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ARTICLE · 25 NOVEMBER 2016

Federal Circuit Split On Specification's Role In Determining Patent Eligibility

Holland & Knight
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The U.S. Court of Appeals for the Federal Circuit recently reversed a district court ruling that four related software patents are patent ineligible under 35 U.S.C. §101...

United StatesIntellectual Property
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Leslie Kushner is an Associate in our New York office.

HIGHLIGHTS:

  • The U.S. Court of Appeals for the Federal Circuit reversed a district court ruling that four related software patents are patent ineligible under 35 U.S.C. §101, by considering the specification to determine that the patents do not claim an abstract idea. Amdocs (Isreal) Limited v. Openet Telecom, Inc. (2015-1180, slip. op. (Fed. Cir. Nov. 1, 2016)).
  • Until the Federal Circuit addresses the §101 patent eligibility analysis en banc, the outcome of an appeal addressing patent eligibility will be panel-dependent.
  • Should the factual statements of the specification, which were relied upon by the Federal Circuit to reverse the judgment on the pleadings, prove to be unfounded on remand, the trial court may potentially be faced with the legal dilemma of finding infringement and invalidity based on different interpretations of the claims.

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