Knobbe/Martens: Intellectual Property Law

Section 101

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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.


Recent Federal Circuit Decisions Emphasize Effect of Factual Questions on Patent Eligibility

March 14, 2018 Jeremy Anapol

In two recent cases, the Federal Circuit addressed the role of factual questions in resolving patent eligibility under 35 U.S.C. § 101.  The first case was Berkheimer v. HP Inc. and the second was Aatrix Software v. Green Shades Software.[1]  These cases possibly undercut the holdings of previous cases in which the Federal Circuit routinely affirmed judgments invalidating patent claims under § 101 in the early stages of litigation, when factual questions are typically unresolved.[2]


Even Non-Obvious Patent Claims May Lack Inventive Concepts

December 22, 2017 Jeremy Anapol and Maria Anderson

In the recent Two-Way Media v. Comcast decision, the Federal Circuit affirmed a district court’s holding that evidence of non-obviousness was irrelevant to patent eligibility under the Supreme Court’s two-step Alice framework.[1]  The Federal Circuit’s holding in Two-Way Media is consistent with the prior Federal Circuit and Supreme Court cases holding that novelty and even groundbreaking brilliance may be irrelevant to patent eligibility.[2]  However, this precedent seems to be in tension with other cases stating that patent eligibility depends on a comparison between the claimed subject matter and the prior art.[3]  One way to reconcile this tension may be to recognize the distinct questions that must be answered when comparing patent claims to prior art for novelty, non-obviousness, and eligibility purposes, respectively.

Searching for How: The Federal Circuit’s Continued Quest under Alice

November 10, 2017 Christopher M. DiLeo and Derek M. Abeyta

On October 16, 2017, the Federal Circuit affirmed the district court’s ruling that the claims in Secured Mail Solutions LLC, v. Universal Wilde, Inc. (“Secured Mail”) were directed to patent-ineligible subject matter under 35 U.S.C. § 101.  This ruling provides another data point as to what level of concreteness and specificity courts should consider when analyzing patent-eligibility questions under § 101.

Guide to the U.S. Patent Office’s Materials on Subject Matter Eligibility

October 11, 2017 Lauren Hockett and Vlad Teplitskiy

Since 2014, the USPTO has periodically issued examination guidance, analysis examples, and other insights to guide evaluation of patent subject matter eligibility under 35 U.S.C. § 101.  These documents are available on the USPTO’s website and can be helpful in crafting arguments for or against the patent eligibility of claims during examination or in litigation.  The summary below is intended to assist the reader in locating relevant materials for a particular eligibility inquiry.

Visual Memory v. Nvidia – Configurability of memory system found to be a basis for patent-eligibility

September 11, 2017 Damien Howard and Ronald J. Schoenbaum

The Federal Circuit recently decided a patent subject-matter eligibility case relating to computer memory in Visual Memory LLC v. Nvidia Corp.   In a divided opinion, the Federal Circuit reversed the district court and held Visual’s patent relating to “an enhanced computer memory system” as patent eligible.

The Role of Analogies in the Alice Analysis

September 8, 2017 Jeremy Anapol and Michael L. Fuller

Courts increasingly rely on analogies to show that claims are not directed to patent-eligible subject matter under 35 U.S.C. § 101.  For example, in Context Extraction and Transmission v. Wells Fargo Bank, the Federal Circuit found that the claimed method of information processing was analogous to the way that “banks have, for some time, reviewed checks, recognized relevant data such as the amount, account number, and identity of account holder, and stored that information in their records.”

Interplay Between “Technological Invention” and “Significantly More” in PTAB CBM Review

On July 18, 2017, the United States Patent and Trademark Office Patent Trial and Appeal Board (“PTAB”) instituted a covered business method (“CBM”) patent review for U.S. Patent No. 8,955,029 (“the ’029 patent”) on grounds of unpatentability under 35 U.S.C. § 101.[1]

District Court Awards Attorney’s Fees after Holding That Plaintiff Had Repeatedly Sought to Avoid a Section 101 Ruling

July 27, 2017 Scott Forbes and Andrew Schwaab

In Shipping and Transit, LLC v. Hall Enterprises, Inc., a district court recently held that a patent infringement case was “exceptional” under 35 U.S.C. § 285 and the defendant was entitled to recover attorney fees and costs from the plaintiff. The court’s ruling was in part because the plaintiff’s position was “objectively unreasonable” with regard to the validity of asserted claims under 35 U.S.C. § 101. 


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