Case Updates

The following excerpts were presented in previous CASE UPDATES:

Another Federal Circuit Case Regarding Patent-Ineligible Subject Matter

As claim evaluation under 35 U.S.C. 101 (post Alice) is a quickly evolving area of law, I wanted to update you on the latest decision from the Federal Circuit. Yesterday, the Federal Circuit delivered the attached opinion, in which it upheld a district count determination of invalidity under 35 U.S.C. § 101. The patents in question were directed to systems and methods for real-time monitoring of an electric power grid.

The Court reasoned that “Though lengthy and numerous, the claims do not go beyond requiring the collection, analysis, and display of available information in…

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Federal Circuit Invalidates Claims under 112, 2nd paragraph

Late last week, the U.S. Court of Appeals for the Federal Circuit rendered the attached decision in the case of Advanced Ground Information Systems v. Life360, Inc. (I have highlighted relevant passages in the attached). In this case, the Federal Circuit upheld a district court’s determination that certain claims of the asserted patents were invalid under 35 U.S.C. § 112, second paragraph (now 35 U.S.C. § 112(b)) because the specification did not disclose sufficient structure (e.g., an algorithm) for performing the claimed function.

Specifically, the claims at issue recited a “symbol generator.” The Court determined that this feature was a functional term, and as a functional term was to be…

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New Post-Final Pilot Program with the U.S. PTO

Yesterday, the U.S. PTO published the attached noticed regarding its new pilot program for post-Final practice (P3 program). I have highlighted key portions of the notice. This new pilot program blends features from the current AFCP program (e.g., narrowing amendments or proposed amendments may be presented) and the pre-appeal program (the substance of the submission is limited to 5 pages). There is no PTO fee to request participation in the program. The PTO has scheduled the program to last through January 2017 (or until 1,600 requests are received).

The new aspect in this program is the ability of the applicant’s representative to participate in the panel (e.g., AFCP panel) process. Presently, this participation is…

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Using “Configured to” Language in Patent Claims

Today, a patent Examiner called one of the attorneys at our office to suggest adding the language of “configured to” in front of a functional phrase in the claim. The reason that I’m bringing this to your attention is to let you know that (according to the Examiner who called today) Examiners have been instructed by the PTO to give patentable weight to “considered to” language in claims, in view of the In re Giannelli case. Although that case is two years old, Examiner’s have been given renewed instruction to consider the holding in that case, when examining claims that…

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Federal Circuit Finds Method for Preserving Cells Patent-Eligible

On Tuesday, the Federal Circuit decided another case, which may be useful to Applicants when addressing certain rejections made under 35 U.S.C. § 101. I have attached a highlighted copy of the opinion for you reference. While the underlying subject matter dealt with a patent in the life sciences area, its holding is not limited to that technological space.

The district court granted summary judgment, finding that the patent was directed to ineligible patent subject matter (under Alice), however, the Federal Circuit reversed that finding. Significantly, the Federal Circuit stated with…

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