Knobbe/Martens: Intellectual Property Law

Section 101

Patent Claims Reordering Conventional Steps May Be Ineligible Under § 101

July 30, 2019 Adam R. Aquino and Andrea Cheek


Before Chen, Hughes, and Stoll. Appeal from the United States District Court for the District of Minnesota

Summary: Method claims directed to performing conventional steps in a new order may be insufficient to render claims patent eligible under § 101.


The Impact of Fact Issues on Patent Eligibility after Berkheimer

June 19, 2019 Jeremy Anapol

The Federal Circuit’s 2018 decision in Berkheimer v. HP Inc. was likely the most consequential development in patent eligibility since the Supreme Court introduced its two-part eligibility framework in Alice Corp. v. CLS Bank and Mayo Collaborative Services v. Prometheus Laboratories. Alice and Mayo had a dramatic impact on patent law, paving the way for lower courts to invalidate thousands of claims from hundreds of patents for failure to claim patent-eligible subject matter under 35 U.S.C. § 101. Berkheimer tempers Alice and Mayo by imposing procedural requirements that may insulate patent claims from § 101 challenges.

101 Patent Reform Progressing in Congress

On May 22, 2019, a bipartisan committee of the U.S. Senate and House released a draft bill on § 101 reform, in a further attempt to reduce procedural obstacles for patent applicants.  

The draft bill would change the existing statutory language of 35 U.S.C. § 101 as shown here:

Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.


Cleveland Clinic II: Has the Federal Circuit Undermined Patent Office Guidance and Eliminated an Important Tool for Patenting Diagnostics?

On April 1, 2019, the Federal Circuit issued a non-precedential decision in Cleveland Clinic Foundation, Cleveland HeartLab, Inc. v. True Health Diagnostics LLC (“Cleveland Clinic II”), affirming the district court’s holding that claim 1 of U.S. Patent No. 9,575,065 (the “ ’065 patent”) and claims 1 and 2 of U.S. Patent No. 9,581,597 (the “’597 patent”) were invalid under 35 U.S.C. § 101 as being directed to a patent-ineligible law of nature.  In its decision, the Federal Circuit held that the courts are not bound by United States Patent and Trademark Office (USPTO) guidance, and concluded that a portion of the USPTO’s guidance on subject matter eligibility was inconsistent with controlling judicial precedent.


Legislators Propose “Section 101 Reform”

Yesterday Democrat and Republican legislators from both the Senate and the House of Representatives released a one page outline of a proposal to change the law of patent eligibility.  The legislators supporting this proposal include Senator Thom Tillis (R-NC); Senator Chris Coons (D-DE); Rep. Doug Collins (R-GA-9); Rep. Hank Johnson (D-GA-4); and Rep. Steve Stivers (R-OH-15).

2019 Eligibility Guidance Leads to Unpredictable Results at the PTAB

February 15, 2019 Bryan McWhorter and Russell Jeide

In January of 2019, the Patent Office, under Director Iancu, issued new guidance to all USPTO personnel evaluating patent subject matter eligibility under the requirements of 35 USC Section 101.  The guidance sought to add certainty to what has been widely recognized as an unpredictable area of law.  (See more about the new guidance at our prior post on the subject.)  The view of most practitioners appears to be that the new guidance is positive for applicants, particularly for patent applications directed to software‑related inventions.  But seasoned patent applicants will recognize that many examiners have their own interpretations of examination guidelines—often not in line with that of the applicant.  And when an applicant is unhappy with a rejection, the next step is generally an appeal to the Patent Trial and Appeal Board.



Big Picture on Software Patent Eligibility: The Forces at Work

January 25, 2019 Philip M. Nelson

Much of the modern economy is driven by software development.  Companies are creating and refining new apps that run on mobile devices, and using machine learning to provide users with personalized user interfaces and content.  Consumers expect intuitive and polished interfaces.  After devoting significant energy and resources to developing software, many companies seek to protect their intellectual property.  Unfortunately, a bewildering legal gauntlet confronts them.  At the threshold of this gauntlet lies a major obstacle: is their software even “eligible” for patent protection?


New 101 Guidance from USPTO – What Does It Change?

January 8, 2019 Philip M. Nelson and Jordan M. Cox

On January 4th, the USPTO announced revised guidance for subject matter eligibility (Section 101 Revised Guidance) and stated it would take effect when published on Monday, January 7, 2019.



Clarity and Progress at the USPTO: The USPTO Publishes Revised Guidance on Patent Eligible Subject Matter

January 7, 2019

On Monday, January 7, 2019, a revised guidance for subject matter eligibility (USPTO Section 101 Revised Guidance) will take effect at the USPTO. With the newly revised guidance, the USPTO aims to clarify and standardize the patent eligibility analysis under the Alice/Mayo framework. 

Will New PTO Guidance Be The Antidote to Alice In The Medical Device Patenting Process?

December 5, 2018 Philip M. Nelson and Ronald J. Schoenbaum

Medical devices are increasingly incorporating software and other computer elements, but software and computer patents are in the middle of a multi-year battle between different worldviews.  This battle is destined to trap more and more medical device patents in a strange procedural limbo.



Attorney Finder