On March 27, 2024, the United States Court of Appeals for the Federal Circuit (the “Federal Circuit”) issued an opinion, affirming a United States District Court for the Northern District of Illinois (the “district court”) decision relating to U.S. Patent Nos. 7,676,411 (the “’411 patent”); 7,813,996 (the “’996 patent”); 6,766,304 (the “’304 patent”); and 6,772,132 (the “’132 patent”), (collectively, the “patents-in-suit”). The district court held the asserted claims of the ’411 and ’996 patents invalid, and a jury found the asserted claims of the ’304 and ’132 patents valid and infringed and awarded $6,610,985 in damages. The Federal Circuit affirmed. Brumfield, Tr. for Ascent Tr. v. IBG LLC, No. 2022-1630, __F.4th__, 2024 WL 1292151 (Fed. Cir. Mar. 27, 2024). 

On April 4, 2024, the U.S. Court of Appeals for the Federal Circuit (“CAFC”) affirmed the U.S. District Court for the District of Delaware’s decision finding asserted claims invalid under 35 U.S.C. § 101. In October 2021, AI Visualize, Inc. accused Nuance Communications, Inc. and Mach7 Technologies, Inc. of infringing certain claims of U.S. Patent Nos. 8,701,167; 9,106,609; 9,438,667; and 10,930,397. The asserted patents share substantially the same specification and are directed to the visualization of medical scans.

On March 4, 2024, the United States Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion vacating and remanding four final written decisions of the Patent Trial and Appeal Board (“PTAB”), which found all claims of U.S. Patent Nos. 8,152,788; 8,784,398; 8,771,249; and 8,708,990 to be unpatentable as obvious.

On January 9, 2024, the United States Court of Appeals for the Federal Circuit affirmed a decision by the Western District of Washington, determining that claims in two of plaintiff’s patents were directed to ineligible subject matter under 35 U.S.C. § 101.  IBM Corp. v. Zillow Group, Inc., No. 2022-1861 (Fed. Cir. Jan. 9, 2024).  Plaintiff had asserted the patents, which claim methods and systems for improving how search results are displayed to users.  Defendant moved to dismiss under Rule 12(b)(6).  The district court found the claims constituted ineligible subject matter as they are directed to abstract ideas and lack an inventive concept.  The Federal Circuit panel (Judges Prost, Hughes, and Stoll) agreed, stating that the claims “do not disclose any technical improvement to how computer applications are used.”  Judge Stoll dissented in part, on the basis that plaintiff’s proposed construction of “user context vector” in the ’676 patent should have been addressed.

On October 16, 2023, the United States Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion that (i) reversed the District Court for the Northern District of California’s pre-verdict judgment as a matter of law (JMOL) of nonobviousness, (ii) affirmed the district court’s decision to deny defendant’s pre-verdict and post-trial motions for JMOL regarding noninfringement, (iii) reversed the district court’s denial of defendant’s pre and post-trial motions to exclude the testimony of patent owner’s damages expert, (iv) vacated the lost profits award, and (v) remanded the case for further consistent proceedings.  Cyntec Co. v. Chilisin Electronics Corp., No. 2022-1873, --F.4th.--, 2023 WL 6798376 (Fed. Cir. Oct. 16, 2023).

USC IP Partnership, L.P. (“USC”) filed a patent infringement lawsuit against Facebook, Inc., succeeded by Meta Platforms, Inc. (collectively, “Meta”), in the United States District Court for the Western District of Texas.  USC accused Meta’s “News Feed” feature of infringing U.S. Patent No. 8,645,300 (“the ’300 Patent”).  The ’300 Patent claims a method for predicting which webpages to recommend to a web visitor based on inferences of the visitor’s intent by using an “intent engine.”  Meta moved for summary judgment of invalidity of all claims of the ’300 Patent on the ground that they are ineligible for patenting, under 35 U.S.C. § 101.  A week before trial was scheduled, Judge Alan Albright granted summary judgment.  USC IP P’ship, L.P. v. Facebook, Inc., 576 F. Supp. 3d 446 (W.D. Tex. 2021) (“Dist. Ct. Order”).

