Patent Points to Ponder

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Patent Points to Ponder


  • The Supreme Court recently decided the Federal Circuit was incorrect in concluding that the supply of a single component of a multicomponent invention for manufacture abroad gives rise to liability under Section 271(f)(1) of the Patent Act, which prohibits the supply from the United States of “all or a substantial portion of the components of a patented invention” for combination abroad. One, in other words, is not a substantial portion. See Life Technologies Corp. v. Promega Corp.
  • Not to be outdone, the Federal Circuit recently decided that the PTAB was incorrect in its broad read of those patents eligible for certain covered business method review under the America Invents Act, specifically, non-technological inventions related to a financial product or service. On review, the Federal Circuit noted that the focus must properly be on the claimed invention rather than the asserted uses of the invention.  In other words, the relevant question is not how the invention is used, but rather whether the claims are directed to a financial service. This clarification will have the effect of narrowing the scope of patents eligible for CBM review. See Secure Axcess v. PNC Bank.
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