Tag Archives: patent eligibility

The Patent Eligibility Restoration Act (PERA) of 2024: From Oz to Earth

September 8, 2024Patentlegislation, paid, patent eligibility, Patent Eligibility Restoration Act, Section 101, Subject Matter EligibilityDennis Crouch

by Dennis Crouch

As its name suggests, the Patent Eligibility Restoration Act (PERA) is designed to substantially overturn the Supreme Court's decisions in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66 (2012), and Alice Corp. v. CLS Bank International, 573 U.S. 208 (2014). Together those cases created a firestorm of invalid patents and challenges for the patent office and patent holders alike. The bipartisan proposal was introduced in the Senate (Coons/Tillis) earlier this term and most recently introduced to the US House of Representatives (Kiley/Peters). Although Alice and Mayo doctrine created substantial confusion, much of that confusion has now died down in the past decade.* The bigger issue is that it is substantially harder to obtain patents and easier to invalidate issued patents -- particularly in cases where the invention lies in software or diagnostic methods. This post examines the proposed PERA and its potential impact -- along with providing a bit of data.

* Although the extreme confusion is gone, there is still plenty to go around. A case in point is the Federal Circuit's September 3, 2024 decision in BBiTV v. Amazon. In that case, the court showed its linguistic flexibility in distinguishing the claimed user interface (deemed ineligible) from those in Core Wireless and Data Engine (deemed eligible).

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Red Flags Waved Off: Federal Circuit Rejects Overzealous Fee Award against Patentee

August 25, 2024Patentattorney fees, Federal Circuit, paid, patent eligibility, Section 285Dennis Crouch

by Dennis Crouch

While sitting by designation as at the Federal Circuit, Judge Alan Albright has authored an important new opinion on attorney fees patent cases under 35 U.S.C. § 285. The court vacated and remanded a fee award by Colorado Judge Brooke Jackson, finding that Judge Jackson abused her discretion when determining that the case was "exceptional" under the statute. Realtime Adaptive Streaming L.L.C. v. Sling TV, L.L.C., No. 2023-1035 (Fed. Cir. Aug. 23, 2024).

One wild thing about this case is that Sling TV (DISH) was awarded a $3.9 million fee for seven months of pre-trial litigation -- with the defendant on eligibility at the summary judgment stage. (Having requested ~$5 million).

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Means-Plus-Function Claims in Patent Eligibility and Infringement Analyses

August 7, 2024Patent112(f), Abstract Idea, Claim Construction, en banc petition, Google, infringement, means-plus-function, paid, patent eligibility, software, software patentsDennis Crouch

by Dennis Crouch

Means-plus-function claims have generally been disfavored because of the tendency of courts to either (1) narrowly construe their scope when corresponding structure is detailed in the specification or (2) render them invalid as indefinite when the specification lacks sufficient corresponding structure. If Impact Engine's petition is well received, there is a good chance that this historically popular claim style will see a revival.

The Federal Circuit's recent decision in Impact Engine v. Google has again raised the issue of over the proper treatment of MPF, this time regarding patent eligibility and infringement analyses. Appeal No. 22-2291 (Fed. Cir. July 3, 2024). I had skipped a write-up of the non-precedential decision, but now Impact Engine has petitioned for en banc review, arguing that

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Supreme Court Update: June 2024

June 7, 2024Patentdoctrine of equivalents, double patenting, notice-and-comment, obviousness, paid, patent eligibility, patent law, Supreme Court, tortious interferenceDennis Crouch

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Patently-O Bits and Bytes

June 4, 2024Patentpaid, patent agent, patent attorney, patent damages, patent drafting, patent eligibility, patent examiner, patent infringement, patent law, patent litigation, Patent Office, patent office comment period, patent office fees, patent office leadership, patent office policy, patent office regional office, patent prosecutionDennis Crouch

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Eolas Seeks Supreme Court Review of Federal Circuit’s Patent Eligibility Decision

May 8, 2024Patenten banc, Eolas, paid, patent eligibility, patent law, Section 101, Supreme CourtDennis Crouch

Eolas is seeking a writ of certiorari from the Supreme Court -- hoping that the court will overturn the Federal Circuit's decision invalidating its distributed computing (WWW) claims as ineligible under Alice Corp. and Mayo and ostensibly under 35 U.S.C. § 101. The petition presents three key questions:

