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Ex Parte Paintin et al

11535353 (P.T.A.B. Apr. 10, 2017)
Ex Parte Paintin et al

16 Cited authorities

  1. Alice Corp. v. CLS Bank International

    573 U.S. 208 (2014)   Cited 1,435 times   521 Legal Analyses
    Holding ineligible patent claims directed to the concept of "intermediated settlement," i.e., the use of a third party to mitigate the risk that only one party to an agreed-upon financial exchange will satisfy its obligation

  2. Mayo Collaborative Servs. v. Prometheus Labs., Inc.

    566 U.S. 66 (2012)   Cited 817 times   153 Legal Analyses
    Holding that "the basic underlying concern that these patents tie up too much future use of laws of nature" reinforced the holding of ineligibility

  3. Enfish, LLC v. Microsoft Corp.

    822 F.3d 1327 (Fed. Cir. 2016)   Cited 739 times   119 Legal Analyses
    Holding that claims to self-referential tables that allowed for more efficient launching and adaptation of databases were not directed to an abstract idea

  4. Amdocs (Israel) Ltd. v. Openet Telecom, Inc.

    841 F.3d 1288 (Fed. Cir. 2016)   Cited 224 times   21 Legal Analyses
    Holding claim eligible at step two because it "entails an unconventional technological solution ... to a technological problem," and the solution "requires that arguably generic components ... operate in an unconventional manner to achieve an improvement in computer functionality"

  5. Ariosa Diagnostics, Inc. v. Sequenom, Inc.

    788 F.3d 1371 (Fed. Cir. 2015)   Cited 132 times   67 Legal Analyses
    Holding ineligible the claimed process for using PCR to amplify cff-DNA in a sample before detecting it

  6. Affinity Labs of Tex., LLC v. Amazon.com Inc.

    838 F.3d 1266 (Fed. Cir. 2016)   Cited 115 times   7 Legal Analyses
    Holding that in Alice step one, "it is often helpful to ask whether the claims are directed to an improvement in the functioning of a computer, or merely adding conventional computer component to well-known business practices," with the latter being abstract

  7. Morsa v. Facebook, Inc.

    77 F. Supp. 3d 1007 (C.D. Cal. 2014)   Cited 21 times
    Holding that "targeting customers based on demographic criteria; requiring the bid amount to be ‘modifiable’; making the advertisements ‘searchable’; requiring the user to be the source of the demographic information; altering the display of the advertisement in various ways; ... using ‘negative’ criteria to determine not to present an advertisement to a given user ... altering a given advertisement's display based on its ‘performance and/or ... popularity’; requiring the advertisements to be delivered to users in a specific geographic location or on a specific wireless device; dictating that the advertisements be delivered via video or audio; and collecting user data in various ways" were not inventive concepts sufficient to confer patent eligibility

  8. Tuxis Techs., LLC v. Amazon.com, Inc.

    Civil Action No. 13-1771-RGA (D. Del. Sep. 3, 2014)   Cited 18 times   5 Legal Analyses
    Finding abstract the idea of "offering something to a customer based on his or her interest in something else[]"

  9. OpenTV, Inc. v. Netflix Inc.

    76 F. Supp. 3d 886 (N.D. Cal. 2014)   Cited 12 times   2 Legal Analyses
    Finding that claims directed toward “the abstract idea of attempting to provide as much appropriately-selected content to users as possible” were without limitations to make them patent eligible

  10. Morsa v. Facebook, Inc.

    622 F. App'x 915 (Fed. Cir. 2015)   Cited 10 times
    Invalidating a patented method for targeting online advertisements based on culled user information, and creating a corresponding bidding system for advertisers

  11. Section 103 - Conditions for patentability; non-obvious subject matter

    35 U.S.C. § 103   Cited 6,148 times   482 Legal Analyses
    Holding the party seeking invalidity must prove "the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains."

  12. Section 101 - Inventions patentable

    35 U.S.C. § 101   Cited 3,519 times   2288 Legal Analyses
    Defining patentable subject matter as "any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof."

  13. Section 6 - Patent Trial and Appeal Board

    35 U.S.C. § 6   Cited 186 times   63 Legal Analyses
    Giving the Director authority to designate "at least 3 members of the Patent Trial and Appeal Board" to review "[e]ach appeal, derivation proceeding, post-grant review, and inter partes review"

  14. Section 134 - Appeal to the Patent Trial and Appeal Board

    35 U.S.C. § 134   Cited 98 times   30 Legal Analyses

    (a) PATENT APPLICANT.-An applicant for a patent, any of whose claims has been twice rejected, may appeal from the decision of the primary examiner to the Patent Trial and Appeal Board, having once paid the fee for such appeal. (b) PATENT OWNER.-A patent owner in a reexamination may appeal from the final rejection of any claim by the primary examiner to the Patent Trial and Appeal Board, having once paid the fee for such appeal. 35 U.S.C. § 134 July 19, 1952, ch. 950, 66 Stat. 801; Pub. L. 98-622

  15. Section 41.37 - Appeal brief

    37 C.F.R. § 41.37   Cited 32 times   25 Legal Analyses
    Requiring identification of support in specification and, for means-plus-function limitations, corresponding structure as well

  16. Section 1.136 - [Effective until 1/19/2025] Extensions of time

    37 C.F.R. § 1.136   Cited 17 times   30 Legal Analyses

    (a) (1) If an applicant is required to reply within a nonstatutory or shortened statutory time period, applicant may extend the time period for reply up to the earlier of the expiration of any maximum period set by statute or five months after the time period set for reply, if a petition for an extension of time and the fee set in § 1.17(a) are filed, unless: (i) Applicant is notified otherwise in an Office action; (ii) The reply is a reply brief submitted pursuant to § 41.41 of this title; (iii)