Law.com Subscribers SAVE 30%
Call 855-808-4530 or email [email protected] to receive your discount on a new subscription.
IP News
Northern District of Texas: Even Post-Berkheimer, Patent Claims Continue to be Ineligible for Patenting as a Matter of Law When They Are Not Drawn to Particular Technical Solutions or Advances Described in the Specification
Whether there are underlying material disputes of fact relevant to patent subject matter eligibility, and (if so) when, how, and by whom those disputes should be resolved, have been the topic of much discussion since the Federal Circuit's Feb. 8, 2018 decision in Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018). In Berkheimer, the Federal Circuit ruled that although the ultimate determination of eligibility under 35 U.S.C. §101 is a question of law, that determination may nonetheless encompass underlying factual disputes that must be proven by clear and convincing evidence, such as "whether a claim element or combination of elements is well-understood, routine and conventional to a skilled artisan in the relevant field" under Step Two of the Supreme Court's Alice test. See, id. at 1368; see also, Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 134 S. Ct. 2347, 2354-55 (2014).
Chief District Judge Barbara Lynn of the United States District Court for the Northern District of Texas recently issued a decision shedding light on how these questions may be resolved in the post-Berkheimer world. In iLife Techs., Inc. v. Nintendo of Am., Inc., defendant Nintendo moved for summary judgment that the disputed patent was directed to subject matter ineligible for patenting. See, No. 3:13-cv-4987-M, Dkt. Nos. 223-25. The district court carried the motion (id., Dkt. Nos. 302, 304), and the case proceeded to a six-day jury trial in August 2017. Id., Dkt. Nos. 326, 331, 332, 337, 338, 339. At trial, the Section 101 issues were not submitted to the jury, which returned a verdict of infringement and awarded damages of $10,100,000. Id., Dkt. No. 342.
This premium content is locked for Entertainment Law & Finance subscribers only
ENJOY UNLIMITED ACCESS TO THE SINGLE SOURCE OF OBJECTIVE LEGAL ANALYSIS, PRACTICAL INSIGHTS, AND NEWS IN ENTERTAINMENT LAW.
- Stay current on the latest information, rulings, regulations, and trends
- Includes practical, must-have information on copyrights, royalties, AI, and more
- Tap into expert guidance from top entertainment lawyers and experts
Already a have an account? Sign In Now Log In Now
For enterprise-wide or corporate acess, please contact Customer Service at [email protected] or 877-256-2473
New York's Latest Cybersecurity Commitment
On Aug. 9, 2023, Gov. Kathy Hochul introduced New York's inaugural comprehensive cybersecurity strategy. In sum, the plan aims to update government networks, bolster county-level digital defenses, and regulate critical infrastructure.
Law Firms are Reducing Redundant Real Estate by Bringing Support Services Back to the Office
A trend analysis of the benefits and challenges of bringing back administrative, word processing and billing services to law offices.
Bit Parts
Summary Judgment Denied Defendant in Declaratory Action by Producer of To Kill a Mockingbird Broadway Play Seeking Amateur Theatrical Rights
How AI Has Affected PR
When we consider how the use of AI affects legal PR and communications, we have to look at it as an industrywide global phenomenon. A recent online conference provided an overview of the latest AI trends in public relations, and specifically, the impact of AI on communications. Here are some of the key points and takeaways from several of the speakers, who provided current best practices, tips, concerns and case studies.