On July 14, 2023, the United States Court of Appeals for the Federal Circuit (the “Federal Circuit”) issued an opinion, affirming the decision of the United States District Court for the Central District of California (the “district court” or “Central District of California”) that U.S. Patent Nos. 9,087,321 (the “’321 patent”) and 10,936,685 (the “’685 patent”), (collectively, the “asserted patents”) are invalid under 35 U.S.C. § 101.  Trinity Info Media, LLC v. Covalent, Inc., No. 2022-1308, 2023 WL 4536366 (Fed. Cir. July 14, 2023).

On June 27, 2023, the United States Court of Appeals for the Federal Circuit (“CAFC”) affirmed a decision by the United States Patent and Trademark Office, Patent Trial and Appeal Board (“PTAB”), holding that proposed substitute claims were not patentable for lack of written description and lack of enablement under 35 U.S.C. § 112.  Medytox, Inc., v. Galderma S.A., No. 2022-1165 (Fed. Cir. June 27, 2023).  The CAFC panel (Dyk, Reyna, and Stark) reviewed the PTAB’s legal conclusions de novo and its factual findings for substantial evidence.  In affirming the PTAB, the CAFC concluded that the substitute claims were not enabled because a skilled artisan would not have been able “to make and use all of what is claimed.”

On February 21, 2023, Magistrate Judge Aaron of the United States District Court for the Southern District of New York recommended that the District Court grant defendant’s Rule 12(b)(6) motion to dismiss patent claims, finding that the claims of the asserted patent were directed to patent-ineligible subject matter.  Stylitics, Inc. v. Findmine, Inc., Case No. 1-22-cv-02983 (S.D.N.Y. February 21, 2023).

On January 17, 2023, the U.S. Court of Appeals for the Federal Circuit (CAFC) affirmed a decision by the United States District Court for the District of Massachusetts holding that certain claims of U.S. Pat. No. 7,299,067 (’067 patent) were not patentable under 35 U.S.C. § 101. Riggs Tech. Holdings, LLC. v. Cengage Learning, Inc., No. 2022-1468, (Fed. Cir. Jan. 17, 2023).  The CAFC panel (Taranto, Chen, and Stoll) reviewed the district court’s dismissal de novo and reached the same conclusion as the district court:  the representative claim is directed to an abstract idea containing no inventive concept and the patent is not eligible for patent protection.

On October 17, 2022, the United States Court of Appeals for the Federal Circuit (CAFC) affirmed the ruling of the Western District of Washington (W.D. Wash.) that patents directed to abstract ideas absent a transformative inventive concept are not deemed to be patentable subject matter under 35 U.S.C. § 101. IBM v. Zillow Grp., Inc., No. 2021-2350, -- F.4th -- (Fed. Cir. Oct. 17, 2022).

On July 18, 2022, the United States Court of Appeals for the Federal Circuit (“CAFC”) issued a precedential opinion affirming a judgment by the United States District Court for the Eastern District of Delaware (Chief Judge Colm F. Connolly) that plaintiff's organ transplant diagnosis patents encompassed unpatentable subject matter.  CareDx, Inc. v. Natera, Inc., __ F.3d __ (Fed. Cir. July 18, 2022).  In its decision, the CAFC held that the district court correctly found the asserted claims to be directed to a natural phenomenon and that the claimed combination of steps is not inventive.

On March 15, 2022, the U.S. Court of Appeals for the Federal Circuit (“CAFC”) affirmed the judgment of the U.S. District Court for the Eastern District of Texas, dismissing the complaint of plaintiff Repifi Vendor Logistics, Inc. (“Repifi”) for failure to state a claim upon which relief can be granted, because the asserted claims are ineligible for patent protection under 35 U.S.C. § 101. Repifi Vendor Logistics, Inc. v. IntelliCentrics, Inc., __ F.4th __ (Fed. Cir. Mar. 15, 2022).

