DOJ Urges SCOTUS to Take Up Patent Eligibility

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On May 24, 2022, the U.S. Solicitor General filed the government’s views on patent subject matter-eligibility as requested by the U.S. Supreme Court way back in May 2021.  The Solicitor General requested that the U.S. Supreme Court grant the petition for certiorari in American Axle & Manuf., Inc. v. Neapco Holdings LLC.[1]  The Solicitor General …

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Comment Period on Patent Eligibility Extended

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On September 2, 2021, the U.S. Patent and Trademark Office extended the deadline for submission of comments regarding the state of patent eligibility and its effectiveness on U.S. investments and innovation.  The new date is October 15, 2021. The USPTO issued a notice on the Federal Register on July 9, 2021, requesting comments on patent …

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Method of Preparation Claims Patent-Eligible in Illumina Modified Opinion

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On August 3, 2020, the Court of Appeals for the Federal Circuit issued a modified opinion in Illumina, Inc. v. Ariosa Diagnostics, Inc.,[1] reiterating its earlier opinion[2] finding claims directed to method of preparing cell-free fetal DNA in maternal blood as patent-eligible subject matter under 35 U.S.C. §101.  This modified opinion reflected Ariosa’s recent petition …

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American Axle Denied en banc Review

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On July 31, 2020, the Court of Appeals for the Federal Circuit denied American Axle’s petition for en banc review, in American Axle & Manuf., Inc. v. Neapco Holdings LLC,[1] with those judges seeking review not able to muster a majority of the entire panel.  This is the second iteration[2] of appellate review for American …

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SCOTUS Watch: SCOTUS Decides Against Wading into 101 Quagmire

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On January 13, 2020, the U.S. Supreme Court denied petitions for writs of certiorari in four cases dealing with patent subject matter-eligibility: HP Inc. v. Berkheimer, Hikma Pharms., Inc. v. Vanda Pharms., Inc., Garmin USA, Inc. v. Cellspin Soft, Inc., and Athena Diagnostics, Inc. v. Mayo Collaborative Servs., which was discussed earlier on this blog.  …

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SCOTUS Watch: Patent Eligibility Showdown Looming Before Supreme Court

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On January 10, 2020, the U.S. Supreme Court will discuss at its first conference meeting whether or not to take up one to four cases dealing with patent eligibility under 35 U.S.C. §101.  Patent eligibility has been a contentious source of patent application rejections or invalidations during post-grant litigation.  Medical diagnostics and software have been …

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Prosecution History Estoppel Limits Design Patent Amendments

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A fascinating ruling dealing with design patents, amendments made during prosecution, and limitations on claim scope was handed down by the Court of Appeals for the Federal Circuit on September 12, 2019 in Curver Luxembourg, Sarl v. Home Expressions Inc..[1]  Curver is an important piece in an otherwise scant design patent case law. Curver Luxembourg …

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Garage Door Tech Not Patent-Eligible

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On August 21, 2019, the Court of Appeals for the Federal Circuit held in The Chamberlain Group, Inc. v. Techtronic Inds. Co.,[1] that Chamberlain’s U.S. Patent No. 7,224,275 (‘275) directed to wireless communications technology for operating a movable barrier (i.e., garage door opener) was patent-ineligible subject matter under 35 U.S.C. §101. The ‘275 patent is …

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NIST Seeking Comments on CRISPR Lexicon

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On September 18, 2019, the National Institute of Standards and Technology (NIST)’s Genome Editing Consortium (GEC) formally sought comments on genome editing, commonly called CRISPR, terminology in order to develop a standardized system of terms and definitions for the CRISPR research community.  This is the first time the NIST has made overtures to develop a …

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Fed Circuit Watch: Claim Construction Before Patent-Eligibility Analysis

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There have been several patent-eligibility rulings by the Court of Appeals for the Federal Circuit this year, but on August 16, 2019, the Fed Circuit held that claim construction in-dispute must be resolved before patent-eligibility under 35 U.S.C. §101 can be analyzed, in MyMail, Ltd. v. ooVoo, LLC.[1]  The somewhat circuitous procedural aspects of this …

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