Section 101

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Federal Circuit Finds Loyalty Rewards Claims Ineligible

By William (Bill) J. Samore on Posted in Appeals, CBM, Section 101
In cxLoyalty, Inc. v. Maritz Holdings Inc., Appeals 2020-1307, -1309 (Fed. Cir. Feb. 8, 2021), the Federal Circuit affirmed a PTAB final written decision in a CBM proceeding canceling Maritz’s original claims related to a GUI for a customer loyalty program, as ineligible for patenting under 35 U.S.C. § 101.  The PTAB had granted Maritz’s … Continue Reading

So Long, and Thanks for All the Fish

By Noah K. Tilton on Posted in Section 101
In a recent precedential decision, the Federal Circuit affirmed a Patent Trial and Appeal Board decision, upholding an examiner’s final rejection of claims to a fishing method as unpatentable under 35 U.S.C. § 101.  In re Rudy, Case 2019-2301, Slip Op. (Fed. Cir. Apr. 24, 2020).  Appeals to both the Board and the Federal Circuit … Continue Reading

Federal Circuit Reaffirms that Software is Patent Eligible

By Ryan N. Phelan on Posted in Appeals, Section 101
In Uniloc USA, Inc. v. LG Electronics USA, Appeal No. 19-1835 (Fed. Cir. Apr. 30, 2020), the Federal Circuit reaffirmed that software inventions are patentable in the U.S. with a bright-line statement: “Our precedent is clear that software can make patent-eligible improvements to computer technology, and related claims are eligible as long as they are directed to … Continue Reading

Designating Specific Storage Location for Ad Data Not Enough for Patentability

By Tiffany D. Gehrke on Posted in CBM, Covered Business Method, Section 101
In Customedia Techs. v. Dish Network Corp., No. 18-2239, the Federal Circuit affirmed a pair of PTAB judgments in CBM reviews canceling claims directed to the use of “a computer to deliver targeted advertising to a user” as ineligible under 35 U.S.C. § 101. More specifically, the claims recite reserving memory for advertising data in … Continue Reading

Section 101 Challenges are Out of Bounds in IPR Appeals

thumbnail image of DNA strandBy Lynn L. Janulis, Ph.D. on Posted in Appeals, Biotechnology, Inter Partes Review, IPR, Section 101, Sections 102/103
Neptune Generics v. Eli Lilly & Company, Case No. 2018-1257, 2018-1258 (Fed. Cir. April, 2019), concerns an Eli Lilly & Co. patent protecting method of administering folic acid and a methylmalonic acid (MMA) lowering agent, e.g., vitamin B12. Specifically, the method concerns the administration of these products before administering pemetrexed disodium, an anti-folate chemotherapeutic, to … Continue Reading

Highlights of the U.S. Patent Office’s Update to its 2019 Subject Matter Eligibility Guidance

By Ryan N. Phelan on Posted in Section 101
PTABWatch Takeaway: In mid-October 2019, the Patent Office updated its subject matter eligibility guidance published in January 2019. The update does not change the guidance, but simply offers clarifications invited by public responses to the January guidance. On October 17, 2019, the U.S. Patent and Trademark Office (USPTO) issued a 22-page an Update (“October PEG … Continue Reading

Four Decisions to Know regarding the PTAB’s Treatment of the new 2019 Patent Eligibility Guidelines

By Ryan N. Phelan on Posted in Section 101
PTABWatch Takeaway: The Patent Trial and Appeal Board (PTAB) designated as “informative” four decisions applying the Patent Office’s 2019 patent eligibility guidance (PEG) regarding 35 U.S.C. § 101. While the decisions are not binding on future PTAB panels, the decisions provide useful insights into how the PTAB may approach issues of patent eligibility on ex … Continue Reading

How the PTAB Reviews Software Inventions Under the 2019 Revised Subject Matter Eligibility Guidance

