Posts filtered by tags: Alice Mayo[x]


 

Boom! You Can’t Patent an Escrow Method

Boom! Payments, Inc. v. Stripe, Inc. (Fed. Cir. 2021) I used to play golf fairly regularly and got into the habit of announcing “BOOM!” on every drive.  It didn’t help my game.  BOOM!’s great name here also didn’t save its patent from dancing the Alice Two Step. (Note: I was 15 years old at the time–on my high-school freshman team getting free-rounds for the season).  This case is another affirmance of a dismissal for lack of patent eligibility. Under Alice/Mayo, the Supreme Court’s patent eligi...
Tags: Supreme Court, Law, Patent, Alice, Fed, PTO, Federal Circuit, Alice Mayo, Bogaard, Boom Payments Inc, Stripe Inc Fed


Conventionality is Irrelevant to Alice Step 1

by Dennis Crouch iLife Technologies, Inc. v. Nintendo of America, Inc. (Fed. Cir. 2021) (Non-Precedential Decision) The Trial: The jury sided with iLife–finding Nintendo liable for infringing iLife’s U.S. Patent No. 6,864,796 and awarding $10 million in damages. At trial, Nintendo had argued that the patent was invalid for lack of enablement and written description, but the jury denied those defenses. Nintendo also challenged the patent in an IPR, but the claims not proven invalid. Here, the c...
Tags: Law, Nintendo, Mario Kart, Patent, Federal Circuit, IPR, Dennis Crouch, Alice Mayo, Alice Step, iLife Technologies Inc, Nintendo of America Inc Fed, Michael Wilson Munck Wilson Mandala, Stephen Smith Cooley


Flash-of-Genius as Evidence of Eligibility

Steve Morsa v. USPTO (Supreme Court 2020) Patent holder and occasional Patently-O commentor Steve Morsa has filed his petition for writ of certiorari to the US Supreme Court on his pending Patent App. No. 13/694,192.  [Petition]. Morsa’s approach is interesting — using the Supreme Court’s “flash of genius” decision in a positive light and arguing that his own flash of creative genius is proof of eligibility. [T]he new device, however useful it may be, must reveal the flash of creative genius, no...
Tags: Supreme Court, Law, Congress, Patent, US supreme court, Patent Office, Morsa, Alice Mayo, Cuno, Steve Morsa, USPTO Supreme Court, Cuno Engineering Corp, Automatic Devices Corp, Federal Circuit and Patent Office, Federal Circuit USPTO


In Eligibility Doctrine – What Claim Elements do you Ignore?

by Dennis Crouch Thomas v. Iancu (Supreme Court 2020) Doug Thomas is a silicon valley patent attorney at a small (and thriving) firm. Thomas is also a prolific inventor and entrepreneur. In April 2020, I wrote about the Federal Circuit’s opinion affirming a USPTO rejection of his claimed method of “notifying users having patents of subsequent publications that reference the patents.”  The April decision was one of four cases that he has brought to the Federal Circuit: In re Thomas, Appeal No....
Tags: Supreme Court, Law, Congress, Court, Uspto, Patent, Alice, Board, Thomas, Federal Circuit, Dennis Crouch, Doug Thomas, Diehr, Mayo Alice, CLS Bank Int, Alice Corp Pty Ltd


New USPTO Guidance May Clear Path for More Technology Patents

James J. DeCarlo Contributor James J. DeCarlo is a shareholder in Greenberg Traurig’s Intellectual Property Practice Group. A registered patent attorney, he is actively involved in virtually all aspects of intellectual property counseling. He has spent nearly 30 years litigating, licensing and procuring patents in the software, hardware, internet and networking spaces, among many others. Mr. DeCarlo can be reached at [email protected] Chinh H...
Tags: TC, Column, Lawsuit, Government, Tech, Policy, Patents, Uspto, Lawyers, Mayo, Pham, Examiner, United States Patent and Trademark Office USPTO, Alice Mayo, DeCarlo, Verified Experts


Inventive yet Not: Reconciling Eligibility and Obviousness

by Dennis Crouch Mario and Jose Villena have thus far been stymied in their attempt to obtain patent protection for their claimed “system for distributing real-estate related information.” The pair filed an international PCT application in 2004 followed by a U.S. non-provisional in 2005 that has been abandoned, and finally the present application in 2011.  U.S. Patent App. No. 13/294,044. The Examiner issued a final rejection in 2014 on several grounds – obvious and anticipated / indefinite / fa...
Tags: Supreme Court, Law, Court, Quinn, Zillow, Patent, Alice, APA, U S Supreme Court, PTO, Federal Circuit, AVM, PTAB, Alice Mayo, Villena, Dennis Crouch Mario


