EPLAW Patent Blog

US - no abstract idea

United States Court of Appeals for the Federal Circuit, 8 December 2010, Opinion No. 2010-1037 in Research Corporation Technologies, Inc., Plaintiff-Appellant, v. Microsoft Corporation, Defendant-Appellee.

A “process” for rendering a halftone image qualifies under both the categorical language of 35 U.S.C. § 101 and 100 (b) and does not disqualify as an abstract idea. The section 101 patent-eligibility inquiry is only a threshold test and no substitute for a patentability analysis related to prior art, adequate disclosure, or the other conditions and requirements of Title 35. While no definition of "abstract" is given, it is recognised that this disqualifying characteristic should exhibit itself so manifestly as to override the broad statutory categories of eligible subject matter and the statutory context that directs primary attention on the patentability criteria of the rest of the Patent Act.

 

US - Supreme Court – Machine-or-transformation test applied by CAFC useful and important, but not the sole test for deciding whether an invention is a patent-eligible "process"; nor does the term "process" categorically exclude business methods

Supreme Court of the United States, 28 June 2010, Opinion No. 08-964 in Bernard L. Bilski and Rand A. Warsaw, Petitioners v. David J. Kappos, Under Secretary of Commerce for Intellectual Property and Director, Patent and Trademark Office on Writ of Certiorari to the United States Court of Appeals for the Federal Circuit, summary and comments by Stefan Steinbrener, Bardehle & Pagenberg

1. The question in this case turned on whether a patent could be issued for a procedure of instructing buyers and sellers of commodities in the energy market how to protect, or hedge, against the risk of price fluctuations. Three arguments were advanced for the proposition that the claimed invention was outside the scope of patent law:
(1) it was not tied to a machine and did not transform an article;
(2) it involved a method of conducting business; and
(3) it was merely an abstract idea.

2. In an en banc decision of 30 October 2008 (In re Bilski), the Court of Appeals had concluded that the machine-or-transformation test was the sole test for determining patent eligibility of a process under the Patent Act, 35 U.S.C.§101, and on this basis had affirmed the rejection of the petitioners' application. The case had produced five (concurring or dissenting) opinions among the CAFC judges.

US - Microsoft to pay $290m damages for patent infingement

Times Online reports: Microsoft to pay $290m damages for patent infingement

"Microsoft has been barred from selling its flagship word processor Word and must pay $290 million in damages for infringing a patent held by a small Canadian software company, i4i. The ruling, by the United States Court of Appeals for the Federal Circuit prevents Microsoft from selling any versions of Word 2003 or Word 2007 after January 11 2010."

The CAFC affirmed an injunction issued earlier by the United States District Court for the Eastern District of Texas.

Read more in the Times Online here.
Read more in the New York Times here.

Read the US CAFC opinion here.