USPTO Subject Matter Eligibility Guidance Does Not Carry the Day in Court

In Cleveland Clinic Foundation v. True Health Diagnostics LLC (nonprecedential), the Federal Circuit affirmed the district court’s order granting defendant’s Rule 12(b)(6) motion to dismiss because the asserted patent claims are invalid under Section 101. The two asserted patents issued from applications that claimed priority to a patent that the Federal Circuit had found invalid … Continue reading USPTO Subject Matter Eligibility Guidance Does Not Carry the Day in Court

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

Federal Circuit and USPTO Turn Corner on Software Patent Eligibility

Previously featured on Michael Best’s Software and Section 101 blog in June of 2016, Michael Best IP attorney Greg Helding wrote: In May 2016, the U.S. Court of Appeals for the Federal Circuit decided Enfish, LLC v. Microsoft Corp and TLI Communications LLC v. A.V. Automotive. These decisions, along with related guidance from the U.S. Patent and Trademark Office (USPTO), may … Continue reading Federal Circuit and USPTO Turn Corner on Software Patent Eligibility

USPTO Announces New Guidance on Post-Alice Subject Matter Eligibility

Previously featured on Michael Best's Software and Section 101 blog in December of 2014, Michael Best IP attorney Greg Helding wrote: "On December 15, 2014, the United States Patent and Trademark Office released its 2014 Interim Guidance on Patent Subject Matter Eligibility. The new guidance supplements the June 24, 2014 Preliminary Examination Instructions that were issued shortly … Continue reading USPTO Announces New Guidance on Post-Alice Subject Matter Eligibility