IP Blog
35 USC 101
Easy CAFC Patent-Eligibility Case: Digital Product Licensing
In a one-line order under its Rule 36, the Federal Circuit has affirmed a decision of Judge Schroeder in the Eastern District of Texas granted a Rule12(b)(6) motion to dismiss claims of patent infringement where claims were directed to “adjusting the number of devices allowed to use a digital product (e.g., software) under a license.” Uniloc, USA, Inc. v. Amazon.com,...
How Is Collateral Estoppel Applied to Patent Invalidity?
A California court has held that a defendant is collaterally estopped from asserting patent-ineligibility under 35 USC § 101 because the defendant, in prior litigation, lost a post-trial motion in which it evidently raised other theories of patent invalidity, even if not § 101 invalidity. XpertUniverse, Inc. v. Cisco Systems, Inc., No. 17-cv-03848-RS (N.D. Cal. May 8, 2018). Notably, the...
CAFC: Alice Not a Change in Law Preventing Issue Preclusion
A Federal Circuit panel (Judges Lourie, Newman, and Reyna) has rejected a district court’s statement that Alice Corp. v. CLS Bank Int’l., was “an intervening change in the law” that would “exempt a potential application of issue preclusion.” However, after finding that patent-eligibility was not previously litigated, the court held that issue preclusion did not prevent a determination that claims...
Mass Spectrometry Method Not Patent Eligible in Ex Parte Appeal
The PTAB held that the claims in Ex parte Quimby, Appeal No. 2016-004681 (June 2, 2017) were directed toward unpatentable subject matter. Of particular interest given the claim language, the Appellant was unsuccessful with arguments that 1) the claims do not disproportionately tie up the use of any underlying idea, 2) the claim provides an improvement in the technological field...
The Latest USPTO Patent-Eligibility Guidance (April 2017)
As you probably know, the USPTO maintains a “subject matter [patent-]eligibility” web page with a plethora of information. Most recently, on April 26, 2017, the Office posted a “quick reference sheet” illustrating decisions bearing on patent-eligibility analysis under 35 U.S.C. § 101 and the Mayo/Alice test. Other documents, if you haven’t already taken a look, include guidance for examiners, memoranda...
E.D. Texas Splits Patent-Eligibility of E-Mail Patents
Considering two e-mail patents, Judge Gilstrap of the Eastern District of Texas deferred a patent-eligibility determination of one of the patents as premature prior to claim construction, but held that claim construction was not required for claims of the second patent to be deemed patent-ineligible under the Mayo/Alice patent-eligibility test. Umbanet, Inc. v. Epsilon Data Management, LLC, No. 2:16-CV-682-JRG (E.D....
CAFC: Handling Search Queries Is Not Patent-Eligible
A Federal Circuit Panel needed little analysis to determine that retrieving and displaying information is not patent-eligible subject matter, and affirmed a district court’s dismissal of a suit alleging infringement of claims of three patents. West View Research, LLC v. Audi AG, Nos. 2016-1947, 2016-1948, 2016-1949, 2016-1951 (Fed. Cir. April 19, 2017) (non-precedential). The patents, which shared a written description,...
PTAB Panel Can’t Agree on Patent-Eligibility
Lest anyone think that patent-eligibility determinations at the USPTO’s Patent Trial and Appeals Board (PTAB) are easy, even in appeals in ex parte patent prosecution, consider the recent case of Ex parte Plondke, Appeal 2016-006905, Application 13/241,673 (PTAB April 3, 2017). The claims at issue were directed to data processing software patents, specifically to an improved technique for searching for...
E.D. Texas: Digital Product Licensing Not Patent-Eligible
Patent claims directed to “adjusting the number of devices allowed to use a digital product (e.g., software) under a license” are not patent-eligible, says Judge Robert W. Schroeder of the Eastern District of Texas. Uniloc, USA, Inc. v. Amazon.com, Inc., Civil Action No. 2:16-CV-00570-RWS (Lead) (E.D. Texas, March 20, 2017). Thus, Judge Schroeder granted a motion to dismiss brought under...
Alice Changed Law, No Issue Preclusion on Patent-Eligibility
Where a patent had survived a challenge under 35 U.S.C. § 101 in prior litigation between the parties, issue preclusion did not prevent a court from revisiting the question, and invalidating the patent claims, because, the court said, Alice Corp. v. CLS Bank Int’l., 134 S. Ct. 2347 (2014), represented a change in the law. Voter Verified, Inc. v. Election...