Two recently issued decisions by federal courts highlight the uncertainty around claims to software-implemented inventions after the Supreme Court decision in Alice v. CLS Bank.  Both decisions relate to the patent eligibility of software that uses rules to process information and generate resultant data.  In both cases, the claimed inventions use software to automate tasks that otherwise may be done by humans, with results that are apparently more accurate than prior systems.  However, the court in the first case held that the claims were invalid under 35 U.S.C. § 101 for claiming unpatentable subject matter, while the court in the second case reached the opposite outcome.

On August 29, 2016, the Regents of the University of Minnesota (“the University”) filed suit against Gilead Sciences (“Gilead”) for patent infringement in the District Court for the District of Minnesota. According to the complaint, the University alleges that Gilead’s sale of drugs containing the nucleotide analog sofosbuvir infringes their U.S. Patent No. 8,815,830 (the ’830 patent).

During its August Patent Quality Chat, the USPTO discussed the recently launched Patent Prosecution Pilot Program (P3). The P3 program is a hybrid of the After-final Consideration Pilot (AFCP 2.0), which has been available since 2013, and Pre-Appeal Brief Conference Pilot Program, which has been available since 2005. It is intended to offer applicants an alternative avenue to request reconsideration of a final Office Action without filing a RCE or an appeal before PTAB.  However, the program only runs for four more months, and there are a limited number requests available for Technology Center 1600, so you need to act soon.

TDE Petroleum Data Solutions, Inc. v AKM Enterprise, Inc. is one of several recent Federal Circuit cases concluding that pure data processing claims—that is, claims directed to merely collecting, analyzing, and outputting data—are not patent-eligible subject matter under 35 U.S.C. § 101.  In TDE Petroleum, the Federal Circuit invalidated claims to a process of receiving reported data about an oil well operation, analyzing the data, and determining the state of the oil well operation.

Applicants embarking on the journey of preparing and prosecuting a patent application can have a difficult time navigating the ever changing legal waters.  One struggle is answering the question, “Are my claims patent eligible under 35 U.S.C. § 101?”  A recent decision from the Federal Circuit in Electric Power Group, LLC v. Alstom S.A. provides some helpful waypoints. Case No. 2015-1778 (Fed. Cir. Aug. 1, 2016).

The Supreme Court’s 2014 decision in Alice Corp. v. CLS Bank Int’l, 134 S.Ct. 2347 (2014) (“Alice”) has had a significant impact on the patent eligibility of software-implemented inventions under 35 U.S.C. § 101.  In Alice, the Supreme Court held that patent claims relating to mitigating settlement risk in financial transactions using a computer system were patent ineligible. In doing so, the Court set forth a two-part patent eligibility test: 1) Are the claims directed to a patent ineligible concept (e.g., abstract idea); and 2) If so, do the claims amount to significantly more than the patent ineligible concept itself?

The European unitary patent and Unitary Patent Court (UPC) are slated to go into effect in early 2017. These monumental changes will have a significant impact on the ways patent rights are obtained and enforced in Europe.

On July 19, 2016, the District Court for the Western District of Washington (“Court”) dismissed a patent suit because the asserted patents (U.S. Patent Nos. 8,682,959 and 9,049,267) cover ineligible subject matter.  See Appistry, Inc., v. Amazon.com, Inc., et al., Case No. C15-1416RAJ (W.D. Wash. July 19, 2016) (“Order”).  The patents in suit relate to using “[a] hive of computing engines . . . to process information.”  See ‘959 Patent at 8:32-33.  

On July 14, 2016, the U.S. Patent and Trademark Office issued new subject matter eligibility guidance for life science claims following a ruling by the Federal Circuit in Rapid Litigation Management v. CellzDirect, No. 15-1570 (Fed. Cir. July 5, 2016), and the Supreme Court’s decision to deny certiorari in Sequenom v. Ariosa, (788 F.3d 1371 (Fed. Cir. 2015) (cert. denied).  The USPTO noted that the cases do not change the subject matter eligibility framework, but rather “provide additional information and clarification on the inquiry for determining whether claims are directed to a judicial exception” (step one of the Mayo/Alice test).

A recent Federal Circuit decision in Bascom Global Internet Services, Inc. v. AT&T Mobility LLC, gives patent owners another illustration of patent subject matter eligibility under section 101.