Grüneberg and Myers - Intellectual Property Law


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Federal Circuit summarizes key software eligibility decisions en route to providing another example for patentability

Giving software patent applicants another data point for clearing the subject matter eligibility hurdle, the Federal Circuit found in favor of the patentee in Ancora Technologies, Inc. v. HTC America, Inc. The decision, released last Friday, reversed the trial court’s finding of subject matter ineligibility.

The patent in question claims a method for restricting unlicensed software use. The Federal Circuit noted that, by strategically drawing on both non-volatile and volatile memory within a given computer, the method zeroed in on a way of achieving a solution to a computer functionality problem. On this reasoning, the court found that the claims are not drawn simply to an abstract idea, making them patent eligible under the Supreme Court’s test from the Alice v. CLS Bank decision.

Within their opinion, the Federal Circuit provided a helpful synopsis of decisions favoring eligibility for computer-based technologies under Alice. While the USPTO has also provided helpful summary materials, the roundup here provides an additional source, with the force of the appeals court behind it. Specifically, the Federal Circuit’s opinion here in Ancora mentioned, as not drawn to abstract ideas:

Decisions like this from the Federal Circuit can give software patent applicants a clearer path forward in satisfying the eligibility requirements of section 101, post-Alice. Even on the other side, for those seeking to avoid or defend against possible infringement, such guidance and reasoning from the Federal Circuit provides more tools for clarifying the current eligibility landscape.

Eric Myers