Search Results for: Alice v. CLS Bank

From Knobs to Pixels: UI Patent Eligibility on Trial

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by Dennis Crouch

For over 150 years, "user interfaces" have been a staple of patent protection, evolving from the physical realm of tool handles and knobs to today's digital screens. Although tangible interface elements continue be patented as components of larger systems, the market shift towards on-screen interfaces has been paralleled with the anti-eligibility shift in Mayo and Alice. The Federal Circuit recently waded into these murky waters in Broadband iTV, Inc. v. Amazon.com, Inc., No. 23-1107 (Fed. Cir. Sept. 3, 2024), examining the patent eligibility of electronic programming guides and content recommendation systems. Affirming a decision by Judge Albright, the appellate panel held that the claimed inventions lacked eligibility under 35 U.S.C. § 101, distinguishing some prior GUI cases that sided with the patentee.

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Patenting Informational Innovations: IOEngine Narrows the Printed Matter Doctrine

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by Dennis Crouch

This may be a useful case for patent prosecutors to cite to the USPTO because it creates a strong dividing line for the printed matter doctrine -- applying the doctrine only to cases where the claims recite the communicative content of information. 

IOEngine, LLC v. Ingenico Inc., 2021-1227 (Fed. Cir. 2024).

In this decision, the Federal Circuit partially reversed a PTAB invalidity finding against several IOEngine patent claims. The most interesting portion of the opinion focuses on the printed matter doctrine.   Under the doctrine, certain "printed matter" is given no patentable weight because it is deemed to fall outside the scope of patentable subject matter. C R Bard Inc. v. AngioDynamics, Inc., 979 F.3d 1372 (Fed. Cir. 2020).  In this case though the Federal Circuit concluded that the Board erred in giving no weight to IOEngine's claim limitations requiring "encrypted communications" and "program code."

The printed matter doctrine a unique and somewhat amorphous concept in patent law that straddles the line between patent eligibility under 35 U.S.C. § 101 and the novelty and non-obviousness requirements of §§ 102 and 103.

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What I’m reading from academic journals

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I'm always on the lookout for interesting new scholarship related to intellectual property and innovation policy. The following are a few of the articles that I've been delving into this past week:

  • James Hicks, Do Patents Drive Investment in Software?, 118 NW. U. L. REV. 1277 (2024).
  • Ana Santos Rutschman, From Myriad to Moderna: The Modern Pharmaceutical Company, ___ Texas A&M University Journal of Property Law ___ (2024) (forthcoming).
  • John Howells, Ron D Katznelson, Freedom to Operate analysis as competitive necessity—the Selden automobile patent case revisited, Journal of Intellectual Property Law & Practice (2024).
  • Christa Laser, Scientific Educations Among U.S. Judges, ___ American University Law Review ___ (2025) (forthcoming).
  • Garreth W. McCrudden, Drugs, Deception, and Disclosure, 38 BERKELEY TECH. L.J. 1131 (2024).

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Magic Language in Patent Applications

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by Dennis Crouch

The Federal Circuit handed down a mixed decision in Chewy, Inc. v. International Business Machines Corp., 2022-1756 (Fed. Cir. Mar. 5, 2024) ChewyvIBM. The district court had ruled against the patentee (IBM) -- finding one patent ineligible and the other not infringed.  On appeal, the Federal Circuit largely affirmed, but found one claim that passes through the pre-trial gauntlet.  The patents at issue were IBM's U.S. Patent Nos. 7,072,849 and 7,076,443, relating to improvements in web-based advertising.  On remand, a jury may need to decide whether claim 12 of the '849 patent is valid and infringed.

The first half of the post focuses on eligibility and is fairly standard.  The second half of the post is what all patent prosecutors need to read because it delves into "magic language" - binding statements - in describing the invention.

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Eligibility and Physical Products

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by Dennis Crouch

The six PTAB decisions reviewed below provide insight into the application of 35 USC 101 in cases involving more than just computer hardware and software. While the claims in each decision recite physical devices or molecules, the PTAB still found most to be ineligible as directed to an abstract idea and lacking an integrated inventive concept beyond well-understood, routine conventional activities. A core parallel across the decisions is the PTAB's focus on whether the additional elements in the claims, including the physical components, integrate the judicial exception into a practical application or provide significantly more.

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Race to the Finish: Timing Battles in Parallel IPR and District Court Litigation

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by Dennis Crouch

The new petition for certiorari filed by Liquidia raises some interesting questions about the ongoing race between inter partes review proceedings and district court litigation.  Liquidia Techs v. United Therapeutics Corp., 23-804 (US), on petition for writ of certiorari from United Therapeutics Corp. v. Liquidia Techs., Inc., 74 F.4th 1360 (Fed. Cir. 2023).

UTC won its infringement suit against Liquidia with a holding that its patent covering treprostinil administration by inhalation were valid and infringed. (US10716793).  While the appeal was pending, the PTAB sided against the patentee and found the claims unpatentable as obvious.  In the appeal, however, the Federal Circuit refused to give credence to the PTAB decision - finding that litigation was still "pending" and "non-final." The claims had not actually been cancelled yet - since the Director only issues the certificate confirming unpatentability after any appeal. Further, the Federal Circuit concluded that IPR decisions do not have issue-preclusive (collateral estoppel) effect until the decision is affirmed on appeal, or the parties waive their right to appeal. Citing XY, LLC v. Trans Ova Genetics, L.C., 890 F.3d 1282, 1294 (Fed. Cir. 2018).

Liquidia's petition argues that the PTAB's final-written decision should be given preclusive effect in parallel litigation even if an appeal is pending, just like would be done for a district court opinion.

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