Posts Tagged: "patent eligibility"

Consider this Hidden Step Zero in the Patent Subject Matter Eligibility Analysis

U.S. patent practitioners have had a rocky relationship with the once-straightforward patent eligibility requirement under 35 U.S.C. 101 in recent years. Decisions such as Mayo and Alice upended the status quo, muddying the threshold test for patent subject matter eligibility. When dealing with difficult 101 rejections under this new status quo, it can sometimes help to think outside of the box about how to overcome a given rejection. This article presents a potential unlabeled “Step Zero” of the Subject Matter Eligibility Analysis which could help you overcome or avoid 101 rejections.

The Patent Eligibility Absurdity Continues

Recently, it has come to my attention that a system that utilizes a camera to capture images and software to run facial recognition is being rejected by the United States Patent and Trademark Office (USPTO) as an abstract idea. Why? Well, it unfortunately seems that the reason is simply because the purpose of this very tangible, working system is to identify people and charge them a fare. Because money is overtly involved, for reasons that make no rational sense, this is being deemed a business method, despite the facial recognition technology—and even though this is a clean, streamlined approach for conducting commerce.

Newman Slams CAFC’s Flawed Eligibility Precedent in Dissent to 101 Loss for Realtime Data

The U.S. Court of Appeals for the Federal Circuit (CAFC) today affirmed a district court’s dismissal of Realtime Data, LLC’s patent infringement claims based on invalidity of the asserted claims under 35 U.S.C. § 101. In a previous ruling, the CAFC sent the case back to the district court asking for a more fleshed out Section 101 analysis. Judge Pauline Newman dissented to today’s judgment, calling current eligibility jurisprudence a “morass” and saying she would have remanded the case for determination of validity under Section 112, or possibly Sections 102 and 103.

ITIF White Paper Advocates for Greater Federal Tax Credits to Keep U.S. Ahead of China in R&D

Today, the Information Technology & Innovation Foundation (ITIF) published a white paper titled Innovation Wars: How China Is Gaining on the United States in Corporate R&D showing that, while the United States continues to enjoy a lead in several key sectors when surveying the world’s largest corporate investors in research and development (R&D), its largest economic rival is gaining and could achieve parity with the U.S. in about a decade.

Expert Declaration Opposing Section 101 Motion to Dismiss for Patent Invalidity Deemed Not a Written Instrument

Patent eligibility challenges under 35 U.S.C. § 101 have been effective tools at the pleading stage for parties defending allegations of patent infringement. Defendants often attempt to avoid the costs of litigation by filing a motion to dismiss under Federal Rule of Civil Procedure (“FRCP”) 12(b)(6), seeking to invalidate the asserted patent(s) on the grounds that the claims are directed to ineligible subject matter — such as an “abstract idea.” Previously, a key tactic for plaintiffs to overcome such “Section 101 motions” was by amending the complaint and annexing an expert declaration. Recently, however, this strategy has been called into question due to a recent decision in Marble VOIP Partners LLC v. Zoom Video Communications, Inc.,