Knobbe/Martens: Intellectual Property Law

Philip M. Nelson

Subscribe to Philip M. Nelson's posts

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.


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).

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.



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.


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.


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.


Attorney Finder