IP Blog
Patent-Eligibility Guidance
Patent Owner Loses under § 101 in CBM Where Claims Not Limited to Technological Innovation Allegedly Disclosed in Patent Specification
All claims of a patent directed to a “security-based order processing technique” are unpatentable under 35 U.S.C. § 101, said the Patent Trial and Appeal Board (PTAB) in a final written decision in a Covered Business Method Review. Miami Int’l. Holdings, Inc. v. NASDAQ, Inc., CBM2018-00030, Patent 7,921,051 B2 (PTAB October 3, 2019). The decision is instructive for two reasons....
Courts Don’t Follow the PTO’s § 101 Patent-Eligibility Guidance so Why Should You?
The Federal Circuit’s recent dicta in a non-precedential decision stating that it need not give deference to the USPTO’s 35 U.S.C. § 101 patent-eligibility guidance highlights the challenges faced by patent applicants. In Cleveland Clinic Foundation v. True Health Diagnostics LLC, No. 2018-1218 (Fed. Cir. April 1, 2019), the court affirmed a District Court’s grant of a Rule 12(b)(6) motion...
PTAB: Derivatives Trading Patent Claim Passes Alice Test, Opinion Designated “Informative”
Here is a sign that the USPTO’s January, 2019, guidance on 35 U.S.C. § 101 and patent-eligibility may have an immediate and significant impact on USPTO rejections under the Mayo/Alice abstract idea test. The guidance became effective January 7, 2019. The Patent and Trial and Appeal Board (PTAB) soon thereafter decided In re Smith (Appeal No. 2018-000064; Application 13/715,476; Feb....
New USPTO Patent-Eligibility Guidance Is a Material Change
Effective January 7, 2019, United States Patent and Trademark Office patent examiners and PTAB judges will be operating under new guidance for evaluating subject matter eligibility. Specifically, the USPTO is changing its interpretation and application of the first step of the two-part Alice/Mayo test. (Step one is whether claims are directed to a judicial exception such as an abstract idea, and step two...