IP Blog
Patent Eligibility
Federal Circuit Affirms Eligibility of RFID Transponder Claims But Reverses Summary Judgment on Validity Based on RFID FOR DUMMIES
In its December 16, 2022, precedential decision in ADASA, Inc. v. Avery Dennison Corp., the Federal Circuit addressed a range of issues, remanding the matter for resolution of facts relating to validity and for redetermination of the amount of a sanction. The relevant claims of the patent-in-suit, USPN 9798967, are directed to an RFID transponder. At the district court, the patent...
Patent Office Introduces Deferred Responses for Subject Matter Eligibility Rejections
The Patent Office recently introduced a new pilot program called the Deferred Subject Matter Eligibility Response pilot program going into effect on February 1. As detailed in a Federal Register notice, the program permits applicants to delay responding to rejections for ineligible subject matter—e.g., that the claims are directed to an abstract idea or law of nature—until later in prosecution....
Data Processing Claims Held Patent-Ineligible: Personal Web Technologies LLC v. Google LLC
In a precedential decision, the Federal Circuit has held patent-ineligible, under 35 U.S.C. § 101 and the Alice/Mayo test, claims of three patents directed to “data-processing systems that assign each data item a substantially unique name that depends on the item’s content—a content-based identifier.” PersonalWeb Techs. LLC v. Google LLC, Nos. 2020-1543, 2020-1553, 2020-1554 (Fed. Cir. August 12, 2021) (Opinion by...
Lessons of Yu v. Apple: The Law of § 101 Patent-Eligibility Is Chaos
Here is a case that both demonstrates the dysfunction of U.S. patent law with respect to eligible subject matter under 35 U.S.C. § 101, and offers lessons for practitioners wishing to buttress the patent-eligibility of their claims. In Yu v. Apple, Inc., NO. 2020-1760 (Fed. Cir. June 11, 2021)(precedential) a split Federal Circuit panel affirmed a district court’s holding of...
Internet Data Backup Not Patent-Eligible under § 101: WhitServe LLC v. DropBox, Inc.
Patent claims directed to backing up data to a client’s computers where the data has been outsourced for processing via the Internet failed the patent-eligibility test under the Alice/Mayo test and 35 U.S.C. § 101. WhitServe LLC v. DropBox, Inc., No. 2019-2334 (Fed. Cir. April 26, 2021) (non-precedential; opinion by Judge Reyna, joined by Judges Schall and Wallach). Perhaps the most...
Automated Crop Growing and Monitoring Patents Pass Alice Test: Vineyard Investigations v. E. & J. Gallo Winery
In denying a motion to dismiss for lack of patent-eligible subject matter under 35 U.S.C. § 101, a court determined that U.S. Patents 8,528,834 and 6,947,810, relating to using sensors and data for growing and automated monitoring of crops, specifically grapevines, were not directed toward abstract ideas and sufficiently stated an inventive concept to be patent eligible. Vineyard Investigations v....
NantWorks, LLC v. Niantic, Inc.: Reconciling Transactions Between Players of an Online Video Game is not Patent-Eligible
In Nantworks v Niantic., the Northern District of California held that peer-to-peer online transaction reconciliation that uses a physical location of one of the participants is an abstract idea that is not patent-eligible subject matter under 35 U.S.C. § 101. No. 20-cv-06262 (N.D. Cal. Jan. 4, 2021). Plaintiff NantWorks asserted U.S. Patent No. 10,614,477 against Niantic. The ‘477 patent is...
Simio, LLC v. FlexSim Software Products, Inc.: Important Precedent for § 101 Patent-Eligibility of Software (or Lack Thereof)
The Federal Circuit ended 2020 with a precedential opinion holding that patent claims directed to providing a graphical user interface for controlling a software object’s behavior were patent-ineligible under the Alice/Mayo test and 35 USC § 101. Simio, LLC v. FlexSim Software Products, Inc., No. 2020-1171 (December 29, 2020; opinion by Chief Judge Prost, joined by Judges Clevenger and Stoll)....
No Stay for Supreme Court Petition in American Axle & Mfg. v. Neapco Holdings
In the latest episode of the closely watched case American Axle v. Neapco, the Federal Circuit denied American Axle’s motion to stay pending its petition for writ of certiorari to the Supreme Court. The case started as an infringement action for U.S. Patent No. 7,774,911, covering a method of manufacturing driveline propeller shafts. In a panel decision, the Federal Circuit...
Image Display Patents Fail Alice Test: Gabara v. Facebook, Inc.
In granting a motion to dismiss for lack of patent-eligible subject matter under 35 U.S.C § 101, a court determined that patents relating to moving a portable unit to view an image of a stationary map and using a portable wireless system to improve the operations of a group communicating electronically are abstract ideas that do not include an inventive...