More Abstract Ideas for the PTO’s Hopper

ASGHARI-KAMRANI V. UNITED SERVICES AUTOMOBILE ASSOCIATION (Fed. Cir. 2018) Today the Federal Circuit issued three parallel decisions all stemming from the patent case brought by Asghari-Kamrani. The first two decisions affirm the E.D.Va. judgment-on-the-pleadings.  In those cases, the district court held that the patentee (Asghari-Kamrani) failed to state a plausible claim for relief within her complaint. In particular, the court found that all the asserted claims were invalid for lack of eligib...
Tags: Law, Patent, Hopper, PTO, Federal Circuit, PTAB, Alice Mayo, Asghari Kamrani, Federal Circuit AFFIRMED, United Services Automobile Ass


Patent Eligibility and Failing to State a Claim for Patent Infringement

by Dennis Crouch TS Patents v. Yahoo! Inc. (Fed. Cir. 2018) In this case, TS patents (inventor Sheng Tai Tsao) has asserted four patents against Yahoo!: U.S. Patent Nos. 9,280,547 (“the ’547 patent”); 8,799,473 (“the ’473 patent”); 8,713,442 (“the ’442 patent”); and 8,396,891 (“the ʼ891 patent”).  All four patents are related to remote hosting.  When a user logs-in, the system creates a per-user-session hierarchical folder list that is sent to the user’s local device.  When a user logs-out, the ...
Tags: Supreme Court, Law, Matthew Dowd, Patent, Fed, Newman, HP Inc, Federal Circuit, Linn, Dennis Crouch, Alice Corp Pty Ltd, Alice Mayo, CLS Bank International, Berkheimer, Aatrix Software Inc, Green Shades Software Inc


Commissioner Hirshfeld on Increasing Certainty in US Patent Law

Guest Post by Stephen C. Glazier, Partner at Akerman LLP On April 26, 2018 the U.S. Patent Commissioner, Andrew Hirshfeld, spoke at our webinar regarding current developments at the U.S. Patent Office. [Link Below] A major theme of Commissioner Hirshfeld’s remarks was the PTO’s revived focus on increasing reliability, certainty, and enforceability of issued patents and the application process.  The underlying goal here is to further increase the value of patents and their beneficial impact on in...
Tags: Supreme Court, Law, US, Patent, Alice, PTO, U S Patent Office, Akerman LLP, Alice Mayo, Hirshfeld, Stephen C Glazier, Andrew Hirshfeld


Proving the Factual Underpinnings of Eligibility

by Dennis Crouch Director Iancu has made clear that the current state of patent eligibility jurisprudence is untenable.  Examiners need clear guidance — something he and I both see as lacking in the Supreme Court jurisprudence.  In addition to being ambiguous, we also share the perspective that the Alice/Mayo test unduly restricts the scope of eligible subject matter.  The PTO’s action here involves several fronts: (1) issuing guidance that is as-clear-as-possible for examiners and applicants; (...
Tags: Supreme Court, Law, Congress, Uspto, Patent, PTO, Federal Circuit, Dennis Crouch, Iancu, Alice Mayo, Berkheimer


Eligible: Method of Measuring Body Temperature

by Dennis Crouch Exergen Corp. v. Kaz USA (Fed. Cir. 2018) Following trial, a jury sided with the patentee Exergen – finding the asserted body thermometer claims infringed and not-invalid.  Post trial, the District Court confirmed the judgment and denied Kaz’s motion for invalidity under Section 101.  On appeal, a divided Federal Circuit has affirmed-in-part — with Judges Moore and Bryson siding with the patentee (valid under 101) and Judge Hughes arguing invalidity.  Although nonprecedential, t...
Tags: Post, Law, Court, Patent, Moore, Hughes, District Court, Bryson, Federal Circuit, Kaz, Exergen, Alice Mayo, Dennis Crouch Exergen Corp, Kaz USA Fed, FedCir R


Electronic Medical Records: Not Eligible

Ex parte Naeymi-Rad (PTAB 2018) Intelligent Medical Objects, Inc. (IMO) has an interesting business of capturing, standardizing, and simplifying medical documentation used in 3,500 hospitals and by 450,000 doctors.  This process is critical for both treatment and payment — all in an environment where mistakes can lead to death and bankruptcy.  In the U.S., companies have spent billions of dollars on designing electronic medical record systems — yet major problems remain. IMO’s CEO Frank Naeymi-...
Tags: Law, Diamond, Patent, Richard Beem, Federal Circuit, Imo, PTAB, Diehr, Mayo Alice, Intelligent Medical Objects Inc, Frank Naeymi Rad, Alice Mayo