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Patenting Informational Innovations: IOEngine Narrows the Printed Matter Doctrine

May 6, 2024Patentanticipation, Copyright, informational innovations, IOEngine v. Ingenico, obviousness, paid, patent eligibility, printed matter doctrine, Section 101, Section 102, Section 103Dennis Crouch

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

April 17, 2024Patentfreedom to operate, innovation policy, judicial expertise, obviousness, paid, patent eligibility, patent law, patent litigation, pharmaceutical patents, software patentsDennis Crouch

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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Rader on 101 and the Statutory Text

April 3, 2024Ethicsjudicial interpretation, legislative history, paid, patent eligibility, Section 101, statutory textDavid

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Federal Circuit Affirms Invalidity of Blockchain Gemstone Tracking Patent Under Section 101

April 2, 2024PatentAbstract Idea, blockchain, gemstone tracking, paid, patent eligibility, Section 101Dennis Crouch

by Dennis Crouch

In Rady v. The Boston Consulting Group, Inc., No. 2022-2218 (Fed. Cir. Mar. 27, 2024), the Federal Circuit affirmed the dismissal of a patent infringement lawsuit, holding that the asserted claims of Rady's US10469250 were ineligible under 35 U.S.C. § 101. The patent, owned by Max Rady, patent describes scanning a physical item, determining its unique pattern of imperfections (i.e., "signature"), and recording that signature to a blockchain if not previously registered.

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The Quest for a Meaningful Threshold of Invention: Atlantic Works v. Brady (1883)

March 26, 2024PatentHistorical Cases, inventorship, obviousness, paid, patent eligibility, patent law, Supreme Court PrecedentDennis Crouch

by Dennis Crouch

My recent discussion of Vanda v. Teva references the landmark Supreme Court case of Atlantic Works v. Brady, 107 U.S. 192 (1883). I thought I would write a more complete discussion of this important historic patent case.

Atlantic Works has had a profound impact on the development of patent law, particularly in shaping the doctrine of obviousness, but more generally providing theoretical frameworks for attacking "bad patents." As discussed below, I believe the case also provides some early insight into the new AI inventorship dilemma.

The case addressed the validity of a patent granted to Edwin L. Brady for an improved dredge boat design. The Supreme Court ultimately reversed the lower court's decision upholding the patent and found instead that Brady's claimed invention lacked novelty and did not constitute a patentable advance over the prior art.

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A New Horizon: Design Patent Practitioner Bar Proposed by USPTO

May 15, 2023Patentdesign patent, intellectual property, notice-and-comment, paid, patent eligibility, patent infringement, patent law, patent litigation, patent prosecution, USPTO, USPTO DirectorDennis Crouch

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Certiorari Denied in Eligibility Cases

May 15, 2023Patentadministrative procedure act, Alice/Mayo, Certiorari Denied, Diagnostic Method, due process, paid, patent eligibility, patent litigation, RFID, Section 101, Supreme CourtDennis Crouch

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Can States Legislate in the AI Rights Space?

May 9, 2023Patentartificial intelligence, Bonito Boats, intellectual property, paid, patent eligibility, patent law, patent system, preemption, state law, Supreme Court, USPTODennis Crouch

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The Supreme Court and Patent Protection for Medical Diagnostics: A Closer Look at CareDx and Stanford U v. Eurofins

May 2, 2023PatentCareDx, Federal Circuit, Mayo v. Prometheus, medical diagnostics, obviousness, paid, patent eligibility, patent law, patent litigation, Section 101, Stanford U v. Eurofins, Supreme CourtDennis Crouch

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Supreme Court Holds Over Two Patent Cases, Considers Two More on Patent Eligibility

May 1, 2023PatentAmgen-v-Sanofi, Fall Line Patents v. Unified Patents, Interactive Wearables v. Polar Electro Oy, paid, patent eligibility, patent law, patent litigation, Supreme Court, Teva Pharmaceuticals USA v. GlaxoSmithKline, Tropp v. Travel Sentry, USPTODennis Crouch

by Dennis Crouch

On May 1, the U.S. Supreme Court revealed its decisions from the April 28 conference. Among the three patent cases considered, the court denied certiorari for the pro se case of Wakefield v. Blackboard, while holding over the other two for reconsideration at a later conference. This development increases the likelihood of these two cases being heard by the court, although a grant of certiorari has not yet been announced.