice Gone Wild
| 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.”
Tags: 101 > abstract idea > Alice > CLS Bank > computer > means plus function > patent eligible subject matter > preemption > Section 101 > software
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
| August 18, 2014
Digitech Image Technologies v. Electronics For Imaging, Inc.
July 11, 2014
Panel: Moore, Reyna, Hughes. Opinion by Reyna.
Summary
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.
Practical Points From The Supreme Court’s Alice Decision
| June 26, 2014
Alice Corp. v. CLS Bank Int’l
June 19, 2014
Summary:
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.
Tags: abstract idea > Alice Corp. > CLS Bank > computer > processor > software
PTAB Finally Considers “Processor” As Clearly Structure
| June 19, 2014
Ex Parte Cutlip
June 2, 2014
Panel: Lorin, Mohanty and Hoffman.
Summary:
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.
Tags: §101 > 112 sixth paragraph > 112(f) > abstract idea > algorithm > Alice Corp. > CLS Bank > computer > CPU > indefiniteness > MPF > patent eligible subject matter > processor > software
Predictably Divided CAFC Panel Finds Computer System Claims Not Patent-Eligible
| September 17, 2013
Accenture Global Services, GMBH v. Guidewire Software, Inc. September 5, 2013 Panel: Lourie (author), Reyna, Rader (dissent) Summary: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.
Tags: §101 > abstract idea > CLS Bank > preemption > software patent
Specific application of an abstract idea may be patent eligible
| June 26, 2013
Ultramercial, Inc. v. Hulu, LLC.
June 21, 2013
Panel: Rader, Lourie and O’Malley. Opinion by Rader. Concurrence by Lourie
Summary
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.
Tags: §101 > abstract idea > mathematical formula > mental process > patent eligibility > patent eligible subject matter > process
CLS Bank v. Alice Corporation: An attempt in formulating the abstractness of the “abstract ideas” test to patent eligibility
| July 18, 2012
CLS Bank v. Alice Corporation
July 9, 2012
Panel: Linn, Prost and O’Malley. Opinion by Linn. Dissent by Prost.
Summary
The district court for the District of Columbia held that claims to computer systems, computer readable medium and claims to methods of using a computer of the asserted patents were all invalid as “abstract ideas.” In so holding, the district court ignored the limitations recited in the claims and boiled the invention down to a mere abstract concept “of employing an intermediary to facilitate simultaneous exchange of obligations in order to minimize risk.” On appeal, the Federal Circuit reversed the district court’s judgment of invalidity under 35 U.S.C. § 101. The Federal Circuit, after considering each asserted claim “as a whole”, found that it was not “manifestly evident” that the claims of the asserted patent were drawn to “abstract ideas.” Therefore, the Federal Circuit held that claims must not be deemed inadequate under 35 U.S.C. § 101.
Tags: §101 > abstract idea > algorithm > bilski > business method > computer product > computer system > mathematical formula > mental process > patent eligible subject matter
CAFC invalidates claims directed to a method of creating a real estate investment instrument as unpatentable abstract idea
| March 7, 2012
Fort Properties, Inc. v. American Master Lease LLC
February 27, 2012
Panel: Prost, Schall and Moore. Opinion by Prost
Summary
American Master Lease (“AML”) threatened Fort Properties with an infringement lawsuit for infringement of U.S. Patent No. 6,292,788 (the ‘788 patent) and Fort Properties filed an action in the U.S. District Court for the Central District of California asking for a declaratory judgment of invalidity. In a decision prior to the Supreme Court’s Bilski v. Kappos decision, the district court granted summary judgment in favor of Fort Properties, finding all claims of the ‘788 patent invalid for failing the machine-or-transformation test. On appeal, the Federal Circuit affirmed – finding the claimed invention unpatentably abstract.
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Tags: §101 > abstract idea > bilski > patent eligible subject matter
