Posts Tagged ‘patentable subject matter’

In yesterday’s In re McFadden Fed. Cir. case (nonprecedential), the court struck down an application directed to “generating one distribution of information items, then comparing it to a previous distribution of information items, to determine how information should be presented to a consumer.” If Mr. McFadden’s name sounds familiar, it’s because he had another one…

In step one of the Alice patentable-subject-matter test under 35 U.S.C. § 101, the Fed. Cir. normally reviews the claim and specification and then looks at its case law to see if the claim recites subject matter on the forbidden list of abstract ideas (see my prior posts) to determine if the claim is directed…

In the Supreme Court’s Alice Corp. v. CLS Bank International decision, the Court left the contours of what exactly constitutes an “abstract idea” undefined, leaving lower courts and patent practitioners to struggle. Recently, the Federal Circuit has provided both clarity and confusion to the abstract-idea analysis. On the clarity side, in GoTV Streaming v. Netflix, the…

The Fed. Cir. today remanded a patentable subject matter case under 35 U.S.C. § 101 to the district court for an Alice step-two analysis in Trustees of Columbia Univ. v. Gen Digital. I’ve been writing about how there is a split at the Fed. Cir. on whether conventionality is used at step one. Well, in…

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failing to recite patent eligible subject matter under 35 U.S.C. § 101 in Oasis Tooling v. Siemens Industry Software (nonprecedential).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 v. Amazon (nonprecedential).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…