Knobbe/Martens: Intellectual Property Law

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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.


Invalidating Patents Under §101 in the Early Stages of Litigation Still Possible Post-Berkheimer and Aatrix

December 3, 2018 Suyoung Jang and Cheryl T. Burgess

Patent eligibility challenges under 35 U.S.C. §101 have been effective tools for defendants to obtain early dismissal of a case without extensive fact finding since the Supreme Court ruling in Alice. Whether a claim recites patent eligible subject matter is a question of law.[1] Thus, defendants can challenge patent eligibility at the outset of the case, either through a motion to dismiss under 12(b)(6) or on a motion for summary judgment, with the goal of concluding the litigation without incurring the expense of discovery and trial. 


The USPTO's Director Iancu Discusses Options for § 101 Reform

November 6, 2018 Keith Lim and Russell Jeide

For both patent Applicants and Patent Office Examiners, the Supreme Court’s 2014 Alice Corp. v. CLS Bank International decision has created ongoing uncertainty as to the proper scope of subject matter that should be excluded from patent protection.  Since the Alice decision, there have been over 40 relevant decisions at the Court of Appeals for the Federal Circuit (and many more at the lower courts) that each attempt to interpret Alice in applying 35 U.S.C. §101.  However, many examiners in the business method art units have allowed only a handful of application since the Alice decision, and many patent applicants have abandoned their patent applications after repeated rejections under section 101. 


Federal Circuit Further Expands the Role of Factual Questions in Section 101 Analysis

October 22, 2018 Bryan McWhorter and Philip M. Nelson

In the recent decision of Data Engine Technologies LLC v. Google LLC, the Federal Circuit may have expanded how factual questions underpin subject matter eligibility analysis under Section 101.  Since the two-part eligibility analysis was established by Alice v. CLS Bank,[1] courts have repeatedly emphasized that eligibility is a question of law, not fact.[2]  Courts have used this rationale to justify holding claims patent-ineligible without considering extrinsic evidence.[3]  Often, this leads to early dismissals of infringements suits, which limit patent holders’ ability to present evidence in support of their patents.


How Unpredictable is the Alice Analysis?

October 16, 2018 Jeremy Anapol and Andrew B. Schwaab

Over the last year, several Federal Circuit judges have filed opinions lamenting the state of the case law that interprets the abstract idea exception to patent eligibility under 35 U.S.C. § 101.  For example, Judge Linn wrote in Smart Systems that the “problem” with the Supreme Court’s test “is that it is indeterminate.”[i]  Similarly, Judge Plager wrote in Interval Licensing that the “incoherent body of doctrine” applying Alice makes it “near impossible to know with any certainty whether the invention is or is not patent eligible.”[ii]  Many practitioners agree that § 101 decisions are difficult to predict and the state of the case law exacerbates this difficulty.  This article considers affirmance data to explore whether it supports the premise that § 101 decisions are not just difficult but fundamentally “indeterminate” or “near impossible” to resolve. 



BSG Tech LLC v. BuySeasons, Inc.

October 11, 2018 Jordan M. Cox and Ted M. Cannon

In BSG Tech LLC v. BuySeasons, Inc., the Federal Circuit held that a patent claim is ineligible under § 101 when its only allegedly unconventional feature is an abstract idea.[1]  The Federal Circuit affirmed the judgment of the U.S. District Court for the Eastern District of Texas that the claims are ineligible because they claim nothing more than the abstract idea of considering historical usage information while inputting data.[2]


PurePredictive, Inc. v. H2O.AI, Inc.: Northern District of California Invalidates Machine Learning Claims Under Section 101

September 14, 2018 Lauren Hockett and Vlad Teplitskiy

Machine learning is one of the fastest growing categories of granted patents[1].  However, there do not appear to be many examples of patent infringement lawsuits where machine learning claims have been analyzed by the courts under the patent-eligibility framework set forth in Alice[2]


Banks Hate Cryptocurrency, But Are Filing Patents Anyway

August 31, 2018 Bridget A. Smith

Blockchain is a technological innovation underlying cryptocurrencies like Bitcoin. Given the importance of cryptocurrencies not only for buying and selling goods and services, but also as funding and investment vehicles, the underlying blockchain technology is obviously of interest in the fintech space.

USPTO Revises Examination Procedure after Berkheimer

The U.S. Patent and Trademark Office has issued new guidance to patent examiners in light of the Federal Circuit’s recent holdings in Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018) and Aatrix Software, Inc. v. Green Shades Software, Inc., 882 F.3d 1121 (Fed. Cir. 2018). The new guidance emphasizes that a patent examiner’s conclusion as to whether elements of a patent claim represent “well-understood, routine, conventional activity” must be based on a factual determination, and that the factual determination must be supported in writing if the Examiner rejects a claim on those grounds.


Improved User Interface Survives Section 101 Challenges

In Core Wireless Licensing S.A.R.L. v. LG Electronics, Inc., the Federal Circuit held that user interface claims are patent eligible under 35 U.S.C. § 101 because they “recite a specific improvement over prior systems, resulting in an improved user interface for electronic devices.” Core Wireless Licensing S.A.R.L. v. LG Elecs., Inc., 880 F.3d 1356, 1363 (Fed. Cir. 2018). The court determined that the claims are directed to “a particular manner of summarizing and presenting information in electronic devices” and that the claims do not “us[e] conventional user interface methods to display a generic index on a computer.” Id.



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