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THE NARROW SCOPE OF BILSKI

As noted previously, the U.S. Supreme Court issued its long-awaited opinion in Bilski v. Kappos today.  Although the Bilksi patent in dispute was drawn to particular business method claims for hedging risk and the application of that concept to energy markets, many in the field of intellectual property have been curious of the possible effects a decision in Bilski could have for other business methods, such as software and medical diagnostic methods.

For now, the intellectual property community will have to continue to wait.  In Bilski, the U.S. Supreme Court limited their decision to the patentability of the particular methods of the patent at issue, and declined to address the patentability of business method claims in general, much less other specific kinds of business methods.  Accordingly, other business methods, such as software and medical diagnostics methods, have not been ruled on, nor have they been ruled out.

H.R. 1249 PASSES IN HOUSE

Yesterday, the House of Representatives passed H.R. 1249, commonly known as the America Invents Act, which seeks to reform the U.S. patent system.  The bill recieved bipartisan support, with over 70% of the House voting in favor.  Notable provisions of this bill include:

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When are Computer-related Inventions Considered Patent Eligible Rather than Merely Abstract Ideas?

When are computer related inventions considered patent eligible rather than merely abstract ideas? Put simply, there is no bright line test at the moment, which was essentially (though unofficially) confirmed in CLS Bank International v. Alice Corp on May 10, 2013. Rather than providing a specific new test for determining whether a computer-implemented invention is patent eligible and not merely an “abstract” idea under Section 101 of the U.S. patent laws, the Federal Circuit in this case simply issued a per curiam opinion affirming the District Court’s ruling. The District court held that the asserted claims of Alice Corp.’s U.S. patents were invalid because they did not recite patent-eligible subject matter, but were instead merely directed to the abstract idea of “employing an intermediary to facilitate simultaneous exchange of obligations in order to minimize risk,” despite involving computers.

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THE WHITE HOUSE GOES TROLL HUNTING

The Obama administration has released a memo to Congress outlining several measures that would help curtail “patent trolling.”   The White House had no qualms about using the colloquial term “patent troll” to describe entities that – rather than researching or developing technology relative to their rights — acquire patents solely to extract payments from alleged infringers. 

The suggested reforms are aimed at increasing transparency and providing defendants “better legal protection against liability.”   A few recommendations worth noting include (1) requiring parties to disclose the “real-party-in-interest” in lawsuits and demand letters; (2) encouraging the publication of demand letters to make them accessible to the public; (3) protecting end users using “off-the-shelf” products; and (4) make it easier for a prevailing defendant to obtain an award of attorneys’ fees in a patent infringement action.   The memo also recommends facilitating challenges to business method patents and restricting the circumstances under which the International Trade Commission (ITC) can issue injunctions.  

While it remains to be seen what legislative action will follow, the administration has – for the time being – approved the creation of a US Patent and Trademark Office (PTO) website informing patent troll victims about their rights and defenses.  For more information click here.