USPTO: No Change to Software Patent Eligibility Examination After CLS Bank

By Eric Waltmire on May 22, 2013

In a memo dated May 13, 2013, the USPTO told its Patent Examining Corps that the Federal Circuit’s decision in CLS Bank v. Alice, Dkt. No. 2011-1301 (Fed. Cir. May 10, 2013) resulted in “no change in examination procedure for evaluating subject matter eligibility.” On May 10, 2013 the Federal Circuit issued its en banc [...]

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Options When Your Invention Is Stolen

By Eric Waltmire on May 6, 2013

If you disclosed your invention to someone and that person subsequently copied your invention and or filed a patent application on the invention, you may have options to take action depending on the circumstances. Several scenarios are explained below. By an non-inventor employee If your employee, who is not an inventor, is commercializing or has [...]

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Ensuring Strong Patent Enforcement Position Through Virtual Patent Marking

By Eric Waltmire on May 1, 2013

U.S. patent law encourages patent owners to mark products or services that are covered by at least one claim of a patent. Therefore patent marking is an important step in ensuring a strong patent enforcement position if infringement occurs. The America Invents Act now allows “virtual patent marking” as explained below. Reason for Marking Section [...]

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How to Stop A Competitor From Getting a Patent?

By Eric Waltmire on April 22, 2013

When discovering that a competitor has filed a patent application on a product or service you are making or selling or intend on making or selling, the question sometimes arises how can the competitor be stopped from obtaining a patent? This article will review the options to consider in light of a known or suspected [...]

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Inventorship: When was the Invention Conceived?

By Eric Waltmire on March 26, 2013

Dawson v. Dawson, Dkt. No. 2012-1214, 1215, 1216, 1217 (Fed. Cir. March 23, 3013). This case deals with the issue of when an invention is conceived and involves an invention ownership dispute between a university and a pharmaceutical manufacturer. The issue was whether an inventor, Dr. Dawson, conceived of the invention while employed at the [...]

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Real Estate Software Patent: User Action Steps Prevent Direct Infringement

Real Estate Software Patent: User Action Steps Prevent Direct Infringement

By Eric Waltmire on March 25, 2013

Move, Inc. v. Real Estate Alliance Ltd., Dkt. No. 2012-1342 (Fed. Cir. March 4, 2013) Move sought declaratory judgement of non-infringement of two of Real’s patents, U.S. 5,032,989 and U.S. 4,870,576. Real counterclaimed  that Move’s “Search by Map” and “Search by Zip Code” website functions infringed the patents. The district court issued summary judgement of [...]

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Gambling Machine Patents: Claims Requiring Player Action Raise Indirect Infringement Issues

Gambling Machine Patents: Claims Requiring Player Action Raise Indirect Infringement Issues

By Eric Waltmire on March 18, 2013

Aristocrat Tech. Australia v. Int’l Game Tech., Dtk No. 2010-1426 (Fed. Cir. 2013). Aristocrat sued IGT alleging that IGT’s gambling game devices infringed U.S. Patent No. 7,056,215 (“the ’215 patent”) and U.S. Patent No. 7,108,603 (“the ’603 patent”). The district court granted summary judgment of non-infringement. This case presented an issue of direct vs. indirect [...]

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Federal Circuit to Consider When A Computer-Implemented Invention Is Patentable

By Eric Waltmire on October 9, 2012

CLS Bank International v. Alice Corporation, No. 2011-1301 (Fed. Cir. 2012) (Order granting en banc rehearing). The Federal Circuit Court of Appeals has granted an en banc rehearing in the CLS Bank case. As I previously discussed, the majority of a panel found CLS patents directed to using an intermediary in a financial transaction were [...]

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Method of Managing Stable Value Protected Life Insurance Policy Found Not Patentable

Method of Managing Stable Value Protected Life Insurance Policy Found Not Patentable

By Eric Waltmire on July 28, 2012

Bankcorp v. Sun Life, No. 2011-1467 (Fed. Cir. 2012) [PDF]. Bankcorp sued Sun alleging infringement of U.S. Patent 5,926,792 and 7,249,037. The patents are directed to methods and systems for administering and tracking the value of life insurance policies.  The district court found both patents invalid as claiming an unpatentable abstract idea under section 101. [...]

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New Manifestly Evident Test Maintains Broad View of Patent Eligible Subject Matter

New Manifestly Evident Test Maintains Broad View of Patent Eligible Subject Matter

By Eric Waltmire on July 21, 2012

CLS Bank International v. Alice Corporation, Dkt No. 2011-1301 (Fed Cir. July 9, 2012) [11-1301 Opinion].  CLS sued Alice for declaratory judgement that  U.S. Patent No. 5,970,479, 6,912,510, 7,149,720, and 7,725,375 owned by Alice were invalid, unenforceable, or otherwise not infringed. The district court held that each of Alice’ s patents were invalid under section [...]

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