A Good Reminder that Electrical Claims and Specifications Should Focus on the How, not Just the What

In today’s post-Alice landscape, patent practitioners have developed a gut-feeling about patent eligibility that helps them in various aspects of daily life: advising clients regarding asserted patents, developing office action responses, probing questions in invention disclosure meetings, and drafting effective patent applications, to name a few. If an inventor came to me and said their … Continue reading A Good Reminder that Electrical Claims and Specifications Should Focus on the How, not Just the What

Ex Parte Smith – The Name of the Game is the Claim (and the Specification)

As a follow-up to the post on the release of the 2019 Revised Patent Subject Matter Eligibility Guidance on January 7, 2019, (“Revised Guidance”), the Patent Trial and Appeal Board (“PTAB”) recently decided Ex Parte Smith Appeal No. 2018-000064 on February 1, 2019, in view of the Revised Guidance. The PTAB also designated the decision … Continue reading Ex Parte Smith – The Name of the Game is the Claim (and the Specification)

Even Konami Code Couldn’t Rescue Its Slot-machine Game-related Patents from being Invalidated under Alice

If you’re a child of the 80’s, the name Konami likely takes you back to sitting in front of a tube TV playing some Konami-created game on your Nintendo Entertainment System. For me, my two favorite Konami games were undoubtedly Contra and Gradius. Then, there was the “Konami code” (↑↑↓↓←→←→BA) entered quickly at the beginning … Continue reading Even Konami Code Couldn’t Rescue Its Slot-machine Game-related Patents from being Invalidated under Alice

USPTO Issues New Guidance on Subject Matter Eligibility

Previously featured on Michael Best’s Software and Section 101 blog on January 29, 2019, Michael Best IP attorney Greg Helding wrote: In 2014, the Supreme Court’s Alice took computer-implemented inventions down the rabbit hole. Since then, lower courts, the USPTO, practitioners, and applicants all have struggled to come to consensus on what constitutes an abstract idea, and … Continue reading USPTO Issues New Guidance on Subject Matter Eligibility

Eyes on Alice: In a 2-1 Decision Federal Circuit Finds Patent for Detecting Body Temperature at the Forehead Patent-Eligible Subject Matter

Previously featured on Michael Best’s Federal Circuit Weekly blog in March of 2018, Michael Best IP attorney A.J. Bianchi wrote: The Federal Circuit issued a non-precedential decision delineating between patent-eligible and patent-ineligible improvements in technology related to taking a person’s temperature using a computerized thermometer. On March 8, 2018, the Federal Circuit affirmed that U.S. Patent Nos. … Continue reading Eyes on Alice: In a 2-1 Decision Federal Circuit Finds Patent for Detecting Body Temperature at the Forehead Patent-Eligible Subject Matter

Eyes on Alice: Federal Circuit Weighs Patent Eligibility of Patent Claims Concerning the Digital Processing and Archiving of Files in a Digital Asset Management System

Previously featured on Michael Best’s Federal Circuit Weekly blog in February of 2018, Michael Best IP attorney A.J. Bianchi wrote: The Federal Circuit issued another precedential decision adding to its line of cases delineating between patent-eligible and patent-ineligible improvements in computer-related technology. On February 8, 2018, the Federal Circuit affirmed that U.S. Patent No. 7,447,713 … Continue reading Eyes on Alice: Federal Circuit Weighs Patent Eligibility of Patent Claims Concerning the Digital Processing and Archiving of Files in a Digital Asset Management System