About the Authors

2018 Juristant Badge - MBHB_165
Juristat #4 Overall Rank

E-mail Newsletter

  • Enter your e-mail address below to receive the "Patent Docs" e-mail newsletter.

Contact the Docs


  • "Patent Docs" does not contain any legal advice whatsoever. This weblog is for informational purposes only, and its publication does not create an attorney-client relationship. In addition, nothing on "Patent Docs" constitutes a solicitation for business. This weblog is intended primarily for other attorneys. Moreover, "Patent Docs" is the personal weblog of the Authors; it is not edited by the Authors' employers or clients and, as such, no part of this weblog may be so attributed. All posts on "Patent Docs" should be double-checked for their accuracy and current applicability.
Juristat #8 Overall Rank


« Sherry Knowles Addresses Real World Impact of Myriad-Mayo Guidance at BIO Symposium | Main | MBHB Webinar on PTAB Invalidity Proceedings »

October 16, 2014


"In contrast, the claims of '191 patent recite an improvement to the functioning of a computer, and this improvement could only be performed by a computer."


That's the key (no pun intended) to why the claims in PNC Bank survived-authentication keys like this one can only be performed by a computer.

By contrast, the claims in Capital Dynamics look very much like Alice and even Bilski. All those "determining steps" are a "red flag" for trouble under the broken Alice test (yes, still broken as far as I'm concerned for many reasons I've stated before, including conflating multiple patent statutes and no adherence to the principles of Diehr that the claim must be judged "as a whole"). For such finance-based claims to survive the Alice test, they probably need to involve "real time" systems. Unless you're a mentat in Frank Herbert's Dune universe, only a computer can really handle "real time" systems.

Thanks for bringing these decisions to my attention! Extremely helpful, especially the PNC Bank decision. Sure it's only one PTAB panel. But so far there's not much else out there as to what kind of software claims ARE directed to patentable subject matter.

EG, I agree with you across the board, but I could see how a different panel could have bought into the petitioner's argument in PNC Bank. Which points to another problem with the Alice test - it allows one to make analogies between analog and digital objects where these objects are not actually analogous to one another.



There is also the Solutran case: http://www.patentdocs.org/2014/09/us-bancorp-v-solutran-inc-ptab-2014.html


Couldn't agree more with what you said in response to my comment, and further confirmation that the Alice test is utterly broken. Unless Congress intervenes to put the Royal Nine in their appropriate place (i.e., telling them to "stop making law, that's our job"), 35 USC 101 patent law jurisprudence is going to be utter chaos, and a significant drag on U.S. innovation.

The comments to this entry are closed.

June 2024

Sun Mon Tue Wed Thu Fri Sat
2 3 4 5 6 7 8
9 10 11 12 13 14 15
16 17 18 19 20 21 22
23 24 25 26 27 28 29