In the wake of Alice_[1] the waters of eligibility under section 101 can be challenging to navigate, and particularly so for those seeking to obtain or enforce software patents.  A two-part test for eligibility is the standard, with step one determining if a claim is directed to an abstract idea.

On November 21, 2016, the U.S. Court of Appeals for the First Circuit upheld a 2014 jury verdict for AstraZeneca (AZ) and Ranbaxy regarding a 2012 payment of $700 million from AstraZeneca for Ranbaxy to abandon its challenge to patents covering Nexium®. 

In a case before the Trademark Trial and Appeal Board (“Board”), the Board cancelled and abandoned the trademark registration and trademark application for the I ♥ DC marks owned by an individual, Jonathan A. Chien (“Chien”) on the ground that the marks do not function as a trademark.

The Mayo/Alice two-step patent-eligibility framework focuses on the patent claims.  Nevertheless, recent Federal Circuit decisions have relied on patent specification statements to support holdings that the claims are patent-eligible because they include an “inventive concept” under Alice step two.

For the third time in two months, the Federal Circuit took on patent subject-matter eligibility in Amdocs (ISRAEL) Ltd. v. Openet Telecom, Inc.  In a divided opinion, the Federal Circuit reversed the district court and held Amdoc’s patent on “a system designed to solve an accounting and billing problem faced by network providers” to be patent eligible.

In 2009, the U.S. Patent and Trademark Office rejected shoe manufacturer Adidas’s application to trademark the phrase “ADIZERO,” due to a likelihood of confusion with an existing mark: “ADD A ZERO,” a clothing trademark held by the Christian Faith Fellowship Church of Zion, Illinois.  The Church used the phrase on caps and other apparel that it sold for fundraising purposes.

The Federal Circuit’s recent decision in Synopsys, Inc. v. Mentor Graphics Corp., Case No. 2015-1599 (Fed. Cir. Oct. 17, 2016), upholding the lower court’s grant of summary judgment of invalidity under § 101, may provide another tool to patent challengers wishing to invalidate claims arguably reciting mental processes. In deciding the case, the Federal Circuit relied on the two-step analytical framework of Mayo/Alice, and found that the claimed methods were directed to unpatentable abstract ideas without reciting “significantly more.”

On Wednesday, November 9, 2016 the estate of Marilyn Monroe filed a complaint in the Southern District of New York against Fashion Central.  The Monroe Estate claims that Fashion Central infringes its intellectual property rights in the MARILYN MONROE mark, among other things, by selling the following garments:

The increased prominence of Section 101 in computer-related patent disputes stems from the Supreme Court case of Alice Corp. v. CLS Bank.[1]  Before Alice reached the Supreme Court, ten judges of the Federal Circuit considered the case en banc.[2]  The viewpoints of those ten judges were so thoroughly divergent that the court issued six separate opinions, and no explanation of the law garnered majority support.

In February of 2013, high-end jeweler Tiffany & Co. sued Costco Wholesale Corp. in the federal court for the Southern District of New York for using the designation “Tiffany setting” since 2007 in the sale of two styles of engagement rings.   According to the complaint, a sign in a Costco store in Huntington Beach, California stated: “605880 – PLATINUM TIFFANY VS2.1 1.00CT ROUND BRILLIANT SOLITAIRE RING 6399.99.”  Costco did not use the “Tiffany” designation in connection with any of its online advertising.