Category Archives: 35 USC 101

Subscribe to 35 USC 101 RSS Feed

You’ll Have To Be More Specific When Crafting That Generic Claim

Recent § 101 jurisprudence regarding tech inventions can be distilled down to two words: be specific. That’s a problem for patents in the tech space, because they are not specific at all, claiming inventions using broad functional language. Prior to Alice, for inventions where the function was novel but the components were not, a claim … Continue Reading

MRCO v. Bandai Shows the Way to Broader Method Claims that Satisfy Alice and Mayo

It is said that one should cast a “wide net to catch the big fish.” In patent parlance, the wide net is the claims and the big fish are the competitors and customers. The computer/software industry and diagnostic industry, among others, generally rely on method claims to protect IP. However, method claims in these areas … Continue Reading

USPTO Issues Patent Eligibility Guidance In View Of CellzDirect and Sequenom

The USPTO issued a memorandum to the examining corps entitled Recent Subject Matter Eligibility Rulings (Rapid Litigation Management v. CellzDirect and Sequenom v. Ariosa) on July 14, 2016. The Patent 213 Blog has previously reviewed each of these cases. The USPTO notes that the decisions do not change the subject matter eligibility framework and that … Continue Reading

July Fireworks: Federal Circuit Finds Claims to Cryopreservation Method Eligible Under 35 USC §101

On July 5, the Federal Circuit found claims directed to cryopreservation methods for hepatocytes patent eligible under 35 USC §101, reversing the district court decision finding the claims invalid on motion for summary judgement. In reaching this conclusion, the court offered valuable guidance on the proper analysis of claims that involve natural products and provided comments on … Continue Reading

Carry on as Before: Supreme Court Refuses Sequenom’s Petition

To the surprise of many, including myself, the Supreme Court denied Sequenom’s petition for writ of certiorari (“Petition”). Sequenom asked the Court whether the inventive concept required under the Mayo/Myriad framework can come from the discovery of the natural phenomenon itself. This distinction would allow the Court to differentiate a meritorious invention like Sequenom’s from … Continue Reading

Fingers Crossed: Supreme Court to Decide Patentability of Newly Discovered Natural Phenomena

The Federal Circuit threw down the gauntlet, and we are waiting to see whether the U.S. Supreme Court will take it up. Sequenom’s petition for certiorari was scheduled for conference on June 23rd; the Court’s decision whether to hear the case will likely be announced next week. In the Federal Circuit en banc opinion denying … Continue Reading

USPTO Releases Update on Patent Eligibility Decision in Light of Enfish

On May 19, the USPTO released an update to patent examiners regarding the U.S. Court of Appeals for the Federal Circuit’s (CAFC) recent decision in Enfish, LLC v. Microsoft Corp. and TLI Communications LLC v. A.V. Automotive, LLC. Both cases were recently discussed in the 213 Blog. In Enfish, the CAFC held that a claimed … Continue Reading

Abstract Idea Exception Rules the Day in TLI Communications

The Court of Appeals for the Federal Circuity (CAFC) has been busy on the patent eligibility front this month. After the recent Enfish decision, the CAFC handed down TLI Communications LLC v. AC Automotive, LLC the very next day. Unlike the decision in Enfish, the panel found the asserted claims invalid under 35 USC §101 as … Continue Reading

Not All Software Claims are Abstract Ideas Under Alice

On May 9, Mercury navigated its way between the earth and the sun (a “transit “in astronomical terms), an event that will not occur again until 2019. The Federal Circuit in Enfish, LLC v. Microsoft Corp (2015-1244) provided a legal equivalent this month by holding that claims directed to a data storage and retrieval system for … Continue Reading

The Government Whittles Away at Life Sciences Patents

The current U.S. Supreme Court has been noted for its hostility to patent holders in general, but the Supreme Court has been especially hostile to any sort of life sciences or software invention.  The Court has attempted to carve out special exceptions to the congressional mandate that patents will be granted for “any new and … Continue Reading

Novel Applications of Natural Laws Remain Unpatentable Under 35 USC §101

In Genetic Technologies (GTG), the U.S. Court of Appeals for the Federal Circuit (CAFC) held the line in the patent eligibility saga in the field of biotechnology.  GTG asserted U.S. Patent No. 5,612,179 against Merial and Bristol Myers. The ‘179 patent claims a method of genetic analysis based on the discovery that the presence of … Continue Reading

Patent Examiners Who Cut Corners in Subject Matter Eligibility Decisions Can Be Reversed

Due to the rapidly shifting requirement for subject matter eligibility, some patent examiners seem to believe that, when it comes to software inventions, they are entitled to assume the invention is not patent eligible subject matter under § 101, and it is the applicant’s duty to prove otherwise. A recent decision by the Patent Trial … Continue Reading

Eligibility of Isolated Nucleic Acid: Australian and U.S. Standards

This is the second of a two-part series comparing Australian and U.S. law and will focus on patent eligibility of an isolated nucleic acid sequence. Are the patent eligibility standards for isolated nucleic acid molecules becoming more or less consistent around the world? The United States and Australia have weighed in on this topic, and … Continue Reading

Hands Tied: Patenting Diagnostic Inventions Remains a Difficult Task

What does the Federal Circuit really think about the Supreme Court’s recent § 101 jurisprudence? The denial of the petition for rehearing en banc in Ariosa Diagnostics v. Sequenom in November of 2015 answers that question. The 30-page panel opinion in the denial of the petition for rehearing en banc can be boiled down to … Continue Reading

Claiming Software as a Product not as a Process

Software patent applications present pitfalls not present for other inventions, because software is intangible. To pass muster in the USPTO, software is best described as a process, one of the four categories of patent eligible subject matter under USC 35 § 101. The other three are machine, manufacture and composition of matter. Some software patent … Continue Reading
LexBlog