In recent years, the Supreme Court has decided a number of cases, including Bilski v. Kappos, Mayo Collaborative Servs. v. Prometheus Labs., Ass’n for Molecular Pathology v. Myriad, and Alice Corp. v. CLS Bank Int’l, which involve the limits on patent eligibility under 35 U.S.C. § 101.   For example, in Alice, the court stated “[t]he ‘abstract ideas’ category embodies the longstanding rule that an idea of itself is not patentable.” The Supreme Court further recognized that “laws of nature, natural phenomena, and abstract ideas” are not patent-eligible subject matter under 35 U.S.C. §101.

To determine whether claims are patent-eligible the Supreme Court set forth a two-part test in Mayo as further explained in Alice. This test consists of the following steps:

Continue Reading USPTO Requests Input on Patent Eligibility from Critical Sectors Impacted by Current Law

In this week’s episode of The Briefing by The IP Law Blog, attorneys Scott Hervey and Josh Escovedo discuss the trademark litigation between Nike and a custom shoe maker, MSCHF (pronounced “Mischief”). In Nike Inc. v MSCHF Product Studio, Inc., Nike sued MSCHF over unauthorized versions of the Nike Air Max 97 featuring satanic imagery. The shoes were tied into marketing by Rapper Lil Nas X, and all 666 pairs created by MSCHF were sold.

Watch the episode on YouTube at this link.

An audio version of this episode can be found on “The Briefing from the IP Law Blog” podcast, available on Apple/Spotify/Sticher/Google platforms or online at this link.

Loud parties, surveillance cameras, and a neighbor dispute? The Court of Appeal for the Second Appellate District in California was recently faced with these issues in a case involving claims that one neighbor’s use of surveillance cameras violated the other neighbor’s right to privacy. The fact that one of the defendants was comedian, Kathy Griffin, only added to the case’s interest. In the end, the Court sided with Ms. Griffin and her boyfriend in the case: Mezger v. Bick, et al. (decided July 1, 2021).

Continue Reading What Happens in Your Backyard Doesn’t Always Stay in Your Backyard

In this week’s episode of The Briefing from the IP Law Blog, Josh Escovedo and Scott Hervey discuss an update to the litigation over Andy Warhol’s series of portraits of the artist Prince (Andy Warhol Foundation v Goldsmith). They provide a recap of last week’s episode, which covers the Second Circuit decision in favor of Goldsmith, the photographer whose image Warhol used to create the Prince Portraits, and the holding that Warhol’s renditions were not transformative enough to be fair use. That decision overturned a lower court decision in favor of the Warhol Foundation.

This week, Scott and Josh discuss the possible impact of the Supreme Court fair use decision in Google LLC v Oracle America, Inc., including the Andy Warhol Foundation’s petition to the Second Circuit for review of the Goldsmith decision.

Watch the episode on YouTube at this link.

An audio version of this episode can be found on “The Briefing from the IP Law Blog” podcast, available on Apple/Spotify/Sticher/Google platforms or online here.

Patents protect inventions.  However, patents protect only certain inventions.  In order to be patentable, an invention must fall within one of four categories of patent-eligible subject matter: articles of manufacture, machines, processes, and compositions of matter. 35 U.S.C. §101.  There are some things that are not patentable (i.e. are patent-ineligible subject matter): laws of nature, natural phenomena, and abstract ideas.

In 2014, in Alice Corp. Pty. Ltd. v. CLS Bank International, 573 U.S. 208, 216, 219 (2014), the Supreme Court established a two-part test to determine whether an invention is patent-eligible.  In the first step, a determination is made as to whether the claimed invention falls within one of the categories of patent-ineligible subject matter.  If it does, the second step is performed:  a determination of whether the claimed invention has an inventive concept that transforms the patent-ineligible subject matter into something patentable.

Continue Reading Once Again, Generic Computer Systems That Do Routine Functions are Not Patentable!