On November 15, 2021, the United States District Court for the Eastern District of Texas found that the asserted claims directed at data collection, storage, management, and access were abstract, but refused to dismiss the claims under the second step in the Alice analysis. Gravel Rating Systems, LLC v. McAfee, LLC, Case No. 4:21-CV-259-ALM.

On March 25, 2021, the U.S. Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion affirming a ruling of the Patent Trial and Appeal Board (“PTAB”) finding patent claims directed to methods of interpreting genetic data to be patent ineligible.  In re Bd. of Trs. of the Leland Stanford Junior Univ., --- F.3d --- (Fed. Cir. Mar. 25, 2021).  The CAFC found that the rejected claims are drawn to patent-ineligible abstract mathematical calculations and statistical modeling, and that the claim limitations do not establish an inventive concept sufficient to transform such subject matter into patentable subject matter.

On December 14, 2020, the Court of Appeals for the Federal Circuit (CAFC) affirmed a decision by the United States District Court for the Central District of California holding all asserted claims of appellant’s ’305 patent ineligible under 35 U.S.C. § 101.  Adaptive Streaming Inc. v. Netflix, Inc., __ F.3d __ (Fed. Cir. December 14, 2020).  The CAFC concluded that the district court correctly found that the claims were directed to an abstract idea and lacked any inventive concept, and that dismissal of appellant’s complaint under Rule 12(b)(6) was proper.
 

On December 1, 2020, the United States District Court for the Northern District of Illinois issued an opinion denying plaintiff Abbott Laboratories’ motion to dismiss infringement counterclaims brought by defendants Grifols Diagnostic Solutions Inc., Grifols Worldwide Operations Ltd., and Novartis Vaccines and Diagnostics, Inc.  Abbott brought a declaratory judgment action against defendants asserting that U.S. Patent No. 7,205,101 (“the ’101 patent”) is invalid.  Defendants filed a counterclaim asserting that Abbott infringes claim 7 of the ’101 patent.  Abbott moved to dismiss the counterclaim on the basis that claim 7 is invalid as a matter of law under 35 U.S.C. § 101 because it is directed to a patent-ineligible natural phenomenon.
 

On November 10, 2020, the United States Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion reversing-in-part the invalidity judgment of the United States District Court for the District of Delaware, as it pertained to patent eligibility, and vacating its remaining infringement, willfulness, and prior art invalidity findings.  C.R. Bard Inc. et al. v. Angiodynamics, Inc., __ F.3d __ (Fed. Cir. Nov. 10, 2020).
 

On October 23, 2020, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion vacating and remanding a bench ruling of the United States District Court for the District of Delaware holding all 159 claims in five asserted patents ineligible under 35 U.S.C. § 101. Realtime Data LLC v. Reduxio Systems, Inc., __ F.3d __ (Fed. Cir. October 23, 2020).  In its decision, the CAFC concluded that the district court’s analysis of patent eligibility under Section 101 was too cursory to allow for meaningful appellate review, and directed the district court to consider the issue further and elaborate on its reasoning.
 

On September 10, 2020, the United States District Court for the Northern District of California granted a motion to dismiss allegations of patent infringement pursuant to 35 U.S.C. § 101.  FullView, Inc. v. Polycom, Inc., No. 18-CV-00510-EMC, 2020 WL 5430309 (N.D. Cal. Sept. 10, 2020).  The district court found that the at-issue claims were ineligible for two reasons.  First, the claims were not directed to a patent-eligible category under Section 101.  Second, the claims were directed to the abstract idea of combining multiple pictures to create one larger picture without offering an inventive concept, as required under the two-step test in Alice Corp. Pty. v. CLS Bank Int’l, 573 U.S. 208 (2014).
 

