Tag Archives: Patentable Subject Matter

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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The Internet of Things: The Basics

Authors: Kenie HoMatthew J. HlinkaChristopher C. Johns
Editor: Adriana L. Burgy


The Internet of Things, or IoT, is the latest development in our society’s evolution into a futuristic utopia. At its most basic level, the IoT consists of three elements:

  1. An Internet-capable device with a sensor;
  2. A wireless network connecting these devices; and
  3. A system that can store and analyze the data these devices collect.

IoT potentially affects nearly every detail of our lives, from connecting utility meters for real-time nation-wide analytics of water and energy usage, to deploying connected microphones city-wide to help police listen for gun shots and identify where the firing gun might be located. Anything with an on/off switch is a potential IoT device.

With the dawn of this new technological frontier, one would expect a surge in IoT patents. That is true for many hardware-based technologies, but recent developments in U.S. law have made patenting difficult for software-related IoT innovations.

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