News / Insights

The next installment of my continuing webinar series on patentable subject matter (since 2014) is on March 17. This webinar will focus on the wide chasm between the Federal Circuit’s view and the USPTO’s view of the patent eligibility of AI and Business methods. Patent counsel should be aware of whether the patents the USPTO…

The Fed. Cir. today struck down file-comparison claims for failing to recite patent eligible subject matter under 35 U.S.C. § 101 in Oasis Tooling v. Siemens Industry Software (nonprecedential). Apparently, at the time of the invention, “conventional tools for designing semiconductor chips had a recurring problem: they were unable to recognize when cells were functionally…

The Fed. Cir. just created a lot of confusion in my mind when it struck down today another AI patent for failing to recite patent eligible subject matter under 35 U.S.C. § 101 in Rensselaer Polytechnic Inst. v. Amazon (nonprecedential). Obviously, this is another blow to the patent eligibility of AI after Recentive, and I’ll…

The Fed. Cir. just issued a very interesting biotech patentable subject matter case under 35 U.S.C. § 101: REGENXBIO v. Sarepta Therapeutics. The reason why I find it interesting is because the court addressed whether the Alice/Mayo test applies to a natural phenomenon. The case involves host cells that include a recombinant nucleic acid molecule…

The Federal Circuit today gave us some nice clarity on step one of Alice’s patentable subject matter analysis under 35 U.S.C. § 101 in GoTV Streaming v. Netflix. I plan on emphasizing this case in my articles, webinars, and speeches.

As promised yesterday, here’s a pretty exhaustive list of abstract ideas found by the Fed. Cir. post Alice (and a few interesting legal points on step one). I don’t list duplicates. For example, I don’t list all of the variations of abstract ideas that fall under Electric Power Group. Perhaps I’ll save that for another…

The Fed. Cir. today struck down claims directed to providing product location information within a store for failing to recite patentable subject matter under 35 U.S.C. § 101 in Innovaport v. Target (nonprecedential). This was a nice, meaty decision (unlike the one I posted about earlier today). Perhaps this is because the claims not only…

The Fed. Cir. yesterday issued a conclusory, patentable-subject-matter opinion under 35 U.S.C. § 101: Q Technologies v. Walmart (nonprecedential). The court basically just agreed with the district court in finding the claims patent ineligible with little, if any, explanation/analysis. The lesson to be learned here is that if a contested claim can be characterized as…

The Fed. Cir. today struck down a web-conferencing patent for failure to recite patent eligible subject matter under 35 U.S.C. § 101: US Patent No. 7,679,637 v. Google. This is not a typo; the name of the plaintiff-appellant is this patent number. Overall, there is nothing surprising in the case, but the court had a…

Here’s an interesting patentable subject matter case under 35 U.S.C. § 101. On Friday, the Federal Circuit seemingly used Electric Power Group as its primary consideration, while downplaying claim limitations tied to technological improvements described in the specification.