By Ryan N. Phelan on Posted in Section 101
  PTABWatch Takeaway: The United States Patent and Trademark Office (USPTO)’s 2019 Revised Patent Subject Matter Eligibility Guidance provides a useful, and effective, tool for demonstrating patent eligibility of software-related inventions. While the 2019 Guidance acts as persuasive authority only, the PTAB has relied on the 2019 Guidance as a rubric in numerous cases to analyze, … Continue Reading

PTAB Properly Applied the Printed Matter Doctrine

By Noah K. Tilton on Posted in Appeals, Claim Construction, Inter Partes Review, Section 101, Sections 102/103
In Praxair Distrib. v. Mallinckrodt Hosp. Pdts., (Fed. Circ. May 16, 2018), the Federal Circuit affirmed the PTAB’s application of the printed matter doctrine in an IPR, and determined that all challenged claims were obvious. Mallinckrodt’s patent is directed to methods of treating newborns having low blood oxygenation with nitric oxide (NO) gas, “to dilate … Continue Reading

Avoid Creating Bad Blood with the Board

By Kate Nuehring Su on Posted in Institution / Denial, Section 101, Sections 102/103
The Board recently denied a post grant review petition because the challenge was deemed redundant of the Patent Office’s earlier examination of similar claims in a related application. Live Nation Entertainment, Inc. v. Complete Entertainment Resources  B.V., Case No. PGR2017-00038 (PTAB January 16, 2018). The decision offers a cautionary tale for patent practitioners.  The Board … Continue Reading

The United States Can Have Standing in AIA Proceedings

By Ryan N. Phelan on Posted in Appeals, Covered Business Method, Inter Partes Review, IPR, Section 101, Trial Procedures
Update: On June 10, 2019, the Supreme Court issued a decision, 6-3, reversing the Federal Circuit’s judgment and remanding the case for further proceedings. The Court held that “a federal agency is not a ‘person’ who may petition for post-issuance review under the AIA.” On August 9, 2019, the Federal Circuit issued an order vacating … Continue Reading

Pay-Per-Click Patent Found Ineligible Under Section 101

By Marshall Gerstein on Posted in Section 101, Sections 102/103
In a final written decision issued on April 24, 2017, the PTAB canceled all four challenged claims of U.S. Patent No. 8,671,057, directed to detecting invalid and fraudulent clicks in pay-per-click web advertising (Google Inc. v. Zuili, CBM2016-00008 (Paper 56)). The PTAB found all four claims unpatentable under 35 U.S.C § 101, and obvious under … Continue Reading

PTAB Should Have Canceled All Challenged Claims in CBM Reviews

By Lynn L. Janulis, Ph.D. on Posted in Appeals, Claim Construction, Covered Business Method, Post Grant Review, Section 101
In Apple, Inc. v. Ameranth, Inc. (Fed. Cir. 2016), the Federal Circuit reviewed the final written decisions in CBM reviews of three related patents owned by Ameranth, Inc., directed to computerized systems for generating and displaying menus for use in the restaurant industry.  The court determined that the PTAB properly construed all disputed claim terms, … Continue Reading

The Three-Front Assault: PeroxyChem Uses IPR, PGR and District Court to Challenge Opponent

By Katherine L. Neville, Ph.D. on Posted in Inter Partes Review, Post Grant Review, Section 101, Section 112, Sections 102/103
In what could become a common patent challenge strategy, PeroxyChem, a chemical company that sells products useful in water and soil remediation, has employed a three-front assault—combining the relatively young post-grant review procedure, with an IPR and litigation–to take on one of its competitors, Innovative Environmental Technologies (IET).  Litigation together with an IPR has become … Continue Reading

PTAB Concludes Database Patent Claims Are Ineligible under Section 101 Despite Enfish

By Tiffany D. Gehrke on Posted in Covered Business Method, Section 101
Notwithstanding the Federal Circuit’s Enfish warning that “we do not read Alice to broadly hold that all improvements in computer-related technology are inherently abstract,” in Informatica Corp. v. Protegrity Corp., the PTAB cancelled claims 1-8 and 18-53 of U.S. Patent No. 6,321,201 under Section 101 because the claims relating to a data security system for … Continue Reading

