Wednesday, October 26 2022   \  Published by PATENTLYO.

Patent Eligibility: Distinguishing Collecting Information from Using Information

Patent Eligibility: Distinguishing Collecting Information from Using Information

by Dennis Crouch

I’m always excited to read a decision that splits hairs–finding some claims in a patent valid and others invalid. My hope is that the explanation will really get to the crux of the issues and help me to better understand how the law works. I’m often disappointed, but the Federal Circuit’s newest decision in Weisner v. Google LLC, — F.4th — (Fed. Cir. 2022) does offer some good clues. The basic outcome here: Weisner’s claims directed toward collecting information are abstract ideas; those directed toward using the information are patent eligible. This outcome is consistent with what we are seeing in biotech as well: diagnostics get a thumbs down; therapeutics get a thumbs up.

Weisner sued Google for patent infringement back in 2020, asserting infringement of a family of four patents. U.S. Patent Nos. 10,380,202, 10,642,910, 10,394,905 and 10,642,911. But, Google won the case fairly quickly on a R.12(b)(6) motion to dismiss with a holding from the district court that the asserted claims are ineligible under 35 U.S.C. § 101 (abstract ideas). On appeal, a divided Federal Circuit has reversed-in-part, holding that some of the claims are patent eligible because they implement “a specific solution to a problem rooted in computer technology.” Alice Step 2.

Judge Stoll wrote the majority opinion joined by Judge Reyna. Judge Hughes dissented, arguing that all the claims are invalid. Read more

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