CHAPTER 3 Outline

• Jurisdiction: United States

CHAPTER 3

Patent-Eligible Subject Matter

§3.01 Introduction

[A] 35 U.S.C. §101: The First Door to Patentability

[B] The Statutory Categories Within §101

[C] Claiming the Inventive Concept Within the Statutory Categories

[D] Exceptions to §101

§3.02 Processes Within §101

[A] Definition of a Process

[B] Process Versus Product

[C] Computer-Implemented Processes: The Supreme Court's Benson (1972)/ Flook (1978)/ Diehr (1981) Trilogy

[D] Business Methods and the "Abstract Idea" Exception

[1] Overview

[2] Expansive View: State Street Bank (Fed. Cir. 1998)

[3] "Mental Processes"

[4] "Abstract Idea" Exception Narrows Business Method Patentability

[a] In re Bilski (Fed. Cir. 2008) ( en banc)

[b] Bilski v. Kappos (U.S. 2010)

[c] Two-Step Framework of Mayo v. Prometheus (U.S. 2012)

[i] Step One—Claims Directed to Abstract Idea or Law of Nature?

[ii] Step Two—Inventive Concept?

[d] Alice Corp. v. CLS Bank (U.S. 2014)

[i] Step One—Claims Directed to Abstract Idea or Law of Nature?

[ii] Step Two—Inventive Concept?

[e] Federal Circuit Decisions Applying "Abstract Idea" Exception to Process Patent Eligibility

[i] Introduction

[ii] Post- Alice Decisions Holding Inventions Patent- Ineligible

[iii] Does Mayo/Alice Step Two Involve Questions of Fact?

[iv] Representative Post- Alice Federal Circuit Decisions Holding Inventions Patent-Eligible

[a] DDR Holdings (2014)

[b] Enfish (2016)

[c] McRO (2016)

[d] Bascom (2016)

[e] Amdocs II (2016)

[f] Thales Visionix (2017)

[g] Visual Memory (2017)

[h] Finjan (2018)

[i] Berkheimer (2018) and Aatrix Software (2018)

[E] Methods of Treatment

[1] Overview

[2] Patent-Ineligible "Laws of Nature"

[a] Prometheus v. Mayo (Fed. Cir. 2010)

[b] Mayo v. Prometheus (U.S. 2012)

[c] Unintended Consequences of the Supreme Court's Mayo Decision

[i] Ariosa (2015)

[ii] Genetic Technologies (2016)

[iii] Cleveland Clinic (2017)

[iv] Athena Diagnostics (2019)

[3] Representative Post- Mayo Federal Circuit Life Sciences Decisions Finding Patent-Eligible Subject Matter

[a] CellzDirect (2016)

[b] Vanda (2018)

[c] Endo (2019)

[F] Methods of Manufacture

§3.03 Machines Within §101

[A] Definition of a Machine

[B] Computer-Implemented Machines

§3.04 Compositions of Matter Within §101

[A]

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