Knobbe/Martens: Intellectual Property Law

Section 101

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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.


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. 




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