Thought Leadership

Intellectual Property Report: October 2018

Client Updates

SAP America v. InvestPic: A New Formulation for Patentability?
Thomas Mathew
Ever since the landmark Supreme Court case on patent eligibility, Alice v. CLS Bank, the Federal Circuit has endeavored to articulate the proper framework for determining whether a patent claim is too “abstract” to be patentable under 35 U.S.C. § 101. Much of the case law relating to § 101 since Alice has focused on developing various carve-out formulations for describing the traits of claims that are not abstract, and therefore patentable. For example, the Federal Circuit has held that claims may not be abstract in some cases where they provide a technological improvement. Its recent opinion in SAP America v. InvestPic outlined a formulation that appears to add a new requirement to this technological-improvement standard.

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In Re Maatita: Two-Dimensional Disclosure, Three-Dimensional Protection
Aaron Jagoda
In a recent decision, the Federal Circuit has enabled design patent applicants to seek broader protection for three-dimensional designs—specifically those that, despite being embodied in three-dimensional articles, are “capable of being disclosed and judged from a two-dimensional, plan- or planar-view perspective.” In In re Maatita, the court articulated a standard for definiteness of design patent claims that may be familiar to most patent practitioners – whether one of ordinary skill in the art, when judging the claim and figures from the perspective of an ordinary observer, would understand the scope of the design with reasonable certainty. Therefore, while the “reasonable certainty” standard set forth in Nautilus is applicable in the design patent context, it is judged not simply from the perspective of one of ordinary skill in the art, but from the perspective of that person of ordinary skill when viewing the disclosure as would an ordinary observer. By connecting the standard for indefiniteness with the test for infringement in the design patent context, the court concluded that design patent claims should not be rejected simply because a design for a three-dimensional article is claimed in fewer than three dimensions.

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Baker Botts to Co-Chair the 56th Annual Intellectual Property law Conference
The 56th Annual Intellectual Property Law Conference will take place on November 12 - 13 in Plano, TX at The Center for American and International Law. Baker Botts will be sponsoring the conference and Christa Brown-Sanford, Partner at Baker Botts, will serve as the event Co-Chair.

Click here to register or learn more, and we look forward to seeing you there!

Are Database Systems Patentable?
Rob Maier
The late 1990s and early 2000s brought the gold rush of software patents in the United States. On the heels of the U.S. Supreme Court’s decision in State Street Bank, which confirmed that business methods and related software inventions could be patented in the United States, and in the midst of the dot-com boom, thousands flocked to the U.S. Patent & Trademark Office to file new patent applications on software inventions. Many of those patents were related to the ways in which data could be stored and manipulated in computer systems.

To read more, click here.
*This article first appeared in The New York Law Journal in September 2018

Discovery Under the GDPR
Cynthia J. Cole, Neil Coulson
For many years, litigants in the United States found themselves bound to the preservation and discovery obligations of the Federal Rules of Civil Procedure, even where those obligations came into conflict with foreign laws protecting personal data. However, within the European Union, violation of these laws rarely resulted in penalties, leaving U.S. parties free to pursue discovery without much fear of reprisals by E.U. authorities. This landscape is set to change, though, as the General Data Protection Regulation came into effect on May 25, 2018. Under the GDPR, the European Union has committed to much greater protections for personal data and has created significant penalties for any firms in violation of these protections (up to €20 million or 4% of worldwide revenue).

To read more, click here. To listen to the Data Privacy 2019: Look Back to Look Ahead webinar, click here.
*This article was first distributed by Wolters Kluwer in September 2018

Aatrix, Berkheimer And The Future Of Patent Eligibility
Rob Maier, Jonathan Cocks
Under the current state of the law, the two-part Alice/Mayo test is used to evaluate a patent claim’s subject matter eligibility under 35 U.S.C. § 101. This test first asks whether the claim is “directed to a patent-ineligible concept.” If answered in the affirmative, this does not mean that a claim is necessarily rejected; the test next asks whether the claim’s “additional elements ‘transform the nature of the claim’ into a patent-eligible application.”

To read more, click here.
*This article first appeared in Law 360 in September 2018

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