On July 22, 2020, the Court of Appeals for the Federal Circuit (CAFC) affirmed the Patent Trial and Appeal Board’s (PTAB) denial of a rehearing on a motion to amend the claims of a patent challenged in an inter partes review (IPR).  Uniloc 2017 LLC v. Hulu, LLC & Netflix, Inc., No. 19-1686, __ F.3d __ (Fed. Cir. Jul. 22, 2020).  The CAFC held that the PTAB may consider any ground of unpatentability—not just anticipation or obviousness grounds based on patents or printed publications under Section 311(b)—when considering the patentability of substitute claims during an IPR.
 

On May 29, 2020, the U.S. District Court for the Southern District of New York issued an opinion granting defendant StoneCastle Cash Management LLC’s motion to dismiss related to plaintiff Island Intellectual Property, LLC’s patent infringement, misappropriation of trade secrets, and related state law claims.  Island Intellectual Property, LLC v. StoneCastle Asset Management LLC, No. 19-CV-4792 (JPO) (S.D.N.Y. May 29, 2020).  The Court first ruled that the two groups of asserted patents, directed towards computer-implemented, multibank reciprocal-deposit systems, failed the Supreme Court’s two-step Alice test, and were therefore unpatentable under 35 U.S.C. § 101.  The Court also ruled that Island’s misappropriation of trade secrets claims were too generalized to survive a motion to dismiss. 
 

On April 14, 2020, the United States Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion reversing a finding of patentability by the U.S. District Court for the Eastern District of Texas.  Ericsson Inc. v. TCL Commc’n Tech. Holdings Ltd., No. 2018-2003, __ F.3d __ (Fed. Cir. 2020).  The CAFC first found in favor of appellant TCL on the procedural issue of whether it could decide TCL’s ineligibility argument, despite the issue not being raised below in its motion for judgment as a matter of law.  Then, on the merits, the CAFC reversed the district court’s denial of TCL’s summary judgment motion that the asserted patent claims failed the Supreme Court’s two-step Alice test, and were therefore unpatentable under 35 U.S.C. §101.
 

On March 5, 2020, the United States District Court for the District of Delaware issued an Opinion granting defendant’s motion for judgment on the pleadings based on patent-ineligible subject matter.  CG Tech. Dev., LLC v. Fanduel, Inc., Case No. 1:17-cv-01041-RGA (D. Del. Mar. 5, 2020).  The Court rejected plaintiff’s law-of-the-case argument and held that the claim-at-issue failed the Supreme Court’s two-step Alice test, and was therefore unpatentable under 35 U.S.C. §101.
 

On March 6, 2020, the United States Court of Appeals for the Federal Circuit (“CAFC”) issued an Opinion affirming a final written decision by the Patent Trial and Appeal Board (“PTAB”) of the United States Patent and Trademark Office (“USPTO”).  Customedia Techs., LLC v. Dish Network Corp., Case Nos. 2018-2239, 2019-1000, ____ F.3d ____ (Fed. Cir. Mar. 6, 2020).  The CAFC held that the PTAB correctly found that the challenged patent claims were unpatentable under 35 U.S.C. § 101 because they were directed to patent ineligible subject matter, as interpreted by the Supreme Court’s decision in Alice Corp. v. CLS Bank International, 573 U.S. 208 (2014).

On November 15, 2019, the Court of Appeals for the Federal Circuit (CAFC) reversed a decision by the United States District for the District of Delaware granting defendants’ motion for judgment on the pleadings based on patent-ineligible subject matter.  Koninklijke KPN N.V. v. Gemalto M2M GmbH, __ F.3d __ (Fed. Cir. Nov. 15, 2019).  The CAFC held that the claims-at-issue are directed to a non-abstract improvement in the functionality of an existing technological process, and thus, the claims passed muster under 35 U.S.C. § 101, as interpreted by the Supreme Court’s decision in Alice Corp. v. CLS Bank International, 573 U.S. 208 (2014).
 

On October 3, 2019, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion affirming the patent-ineligibility judgment of the United States District Court for the District of Delaware.  Am. Axle & Mfg., Inc. v. Neapco Holdings LLC, __ F.3d __ (Fed. Cir. Oct. 3, 2019).  The CAFC ruled that the district court properly granted summary judgment that a patent directed to methods for manufacturing propshafts with liners capable of simultaneously damping two modes of vibrations was patent-ineligible under 35 U.S.C. § 101.

