There is rarely a dull day when it comes to patent eligibility. In Trading Technologies International, Inc. v. I.B.G. Interactive Brokers, L.L.C., the court struck down the claims for being ineligible. In a precedential decision, the court took the surprising approach of not analogizing claims to other Federal Circuit decisions. The court went further and denied that such analogies were required and implied they were not useful: “We are not bound by non-precedential decisions at all, much less ones to different patents, different specifications, or different claims. Each panel must evaluate the claims presented to it.” Slip op. 19. This decision is interesting because it flies in the face of USPTO guidance that suggests the opposite. And it contradicts past Federal Circuit decisions. Indeed, in Cleveland Clinic Foundation v. True Health Diagnostics L.L.C., the Federal Circuit doubled down on analogizing claims to claims previously found to be ineligible. In this opinion, the court noted that the patent eligibility claims were “strikingly similar” to claims once found to be ineligible. The court also declined to follow the USPTO guidance.
So, what have we learned? The Federal Circuit suggests we should not analogize to previous cases. But it also indicates that this is okay if the claims are “strikingly similar”. Which begs the question, what if the claims are somewhat or mostly similar but not strikingly similar? The answer, like all answers to patent eligibility questions, is who knows. There is no clarity. In other patent eligibility news, and as well reported by I.P. Watch Dog, there are rumblings that some members of Congress have proposed a framework to fix patent eligibility issues. There is some doubt whether this will be good enough, with some saying it will perpetuate the current chaos. Additionally, Bloomberg notes the widening divide and proposes some potential Congressional solutions. It’ll be interesting to see if Congress does anything. Meanwhile, there is a debate brewing about a need for a § 101 exception for prior art ideas over at Patently-O. Jeremy Doerre argues that § 101 “should “be narrowly construed to not apply for prior art ideas because 35 U.S.C. § 103….” Professor Sarnoff argues the opposite because 35 U.S.C. § 103 does a poor job of “excluding uncreative applications of ineligible discoveries.” Both are worth a read. If you need a second set of eyes for clarification regarding patent eligibility, Teak IP Services is happy to help.
A trademark is only as strong as the paper trail behind it. When a brand changes hands, whether through a merger, an asset sale, or
A single vague instruction letter can delay a foreign patent application by months. That is the quiet risk hiding inside every international filing program: the
Choosing the wrong intellectual property outsourcing partner does not just waste a budget line. It puts deadlines, patent rights, and client trust on the line.
A single overlooked renewal or a mismanaged multi-jurisdiction filing can quietly erode years of brand equity. That is exactly why so many trademark attorneys and
Every patent an organization owns moves through a predictable arc: it is drafted, filed, prosecuted, granted, maintained, and eventually renewed or allowed to lapse. For
Every IP director eventually asks the same question during budget season: is the in-house team still the most cost-effective way to manage a growing patent
We’re here to help answer your questions. Trademark and IP matters can be complicated, our experts are on hand to help inform you of every aspect regarding your topic.