Fenwick & West LLP

As my prior post on the 2019 Revised Patent Subject Matter Eligibility Guidance indicated, I initially anticipated only a modest uptick in allowability rates as a result of the new guidance.  After analyzing the accompanying examples, however, I concluded that the effect would likely be markedly more profound.  Subsequent conversations with examiners—many of whom have now agreed to drop their long-standing eligibility rejections—have only confirmed that belief. The examples provide analyses of 10 claims…
[This post was updated on Jan. 17, 2019] On Jan. 4, the Patent Office released the long-awaited 2019 Revised Patent Subject Matter Eligibility Guidance, which governs the Office’s examination procedure for evaluation of patent subject matter eligibility under 35 U.S.C. § 101. The new guidance distinctly changes the tone of § 101 discourse to one more in favor of eligibility than in years past.  In the same way that the tone of prior Office…
Much ink has been spilled in recent times on the standards for, and outcomes of, patent eligibility questions under § 101.  Consider, for example, USPTO Director Andrei Iancu’s remarks in September about providing additional guidance to Patent Office examiners, and various analyses of invalidation rates in the federal courts. (We touched on invalidation rates ourselves in our Bilski Blog update in August, at which time the Federal Circuit’s cumulative invalidation rate since July 2014 was…
With the U.S. Patent and Trademark Office Trial Practice Guide update released last month, a significant change was made to the substantive filings. In the revised section II.I. (Sur-replies), the following language changes the rules: “Sur-replies to principal briefs (i.e., to a reply to a patent owner response or to a reply to an opposition to a motion to amend) normally will be authorized by the scheduling order entered at institution.” TPG, p. 14. The…
Since our last update in June 2017, all the invalidation averages for decisions finding lack of subject matter eligibility have trended slightly downward in the federal courts. Specifically: The overall percentage of decisions invalidating patents under § 101 since we started tracking statistics in July 2014 has fallen slightly—from 67.5% to 66.0%—year over year. The 12-month and three-month average invalidation rates have likewise fallen (from 64.7% to 61.9%, and from 72.1% to 48.4%, respectively).…
The recent decision in SAS Institute v. Iancu — in combination with the proposed shift from a broadest reasonable interpretation (BRI) standard to the Phillips standard for claim construction used in district court — moves trials at the U.S. Patent Trial and Appeal Board toward being the most likely forum for first consideration of claim construction and patent validity, and perhaps a shift toward becoming a truer “alternative” to litigation, as Congress envisioned under the America…
Technology Assisted Review (TAR) / Predictive Coding — New Decision Thanks to Hon. (Ret.)  Andrew J. Peck, now Senior Counsel at DLA Piper, I just learned of a hot-off-the-presses (yesterday) Technology Assisted Review decision by the Utah federal district court. For a quote from, and link to, the Entrata decision, check out the recent updates to the TAR / Predictive Coding Library I maintain at this blog site. And while you’re there, you’ll see another…
If the focus on fact finding in Aatrix, Berkheimer, and Exergen from earlier this year helped provide additional clarity on the analysis of “something more,” the SAP America decision, at least to my mind, failed to clarify, and possibly further muddied, the analysis. Reaching This Result Could Have Been Easy First, a representative claim: 1. A method for calculating, analyzing and displaying investment data comprising the steps of: (a) selecting a sample…
In a much-anticipated decision, the U.S. Supreme Court held Tuesday in Oil States Energy Services v. Greene’s Energy Group, that inter partes review does not violate Article III or the Seventh Amendment. Justice Clarence Thomas wrote for the seven-justice majority, and Justice Stephen Breyer wrote a concurrence, joined by Justices Ruth Bader Ginsburg and Sonia Sotomayor. Justice Neil Gorsuch penned the dissent, in which he was joined by Chief Justice John Roberts, whose dissent was…