Posts Tagged: "patentable subject matter"

The UK Supreme Court today issued a landmark judgment on AI patentability that is likely to impact all software patents going forward. The decision in Emotional Perception v. Comptroller General of Patents, Designs and Trade Marks primarily held that the approach taken in Aerotel Ltd v Telco Holdings Ltd [2006] EWCA Civ 1371; [2007] Bus LR 634; [2007] RPC 7 (Aerotel) should no longer be followed. Under Aerotel, courts and examiners consider a four-step test for assessing whether a claim is excluded from patent eligibility: 1) properly construe the claim, 2) Identify the actual/ alleged contribution, 3) Ask whether the contribution is excluded and 4) check if the contribution is technical.

The U.S. Court of Appeals for the Federal Circuit (CAFC) on Monday in part reversed a district court’s decision upholding GoTV Streaming, LLC’s patents as eligible, finding instead that they were invalid under Section 101. While the opinion, authored by Judge Taranto, also reversed the district court’s finding that the claims were invalid for indefiniteness, the panel found they were directed to an abstract idea and therefore vacated the district court’s summary judgment of no inducement and its denial of GoTV’s motion for a new trial on damages, ordering the district court to enter judgment for Netflix, Inc., ending the case.

The U.S. Court of Appeals for the Federal Circuit (CAFC) on Friday affirmed a district court’s summary judgment ruling that six patents owned by Innovaport LLC are invalid for claiming ineligible subject matter under 35 U.S.C. § 101. The Federal Circuit agreed that the patents, which are directed to systems and methods for providing in-store product location information, claimed an abstract idea without adding a sufficient inventive concept to make them patent-eligible.

In 2014, the Supreme Court held that an invention is patent-ineligible if directed to “abstract ideas,” but that there was no need to define the term. Alice Corp. Pty. Ltd. v CLS Bank Int’l, 573 U.S. 208, 221. Now, with the experience of more than a decade of confusing and unpredictable decision-making by lower courts trying to apply Alice, it is time for the Supreme Court to step in and provide a definition and workable test for the abstract-ideas exclusion…. The Court should grant the petition for certiorari filed by United States Automobile Association (USAA) in USAA v. PNC Bank on January 14, 2026. That will allow the Supreme Court to address the most basic of questions: What is an abstract idea?

As we wind down 2025 it is time to reflect on the year that was, and what the future will bring. This year was punctuated by a structural reset for the U.S. patent system. What unfolded was not just incremental reform, but a coordinated shift driven by leadership change, policy realignment, economic pressure, and accelerating adoption of AI—all converging to reshape how patents are examined, challenged, monetized, and managed. This week on IPWatchdog Unleashed we explore the monumental changes and the biggest trends that impacted the patent and innovation industry during 2025, and which will play an important role in defining 2026.

Today, the U.S. Court of Appeals for the Federal Circuit (CAFC) issued a ruling in Rideshare Displays, Inc. v. Squires affirming decisions by the Patent Trial and Appeal Board (PTAB) that Rideshare’s patent claims to systems and methods of vehicle identification were obvious over prior art. The Federal Circuit’s decision also reversed the PTAB’s partial grant of Rideshare’s motions to amend, finding the substitute claims’ subject matter did not provide a technological solution rendering the claims patent-eligible at Step Two of the Alice/Mayo patent eligibility framework.

Subject matter eligibility has been the most confounding and unpredictable issue in patent law since the Alice decision issued in 2014, especially for inventions involving the computer arts. Of course, computers are now ubiquitous and are involved in the implementation of not just electronics, but also mechanical devices, drug administration, and so on. The Alice decision touches many different types of inventions.

For the umpteenth time, the U.S. Supreme Court has declined to take a patent eligibility case on appeal. SCOTUS denied certiorari to Audio Evolution Diagnostics v. United States et al. on June 6. The U.S. Court of Federal Claims invalidated all of AED’s patent claims, “conflating novelty and obviousness under 35 U.S.C. §§ 102 and 103 with patent eligibility under § 101,” according to Audio Evolution’s SCOTUS petition. Then the U.S. Court of Appeals for the Federal Circuit dialed it in once again, invoking Federal Circuit Rule 36 and disposing of the appeal with summary affirmance—one word—foregoing yet another opportunity to provide parties, inventors and others guidance on where the line lies between eligibility and ineligibility.

This week on IPWatchdog Unleashed we dive into patent eligibility waters, with a discussion on how patent attorneys and litigators alike can cope with Alice. Our conversation will triangulate patent eligibility from the political perspective, from the perspective of a patent litigator who represents patent owners in federal court, and from the perspective of a patent attorney who represents clients as they attempt to obtain software patents. Joining us this week is the Honorable Andrei Iancu, former Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office. Vince Rubino, who is a patent litigator with Fabricant in the firm’s New York City office, and from the patent prosecution perspective we have John Rogitz, who is Managing Attorney at Rogitz & Associates.

The U.S. Patent and Trademark Office (USPTO) today held a “USPTO Hour” webinar in which it shared the results thus far of its 2022 pilot program, the “Deferred Subject Matter Eligibility Response (DSMER) Pilot.” The DSMER Pilot was announced in January 2022 in response to a 2021 letter sent to the Office by Senators Thom Tillis (R-NC) and Tom Cotton (R-AR) asking then-interim Director Drew Hirshfeld to “initiate a pilot program directing examiners to apply a sequenced approach to patent examination,” rather than the traditional “compact approach.”

Today, the U.S. Court of Appeals for the Federal Circuit (CAFC) issued a precedential ruling in Optis Cellular Technology, LLC v. Apple, Inc. vacating infringement and damages judgments awarded to Optis by the Eastern District of Texas. The CAFC also reversed summary judgment rulings upholding Optis patent claims under 35 U.S.C. § 101, found that other claims did not invoke means-plus-function analysis under 35 U.S.C. § 112 ¶ 6), and ruled that the district court’s jury instructions deprived Apple of its right to a jury trial under the Seventh Amendment—a constitutional argument that has not fared as successfully for patent owners protecting their intellectual property rights in administrative proceedings.

It’s no secret that the patent eligibility inquiry under Alice is infamous for its subjectivity and unpredictability, which is what happens when courts refuse to provide clarity and instead embrace a vague and indefinite standard that can mean different things to different people. Indeed in Interval Licensing LLC v. AOL, Inc., 896 F.3d 1335, 1350 (Fed. Cir. 2018), Judge Plager’s dissent identified the absence of a definition as the root problem: “The phrase ‘abstract ideas’ is a definitional morass … There is no single, succinct, usable definition anywhere available.” And that allows judges on every level to do whatever they want without any structural tether to the law.

Lord Justice Jacob noted the temptation to treat patent-eligible subject matter like an elephant: “you know it when you see it, but you can’t describe it in words.” He went on, however, writing that “[a]ctually we do not think that is right – there are likely to be real differences depending on what the right approach is. Billions (euros, pounds or dollars) turn on it.” These comments could not have been more correct. Huge outcomes depend on the approach taken to determine patent-eligible subject matter.

Impact Engine, the owner of several patents for internet advertising technology, has petitioned the U.S. Supreme Court asking it to review a U.S. Court of Appeals for the Federal Circuit (CAFC) decision that invalidated most of its patent claims as patent ineligible “abstract ideas.”