Knobbe/Martens: Intellectual Property Law

Section 101

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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. 

Multi-level Encryption Patent Survives § 101 Challenge in District Court

July 10, 2017 Chang Lim and Michael L. Fuller

On May 23, 2017, the District Court for the Eastern District of Virginia (“District Court”) denied a motion for summary judgment that the patent claims asserted in a lawsuit brought by TecSec, Inc. (“TecSec”) are invalid under 35 U.S.C. § 101.[1]  

Ex Parte Hafner Provides Clarity in Assessing Patent Subject Matter Eligibility for Software Patents

July 5, 2017 Keith Lim and Maria Anderson

In Ex Parte Hafner, the U.S. Patent and Trademark Office Patent Trial and Appeal Board (the “Board”) reversed the Examiner’s rejection that claims directed to an energy transaction plan were subject-matter ineligible.  Ex parte Hafner et al., No. 2015-002200 (P.T.A.B. Jan. 31, 2017).  This decision provides guidance for navigating the changing landscape of software patents in a post-Alice era.

Easyweb v. Twitter and the Rise of the Non-Precedential Opinion

July 5, 2017 Damien Howard and Lincoln S. Essig

In a non-precedential opinion, the Federal Circuit affirmed the district court’s ruling that the claims at issue in Easyweb Innovations, LLC. v. Twitter, Inc. (“Easyweb”) were directed to patent-ineligible subject matter. The parties agreed that claim 1, reproduced below, of the 7,685,247 patent represented the claims at issue.


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