Claim limitations reciting specific steps of functionality and description in the specification describing the improvements achieved to such steps in particular help satisfy the Alice test for patent-eligible subject matter.
Case Law Briefs
Administrative patent judges wielding unreviewable authority during inter partes review is incompatible with their appointment by the Secretary of Commerce to an inferior office. To remedy this, the Director has the authority to review the Patent Trial and Appeal Board’s decisions in inter parties review.
A court considering a co-ownership claim of a past employer on a new invention of a past employee will refer to employment agreement language as well as whether or not the past employer’s claim to contribution was publically available when an application to cover the new invention is filed.
The Court has a duty to wholly review the prosecution process including prosection laches (e.g., unreasonable delays and prejudice attributable to delays) in determining whether patents are enforceable.
To pass muster under the Alice two-step test, the claims must provide sufficient specificity to constitute an improvement to computer functionality itself.
When drafting, ensure claim terms are defined in the specification, even if applicant thinks they are generally known in the art. Also consider providing example calculations or measurements if included in claims. When litigating, ensure a party provides a counter argument to each argument presented, including expert testimony. Consider providing arguments in the alternative.
Claims may invoke § 112 ¶ 6 and be held indefinite if, read in light of the specification, the claims fail to provide sufficient structure for performing a function. In cases where the function is performed by a general purpose computer, an algorithm may be required to disclose how the computer performs to accomplish the function.