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The USPTO issued a memorandum to patent examiners re. subject matter eligibility relating to software patent claims. In the memorandum, the USPTO outlined two recent Federal Circuit decisions in McRO, Inc. dba Planet Blue v. Bandai Namco Games America Inc., 120 USPQ2d 1091 (Fed. Cir. 2016), BASCOM Global Internet Services v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016), and noted that guidance re. Amdocs (Israel) Ltd. v. Openet Telecom, Inc., No. 2015-1180 (Fed. Cir. Nov. 1, 2016) will be forthcoming. Both McRO and BASCOM decisions provide examples as to when software claims would be found to be eligible under current guidelines.

The Federal Circuit yesterday, in Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 2015-1180 (Nov. 1, 2016), upheld the patent eligibility under 35 U.S.C. 101 of a software patent, because it constituted a technical improvement over prior art.  This most recent decision on software patent eligibillity (i.e., abstract idea jurisprudence) will hopefully reaffirm many software patent practitioner's understanding that a technical solution to a technical problem is still eligible subject matter in view of the Supreme Court's Alice and Mayo framework.  

A recent comparative study published in the John Marshal Review of Intellectual Property Law suggests that a more thorough examination is conducted by the USPTO, when compared to the Australian or European Patent Offices.  This finding is contrary to the view that the USPTO is generally the more lenient of the international patent offices.  In this empirical analysis, 494 patent applications having the exact same claim 1 and being issued in all three patent offices were reviewed for meaningful change, i.e. a substantial narrowing of patent scope based on a citing of a prior art.  The resulting finding was that the USPTO narrows claim 1 more often than either the Australian or the European Patent Office.  The full study can be found at http://repository.jmls.edu/cgi/viewcontent.cgi?article=1401&context=ripl.

The Patent Trial and Appeal Board (PTAB) of the USPTO recently reaffirmed a holding that its institution decisions regarding whether or not to proceed with an inter partes review (IPR) of an issued patent are "final and nonappealable" under 35 U.S.C. § 314(d).  In this case, Medtronic, Inc. v. Robert Bosch Healthcare Sys. Inc., Fed. Cir. No. 2015-1977 (10/20/2016), the PTAB terminated an IPR because the petitioner failed to disclose all real parties in interest, which is subject to a ban on judicial review in accordance with 314(d).  

California AB 691 was recently signed into law, which sets forth default rules governing the disposition and probate of digital assets to a surviving fiduciary or beneficiary. In enacting this legislation, California joins 19 other states, including Florida, in adopting of the Fiduciary Access to Digital Assets Act. The term digital assets include a person's social media accounts, websites, domains, email accounts, blogs, as well as other accounts and digital content related thereto. This law will go in effect January 1, 2017, and establishes a three step hierarchical test for determining who may access a decedent's digital assets.

As a result of an action brought by the FTC, the U.S. Court of Appeals for the Second Circuit recently found LeadClick Media, LLC liable for false claims made by third party affiliate marketers, which drove traffic to LeanSpa, a maker of weight-loss supplements. As a result, LeadClick was ordered to pay $11.9 million for its part in helping to promote a deceptively marketed weight-loss supplement. This decision marks the first by a court of appeals, which holds the operator of an affiliate marketing network liable for the deception of third-party marketers.

SB 1241, recently signed into law, and to go in effect January 1, 2017, will limit the ability of employers to choose a favorable law and forum when contracting with California employees. Specifically, the provision to be codified as California Labor Code Section 925, prohibits an employer from requiring California employees to agree to any provision which would require the employee to adjudicate outside of California for a claim arising in California; or deprive the employee of substantive protection of California state law as to a controversy arising in California. An exception does exist for those employees who are represented by counsel in negotiating the terms of an agreement. Moreover, pre-existing agreements (pre-January 1, 2017) will be unaffected.

The Trademark Trial and Appeal Board (TTAB) affirmed a refusal of a trademark application for the "BARR GROUP" for engineering related services, finding the mark to be primarily merely a surname. 

The Federal Circuit, this Friday, reversed a distrcit court's summary judgment that several patents related to VoIP technology were invalid as being indefinite under 35 U.S.C. 112. In its holding, the court concluded that Section 112 cannot be used on the basis that a "processing system" is indefinite, wherein the asserted claims comprise entirely of method claims. In other words, because the "processing system" has no discernable role in defining the scope of a claim of process, and wherein the point of novelty resides in the steps of the process or method, the unfleshed "processing system" does not render the method claims indefinite per se.

In a software misappropriation case, the 5th Circuit recently held that trade secret misappropriation claims are not preempted by the Copyright Act. In making this ruling, the 5th Circuit joins ten other circuits in establishing an almost-uniform holding across the US.

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