Archives: Patent Eligible Subject Matter (101)

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USPTO Memo Updates Examiner Guidance On Subject Matter Eligibility In View Of Enfish

Just weeks after its May 2016 memorandum to examiners providing guidance on subject matter eligibility under § 101, yesterday the USPTO issued a new memo updating its guidance to examiners in view of the Federal Circuit’s Enfish decision.  As this memo points out, the Enfish decision gave a concrete example of claims directed to improvements … Continue Reading

May 2016 Update to Examiner Guidance on Patent Subject Matter Eligibility

A Federal Register notice is scheduled to publish tomorrow (pre-publication PDF version is available here) updating the 2014 interim guidance on patent subject matter eligibility and the July 2015 update on subject matter eligibility.  Yesterday, a related examiner memorandum published to provide updated examination instructions.  Those instructions require examiners to articulate a reasoned rationale for … Continue Reading

New Rules of Practice for Trials before the PTAB

A final rule has been published with amendments to the rules of practice before the PTAB.  The amendments are effective May 2 and apply to both petitions filed on or after May 2 as well as ongoing AIA preliminary preceding or trial before the office.  The rules make several changes, the most notable being: Allowing patent owners … Continue Reading

The CAFC Rules That It Lacks Jurisdiction To Review PTAB’s Denial Of Institution On “Redundant” Grounds

The Federal Circuit’s Harmonic Inc. v. Avid Tech decision last week is the latest in a string of decisions from the CAFC ruling that it lacks jurisdiction to review various aspects of PTAB institution decisions.  In this case, the CAFC ruled that it lacks jurisdiction to review the PTAB’s decision not to institute an IPR … Continue Reading

Will the USPTO’s Abstract Idea Examples Change Post-Grant Practice?

With the rise in popularity of post-grant challenges, the ability to survive such challenges has become critical for patent owners. While not an issue in inter partes reviews (IPRs), a patent can be challenged on § 101 grounds in post-grant reviews (PGRs) and covered business method reviews (CBMs). Since Alice, many CBMs have been instituted … Continue Reading

Software Patents: A Modicum of Sanity?

In Alice Corp. Ptd. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014), the U.S. Supreme Court articulated a two-part framework for determining whether a computer related invention was patent-eligible subject matter under 35 U.S.C.§101. … it is important at the outset to identify and define whatever fundamental concept appears wrapped up in the … Continue Reading

PTAB Denies CBM Trial on 101 Post Alice!

In what we believe is a first since the Supreme Court Decision in Alice, the PTAB has denied CBM review based on Section 101.  In holding that the claims of USP 8,311,945, which are directed to processing paper checks, are directed to patent-eligible subject matter, the PTAB stated, “…we find that the basic, core concept of … Continue Reading

PTAB Requires Factual Basis in Support of Obviousness

In Microsoft Corp. v. Secure Web Conference Corp., case number IPR2014-00745, the PTAB  denied trial because the Petitioner failed to adequately establish obviousness. The “general contention that if anything is missing from [one reference] it can be found in [the others] leaves us to speculate how the references are combined, and does not sufficiently explain how … Continue Reading

Supreme Court Decision in Alice Changes Everything!

The PTAB clearly believes that Alice provides a new standard for patent eligible subject matter. “We also are not persuaded by Patent Owner’s argument that the claims have been reviewed previously by the Board of Patent Appeals and Interferences, as well as a district court, and have been found to cover patent-eligible subject matter. The … Continue Reading