Posts in Patentability


CAFC: Obvious even if it meant foregoing benefits of prior art

The Court affirmed the obviousness rejection. “As the Board properly found, one of ordinary skill would have been motivated to pursue the desirable properties taught by Wong […

Printed Matter Doctrine Implicates Matter That Is Claimed for What it Communicates

The Court held that printed matter must be claimed for what it communicates, and it is only afforded patentable weight if the claimed informational content has a …

Wi-LAN suffers Federal Circuit defeat to Apple in patent dispute

Wi-LAN argued that even if they could not prove direct infringement, a structure that performs the steps in the reverse order should properly be found to infringe …
By Gene Quinn 1 month ago 5

McRo decision expected to clarify abstract idea doctrine under Alice

A case currently pending before the Federal Circuit is anticipated to provide greater guidance into the answer to this question, namely, how district courts should determine whether …
By Zachary Silbersher 1 month ago 42

Amici Ask Federal Circuit to Curb Misapplication of Alice to Specific, Novel, and Concrete Inventions

On December 18, 2015, several amici filed a brief in support of appellants in Netflix, Inc. v. Rovi Corp. et al., No. 15-1917 at the Federal Circuit. The amici …

Patentee must show patentability over prior art from original case to amend in IPR

The Federal Circuit affirmed a patentee’s burden included showing patentability over prior art from the patent’s original prosecution history. Prolitec failed to show that its …

Australia Releases Guidelines on Patentability of Genetic Material – Now That’s How It’s Done

The Australian Patent Office yesterday released its new guidelines in response to Australia’s High Court decision on the patentability of genetic material. The good news for …
By Sue D. Nym 2 months ago 1

The Most Likely Art Units for Alice Rejections

While Alice rejections can be found all over the USPTO, roughly two-thirds of them are found in TC 3600. Only TC 2900 has not had any Alice rejections. Looking …
By James Cosgrove 2 months ago 10

CAFC Overturns PTAB IPR Decision for Refusing to Consider Motivation to Combine

On appeal, Ariosa challenged the Board’s refusal to consider the background reference because it was not identified as a piece of prior art “defining a combination …

CAFC denies Sequenom en banc petition, Next stop SCOTUS

The law of patent eligibility is created by the nine least qualified people to make such a determination; the Justices of Supreme Court of the United States. …
By Gene Quinn 2 months ago 40

Software Patent Eligibility: Where is the Industry Heading?

''There should be no serious question that computer-implemented inventions such as software constitute patent-eligible subject matter under § 101,'' Paul Clement wrote in a brief filed on behalf …
By Gene Quinn 3 months ago 2

Innovation America: Patent Applications and Allowances by State

Looking at raw numbers, California was by far the most inventive state, with over 329,000 non-design patents filed, over 254,000 disposed, and over 180,000 allowed between 2000 and 2010. Texas, New York, …
By Tristan Gray-LeCoz 3 months ago 6