Tag Archives: Alice

The Safe Harbor Provision of 35 U.S.C. § 121 Against Double Patenting Rejections Just Got A Little Less Safe

The Safe Harbor Provision of 35 U.S.C. § 121 Against Double Patenting Rejections Just Got A Little Less Safe

Author: Jeffrey M. Jacobstein
Editor: Eric P. Raciti

Ever since the Federal Circuit held that a later-issuing but earlier-expiring patent could serve as an obviousness-type double patenting (OTDP) reference in Gilead Sciences, Inc. v Natco Pharma Ltd., 753 F.3d 1208 (Fed. Cir. 2011), Applicants and Patentees have found themselves facing many more double patenting rejections.  Even continuing applications filed in a single portfolio run the risk of receiving OTDP rejections if the claims of the subject and reference patents are not patentably distinct.  See AbbVie Inc. v. Kennedy Inst. of Rheumatology, 764 F.3d 1366 (Fed. Cir. 2014).  The court in Kennedy explained (in dicta) that patents sharing a common priority chain “still can have different patent terms due to examination delays at the PTO.”  AbbVie, 764 F.3d at 1373.  So, patent term adjustment accumulated during examination could be in jeopardy when the subject claims overlap those in a continuation. Continue reading

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RecogniCorp v. Nintendo—Alice Keeps Playing at the Federal Circuit

RecogniCorp v. Nintendo—Alice Keeps Playing at the Federal Circuit

Author: Elliot C. Cook
Editor: J. Derek McCorquindale

In the nearly three years since Alice Corp. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014), the Federal Circuit has analyzed the issue of patent-eligibility in the context of numerous distinct technologies. The court’s precedent applying Alice addresses patents directed to financial services, Internet content filtering, database maintenance, payment-based content access, animated facial gesturing, physical object tracking, distributed data processing, and more. One takeaway is that no technological discipline is, per se, eligible or ineligible. Instead, the outcomes of these cases are better explained by the specific inventions at issue and how they are claimed. RecogniCorp, LLC v. Nintendo Co., Ltd., No. 2016-1499 (Fed. Cir. Apr. 28, 2017), confirms this lesson. Continue reading

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Thales : Federal Circuit Forces Acceleration on § 101 for Physics-Based Claims

Author: Christopher C. Johns
Editor: Adriana L. Burgy

CAFC DecisionThales Visionix Inc. v. United States, No. 15-5150 (Fed. Cir. Mar. 8, 2017)

Decision:  In Thales Visionix Inc. v. United States, No. 15-5150 (Fed. Cir. Mar. 8, 2017), the Federal Circuit reversed a decision of the Court of Federal Claims, 122 Fed. Cl. 245 (2015), that found claims drawn to an inertial tracking system ineligible. In reversing, the Federal Circuit found that the claims were not directed to an abstract concept. Continue reading

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Further Tales from Wonderland – November 2016 Memorandum on 35 U.S.C. § 101

Author: Christopher C. Johns
Editor: Adriana L. Burgy

On November 2, 2016, the USPTO issued a new Memorandum relating to rejections under § 101. Entitled “Recent Subject Matter Eligibility Decisions,” the Memo generally follows the format of previous guidance, discussing the recently-decided McRO, Inc. v. Bandai Namco Games America Inc., 120 USPQ2d 1091 (Fed. Cir. 2016) and BASCOM Global Internet Services v. AT&T Mobility LLC, 827 F .3d 1341 (Fed. Cir. 2016). The memo also briefly addresses preemption and use of non-precedential decisions in Office Actions. While nothing in the memo is particularly groundbreaking, the fact that the PTO is taking the time explain current precedent to examiners gives applicants a leg up in arguing eligibility. Continue reading

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USPTO Seeks Public Feedback and Ideas at Subject Matter Eligibility Roundtables

Author: Rachael P. Dippold, Ph.D.
Editor: Stephanie M. Sanders

The USPTO announced today that it will be hosting two roundtable events, one in November and one in December, regarding subject matter eligibility under 35 U.S.C. § 101. The roundtables are designed to facilitate public discussion of the USPTO’s current guidance on subject matter eligibility and topics related to current subject matter eligibility jurisprudence.

Roundtable 1: USPTO Subject Matter Eligibility Guidelines

For the first roundtable event, the USPTO requests public input for improving its subject matter eligibility guidance and training examples. In particular, the USPTO is seeking views and comments on the following topics:

  • Suggestions on how to improve the USPTO’s subject matter eligibility guidance
  • Comments on the May 2016 Life Sciences examples and suggestions for additional examples
  • Suggestions on how to make examiners aware of recent judicial decisions and how to incorporate such decisions into subject matter eligibility guidance
  • Concerns regarding how examiners are applying court decisions or the USPTO’s guidance and training

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