On August 16, 2019, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion vacating and remanding the United States District Court for the Northern District of California’s decision granting a Rule 12(c) motion for judgment on the pleadings.  MyMail, Ltd. V. ooVoo, LLC, __ F.3d __ (Fed. Cir. Aug. 16, 2019).  The CAFC held that the district court erred by declining to resolve a claim construction dispute prior to its ruling that the patents asserted by plaintiff MyMail are directed to unpatentable subject matter.

On Monday, July 15, 2019, the International Trade Commission (ITC) issued the public version of an opinion affirming in part an initial determination issued by Administrative Law Judge (ALJ) Dee Lord.  In re Certain Road Construction Machines and Components Thereof, Investigation No. 337-TA-1088,—Fed. Reg.—(July 15, 2019).  The ITC affirmed the ALJ’s determination that asserted patent claims directed to automated paving machines were directed to patent-ineligible subject matter and therefore invalid.

On April 22, 2019, the Patent Trial and Appeal Board (PTAB) of the United States Patent and Trademark Office (USPTO) made public its Final Written Decision on the patentability of challenged claims in a covered business method patent review (CBM) proceeding.  Fidelity Information Services, LLC v. Mirror Imaging, LLC, CBM Case No. CBM2017-00064 (PTAB Apr. 22, 2019).  The PTAB held the challenged claims were patent ineligible under 35 U.S.C. § 101, consistent with the USPTO’s 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019).

On April 1, 2019, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion affirming a dismissal under Federal Rule of Civil Procedure 12(b)(6) by the United States District Court for the Eastern District of Virginia.  Cleveland Clinic Foundation et al. v. True Health Diagnostics, —F. App’x—, (Fed. Cir. Apr. 1, 2019).  The CAFC ruled that the district court had correctly decided that the asserted claims are invalid as patent ineligible abstract ideas under 35 U.S.C. § 101.

On March 18, 2019, the Patent Trial and Appeal Board (“PTAB”) of the United States Patent and Trademark Office designated as precedential a Decision on Patent Owner’s Request for Rehearing.  Amazon.com, Inc. v. Uniloc Luxembourg S.A., IPR Case No. IPR2017-00948 (PTAB Jan. 18, 2019).  The PTAB held that, while a Petitioner may only challenge patent claims in an inter partes review based on prior art patents and publications under 35 U.S.C. §§ 102 and 103, it is nonetheless proper to consider patent eligibility under 35 U.S.C. § 101 for any proposed substitute claims.

On Tuesday, February 26, 2019, the Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion affirming a dismissal under Federal Rule of Civil Procedure 12(b)(6) by the U.S. District Court for the Northern District of Florida. University of Florida Research Foundation, Inc. v. General Electric Company, —F.3d— (Fed. Cir. Feb. 26, 2019). The CAFC ruled that the district court had correctly decided that the patent claims are invalid under 35 U.S.C. § 101.


On Thursday, December 20, 2018, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion affirming a dismissal under Federal Rule of Civil Procedure 12(b)(6) by the U.S. District Court for the Western District of Washington.  Glasswall Solutions Ltd. v. Clearswift Ltd., —F.App’x—, (Fed. Cir. Dec. 20, 2018).  The CAFC ruled that the district court had correctly decided that the asserted claims are invalid as patent ineligible abstract ideas under 35 U.S.C. § 101.

On September 28, 2018, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion reversing a decision by the United States District Court for the Southern District of New York in which the District Court had sanctioned plaintiff’s counsel with an award of attorneys’ fees pursuant to 28 U.S.C. § 1927.  Gust, Inc. v. AlphaCap Ventures, LLC, —F.3d— (Fed. Cir. September 28, 2018).  Applying an “exacting” abuse-of-discretion standard, the CAFC ruled that the District Court erred in finding plaintiff’s lawyers to have litigated in bad faith, and therefore reversed the award of attorneys’ fees.