Eligibility: A Factual Dispute Requires Alleged Facts

The recent non-precedential opinion of Automated Tracking Solutions v. Coca Cola provides something of a backstop to AATRIX and Berkheimer.   The ATS panel includes Judges Moore and Stoll – the two leading judges pushing for more formality in considering factual conclusions underlying an eligibility decision.  In ATS, however, the panel affirmed a district court judgment on the pleadings that the asserted patent lacks eligibility.  The panel restated its prior conclusions that “patent eligibil...
Tags: Law, Coca Cola, Patent, Moore, District Court, Federal Circuit, Stoll, Lemley, Alice Mayo, Berkheimer, Automated Tracking Solutions, Gugliuzza BU


Isolating and Measuring a Natural Phenomenon

by Dennis Crouch Ex Parte Simons, APPEAL 2016-002684 (Patent Tr. & App. Bd. Jan. 31, 2018) (Decision on Rehearing) In this case pending before the USPTO, Australian company Haplomic Technologies is seeking to patent a method of mapping whether methylated DNA bases are cis or trans. 16. A method for improving methylation mapping, comprising, substantially isolating a DNA molecule from the biological sample, wherein the DNA molecule is an individual metaphase chromosome or a chromatid, or a fragme...
Tags: Europe, Law, Patent, Board, District Court, Appellant, Federal Circuit, PTAB, Alice Mayo, Dennis Crouch Ex Parte Simons, Haplomic Technologies, Mark Nuell, Roberts Mlotkowski


Eligibility Analysis and its Underlying Facts: A Roadmap for Surviving Dismissal on the Pleadings

by Dennis Crouch Following upon its February 8 decision in Berkheimer, the Federal Circuit has again sided with the Patentee on eligibility grounds – holding here that the lower court’s judgment on the pleadings failed to consider disputed issues of material fact.  Prior to this pair of cases, it was unclear whether eligibility analysis involved factual questions.  Although pair of cases indicate a precedential sea-change , both opinions were written by Judge Moore and joined by Judge Taranto (...
Tags: Supreme Court, Law, Patent, Phillips, Moore, District Court, Reyna, Teva, Federal Circuit, Stoll, Dennis Crouch, Alice Mayo, Eligibility Analysis, Berkheimer the Federal Circuit, Taranto Berkheimer


Climate Change is an Abstract Idea?

By Dennis Crouch GlucoVista’s patent application claims a method of determining glucose concentration in a body (i.e., physical matter) by changing the body’s surface temperature and measuring the change in infrared (IR) radiation emitted at the wavelength associated with Glucose IR emissions.  The concentration is then calculated based upon these measurements.  Claim 1 though is not tied to glucose, but rather a generic method for determining the concentration of a ‘substance.’ In the ex parte...
Tags: Law, Diamond, Patent, Fed, PTAB, Diehr, Alice Mayo, Electronics for Imaging Inc, Digitech Image Technologies LLC, Dennis Crouch GlucoVista


Guest Post -- Diagnosing Patent Subject Matter Eligibility

By John Wizeman* and Anthony D. Sabatelli** -- Clarity on patent subject matter eligibility is still being sought five years after Mayo [1] and three years after Alice [2]. Further adding to the confusion is the fact that discoveries in diagnostics, despite their apparent importance to the biomedical sciences, have been repeatedly determined as ineligible subject matter under 35 USC § 101. The two step Alice/Mayo test has increased the percentage of invalid patents, and the decision by the Supre...
Tags: Supreme Court, Law, Usc, Alice, Mayo, Sequenom, Ariosa, Patent Docs, Patentable Subject Matter, Alice Mayo, John Wizeman, Anthony D Sabatelli Clarity


Role of the Specification and Prosecution History in Patent Eligibility Analysis

by Dennis Crouch The Federal Circuit’s decision in Two-Way Media is in some amount of tension with the court’s 2016 decision in Amdocs v. Openet Telecom.   In Amdocs, the court noted that the claims appeared problematic under Section 101 (abstract ideas), but that the architecture – as specifically described in the specification but more generically claimed – showed that the invention was actually a technological improvement.  In Two-Way Media, the court faced the same dilemma but arrived at the...
Tags: Law, Court, Patent, Alice, Fed, U S Supreme Court, Mayo, Corning, Mentor Graphics Corp, Reyna, Federal Circuit, Dennis Crouch, Amdocs, Nvidia Corp, Prometheus Laboratories Inc, Synopsys Inc