Patent Applicants Who Appeal Must Wait Their Turn with the PTAB

thumbnail image of DNA strandBy David A. Gass on Posted in Appeals, Biotechnology, Inter Partes Review, Post Grant Review, Section 101
Biotechnology patent applicants dissatisfied with the examination of their patent applications can look to the PTAB for relief by filing an appeal – but they will need to be very, very patient. The procedures created by the America Invents Act (AIA) for challenging U.S. patents – inter partes review, post grant review, and covered business … Continue Reading

Patent Ineligibility Under §101 Continues Slow Ooze Over More Territory

thumbnail image of DNA strandBy Katherine L. Neville, Ph.D. on Posted in Appeals, Biotechnology, Section 101
Biotech companies have increasingly found themselves the target of IPRs, and we have discussed this in some of our past posts.  Meanwhile, in the District Courts, biotech companies are defending against a new wave of challenges to the patent-eligibility of their inventions under 35 U.S.C. § 101.  While challenges under § 101 cannot be raised as grounds … Continue Reading

No Appellate Review, No Matter: District Court Invalidates Patent After the PTAB Denies CBM Review

By Sandip H. Patel on Posted in Covered Business Method, Institution / Denial, Section 101
NRT Technology Corporation was not successful in petitioning the PTAB to institute CBM review of U.S. Patent No. 6,081,792, but was successful in moving a district court to dismiss an infringement action concerning the same patent on the basis that the patent claims ineligible (abstract) subject matter. Global Cash Access, Inc. v. NRT Tech. Corp., … Continue Reading

PTAB to Shakespeare: “ ‘What’s in a Name?’ Are you Kidding? Everything!”

By Thomas L. Duston on Posted in Covered Business Method, Institution / Denial, Section 101
Shakespeare’s Juliet famously observes, “What’s in a name? That which we call a rose by any other name would smell as sweet.”  The PTAB begs to differ. While a generic computing device may not render abstract claims patentable, introduce it with a fancy nom de guerre and you have got yourself patentable subject matter.… Continue Reading

PTAB Refuses to Terminate AIA Trial Despite Applying the Estoppel Provision to Dismiss the Petitioner

By Sandip H. Patel on Posted in Covered Business Method, Estoppel, Legislation, Section 101, Trial Procedures
The PTAB recently issued an order applying the estoppel provision of the AIA (35 U.S.C. § 325(e)(1)) to dismiss a petitioner from covered business method (CBM) patent review proceedings a few days before a consolidated final hearing. Apple Inc. v. Smartflash LLC, CBM2015-00015, Paper 49 (PTAB Nov. 4, 2015) (common order involving CBM2015-00016 and CBM2015-00018). … Continue Reading

Apple Argues to Federal Circuit a Stay of Litigation in Favor of CBM Review Should Be Nearly Automatic, Whatever the Stage of the Litigation

By Thomas L. Duston on Posted in Covered Business Method, Section 101, Sections 102/103
In appealing the denial of its request that further litigation in the Eastern District of Texas be stayed in favor of recently instituted CBM review, Apple has urged the Federal Circuit to ignore the fact that trial had already occurred, and a jury verdict rendered, in the Texas action.  In its appeal brief, Apple argues … Continue Reading

PTAB Cancels Metasearch Patents Under Section 101, Rejecting Arguments That Purported Novel Combination Directed to an Abstract Idea is Patent Eligible and That CBM Procedure Violates the Seventh Amendment

By Thomas L. Duston on Posted in Covered Business Method, Section 101, Sections 102/103
On May 22, 2015, the PTAB issued its final written decision in American Express Co. v. Lunenfeld, CBM2014-00050 (Paper 51), canceling six claims of U.S. Patent No. 8,239,451 directed to online metasearching.  The PTAB decided that all six claims are unpatentable under 35 USC § 101, and obvious under 35 USC § 103.  The PTAB characterized the … Continue Reading
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