On May 31, 2018, the United States Court of Appeals for the Federal Circuit (CAFC) denied a request for en banc rehearing of its Berkheimer patent-eligibility panel opinion.  Berkheimer v. HP Inc., Appeal No. 2017-1437.  (See our prior post on the CAFC’s Berkheimer opinion here.)  Eight of the Court’s twelve judges who decided the issue signed opinions concurring in or dissenting from the decision declining en banc rehearing.  The concurring opinion filed by five of the judges (Judges Moore, Dyk, O’Malley, Taranto, and Stoll) is of particular interest because of its emphasis on the fact issue the Court recently found to be underlying the question of patent eligibility under 35 U.S.C. § 101.

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On March 27, 2018, Judge Leonard P. Stark of the United States District Court for the District of Delaware granted a motion to dismiss, finding the subject matter of plaintiff’s patent claims to be unpatentable pursuant to the abstract-idea exception to 35 U.S.C. § 101.  Triplay, Inc. v. WhatsApp, Inc., No. 13-1703 (D. Del. Mar. 27, 2018).  The Court based its ruling on, among other things, the lack of allegations relating to patentability in the complaint, explicitly declining to convert the motion from one for judgment on the pleadings into one for summary judgment.

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On February 27, 2018, the United States District Court for the District of Delaware granted summary judgment that claims of a patent directed to manufacturing driveline shaft assemblies are invalid under 35 U.S.C. § 101 because the claims are directed to unpatentable subject matter.  American Axle & Mfg. v. Neapco Drivelines LLC, case no. 15-CV-1168.  The decision is particularly interesting because it applies section 101 of the United States patent laws to mechanical inventions, outside of the computer context where recently such defenses have most often been raised.

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On February 8, 2018, the United States Court of Appeals for the Federal Circuit (CAFC) issued an opinion affirming in part and vacating in part a finding of section 101 unpatentability. Berkheimer v. HP Inc., ___ F.3d ___ (appeal no. 2017-1437).  The district court had granted a motion to dismiss on section 101 grounds, and while the CAFC affirmed the dismissal as to some claims, as to other claims it remanded the case to the district court, emphasizing the role of fact issues in section 101 analyses and thus complicating resolution of section 101 issues.

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On January 25, 2018, the United States Court of Appeals for the Federal Circuit issued an opinion affirming the trial court’s decisions that a user-interface patent claims patentable subject matter and that unrebutted expert testimony did not require a jury to find anticipation, as well as its claim-construction decisions, all while damages issues remained unresolved in the trial court.  Core Wireless Licensing S.A.R.L. v. LG Electronics, Inc., appeals nos. 2016-2684 and 2017-1922.

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​On January 10, 2018, the United States Court of Appeals for the Federal Circuit issued an opinion considering the apportionment problem in patent damages and overturning a jury’s $40M reasonable-royalty award.  Finjan, Inc. v. Blue Coat Systems, appeal no. 2016-2520.
 
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On December 11, 2017, Magistrate Judge Christopher J. Burke of the United States District Court for the District of Delaware issued a report and recommendation to Chief Judge Leonard Stark recommending denial of defendant Amazon.com, Inc.’s (Amazon) Section 101 motion to dismiss for failure to state a claim.  M2M Sols. v. Amazon, Inc., case no. 17-cv-202.

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On November 27, 2017, the United States District Court for the District of Minnesota ordered summary judgment of patent eligibility in Soultran, Inc. v. U.S. Bancorp, No. 13-cv-2637.  The claimed invention was directed to a method of check processing comprising (i) receiving check data from a point-of-sale terminal, (ii) crediting the merchant’s account, (iii) receiving the physical check and scanning it, and (iv) comparing the resulting image to the check data.  The Court ruled this invention to be patent-eligible pursuant to 35 U.S.C. § 101, as a matter of law.

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