Receiving a Sequence of Symbols

I am somewhat amazed by Google’s New Patent No. US 9633013 B2; Claim 1 below: 1. A computer-implemented method comprising: receiving a sequence of symbols that have been optically captured from a rendered document; determining that the sequence of symbols includes a particular symbol, word, or phrase that has been mapped to one or more actions; selecting an action from the one or more actions; and transmitting an instruction to a document management system to perform the selected action. In ad...
Tags: Google, Law, US, Patent, Apn, Alice Mayo, Martin King, Subject Matter Eligibility, Abstract Idea


Will the Supreme Court react to a Business Method Patent Held Valid?

by Dennis Crouch In Amdocs v. Openet Telecom, a Federal Circuit panel reversed the lower court’s ineligibility finding over a vigorous dissent.  Judges Plager and Newman versus Judge Reyna.  Claim 1 of the disputed business-software patent is shown below. 1. A computer program product embodied on a computer readable storage medium for processing network accounting information comprising: computer code for receiving from a first source a first network accounting record; computer code for correlat...
Tags: Supreme Court, Law, Patent, Alice, Newman, Mayo, Reyna, Federal Circuit, Dennis Crouch, Amdocs, Plager, Alice Mayo, Openet Telecom, Openet, Federal Circuit Opinion


EasyWeb => Easy 101 Invalidation

EasyWeb v. Twitter (Fed. Cir. 2017) (nonprecedential opinion) In this case, the appellate court affirmed summary judgment that all of the asserted claims of five EasyWeb patents are ineligible under the Mayo/Alice interpretation of 35 U.S.C. 101 and therefore invalid. Representative Claim 1 of U.S. Patent No. 7,685,247 is directed to a message-publishing-system that “accepts messages in multiple ways, such as by fax, telephone, or email” then verifies the message as being sent from an authorized...
Tags: Law, Patent, Federal Circuit, Alice Mayo, EasyWeb, Twitter Fed, Alice Although EasyWeb


No real consensus yet on CBM Sunsetting

Once initiated, CBMs are identical to post-grant reviews (PGR) – allowing for patents to be challenged on any patentability grounds.  As implemented, this includes 101 and 112 challenges in addition to the more traditional obviousness and novelty grounds.   PGRs, however, are limited to only AIA-patents and must be filed within a 9-month window from issuance.  Those caveats have severely limited the number of PGR petitions filed thus far.   For CBMs, the AIA-patent restriction and 9-month window...
Tags: Law, China, Eu, AIA, Patent, State Street, CBM, PGR, PTAB, Alice Mayo, Covered Business Method Review, Unconstitutional AIA


Step one: Find the Gist (Do not Construe)

In Blue Spike v. Google, the patentee has asked the Supreme Court to further elucidate its test for eligibility under Mayo, Alice, and Myriad with the following three questions presented. May patentable subject matter under § 101 properly be assessed by over-generalizing patent claims to a “gist”? May a district court properly assess patentability under § 101 prior to authoritatively construing the patent’s claims? May a district court adjudicating a motion for judgment on the pleadings on § 10...
Tags: Google, Supreme Court, Law, Patent, PTO, Federal Circuit, Mayo Alice, Alice Mayo, Blue Spike, Mayo Alice Step, Google Blue Spike


Eligibility: Get Technical or Get Denied

Dennis Crouch The principle that patent prosecutors are following today is in the headline: Get Technical or Get Denied.  The following is a case-in-point. Nonprecedential decision today in Clarilogic v. FormFree Holdings affirming that the claims of FormFree’s U.S. Patent No. 8,762,243 are ineligible under 35 U.S.C. § 101 as directed to an abstract idea.   [Decision: clarilogic] The patent is directed toward a credit reporting scheme.  The gist – according to the court: In brief, the … system s...
Tags: Supreme Court, Law, Patent, Fed, Alstom, Federal Circuit, Dennis Crouch, Diehr, Alice Mayo, Clarilogic, FormFree Holdings, Elec Power Grp LLC


Welcome Wilbur Ross – Secretary of Commerce

Mr. Wilbur Ross is now Secretary of Commerce and I expect that we will likely begin to receive further information from the PTO as to its current and future management structure. Meanwhile, Michelle Lee appears to still be leading the PTO and again signed this week’s patents.  A somewhat odd and steady steady drumbeat from several sources has been demanding Michelle Lee’s resignation or removal.  Lee has acted in pro-patent-applicant ways in several respects. Notably, she has issued more patents...
Tags: Supreme Court, Law, Commerce, Uspto, Patent, Lee, PTO, Michelle Lee, Wilbur Ross, Kappos, Alice Mayo