Are Device Claims Next in the US Patent Eligibility Trainwreck? Yu v. Apple (CAFC 2021)

By Chaim Levitz

For several years, the issue of patent subject matter eligibility has been a particular challenge for obtaining a United States Patent for claims directed to certain types of biological materials, medical diagnostics, computer-implemented inventions, and business methods. However, claims directed to devices were assumed to be safe from such challenges, as such inventions by definition, do not involve subject matter that might be deemed patent ineligible such as abstract concepts or natural materials. However, in the recent case of Yu v. Apple (hereinafter Yu) a panel of the United States Court of Appeals for the Federal Circuit (CAFC) indicated in a 2-1 opinion that the patent eligibility of even device claims might not be taken for granted any longer.

In Yu, Apple and Samsung were accused of infringing claims 1, 2, and 4 of U.S. Patent No. 6,611,289 (the ‘289 patent), which claim an “improved digital camera.” In a seemingly contradictory decision, the court held the ‘289 patent is directed to an abstract idea.

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Josh Lawrence is the Co-founder and COO of Strattic, a venture backed startup that creates static and headless WordPress sites, making WordPress sites faster, more secure and infinitely scalable.

Avraham sat down with Josh in the offices of JMB Davis Ben-David in Jerusalem to discuss how Strattic markets to their audience, how they went from a startup that no one wanted to fund to one that raised six and a half million dollars, why Israeli startups are so successful and tips for startup founders.

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THE ISRAEL TRADEMARK SYSTEM

Foreign Trademarks in Israel

A Question & Answer series dealing with legal questions about the Israel Trademark System, rights and obligations, and practicalities.

Series Editor: Aaron Lewin, Israel Attorney at Law, Trademark Counsel at JMB Davis Ben-David. Contributors: Ms. Miriam Samis, Ms. Dodiva Grant, Mr. Eviatar Aron.

For trademark related inquiries contact Mr. Ivan Lipshitz, Managing Attorney Trademarks, Designs & Related Fields Ivan.Lipshitz@jmbdavis.com. 

Protection of foreign trademarks

Q. Under what circumstances may foreign trademarks not registered in the jurisdiction be enforced (eg, under unfair competition law)?

Q. Does the trademark office permit registration of a mark based on a foreign or international (Madrid) registration?

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Soft IP or Hard Currency?

by Jeremy M. Ben-David, Managing Partner, JMB Davis Ben-David

Back in 2014 I was considering the relative merits of so-called ‘Soft’ and ‘Hard’ IP rights. Products and technology may have evolved during the last 7 years, but this particular issue has remained the same. Let me know if you disagree….. Jeremy.Ben-David@jmbdavis.com. 

One of the unannounced debates in the world of IP professionals revolves around a comparison of patents and trademarks. An outsider probably doesn’t even think about it. After all, IP is IP. It’s a bunch of rules that, depending on your point of view, are either designed to prevent the public from freely copying what they should be able to copy simply because they can (anyone remember Napster?) or, it’s an imperfect system of carefully worded laws that define a public contract between state and citizen so as to incentivize creation and enrich society by imparting financial value to the creators. 

But while we practitioners will normally have a view on the above unending debate, we have a much deeper and more heartfelt discussion going on. It goes to how we define ourselves professionally. Patent attorneys are often engineers and scientists that don’t want to ‘limit’ their impact on the world to a specific company, technology or molecule and would rather spread their wings so as to assist the advance of technology on many broad fronts.  While that’s a nice definition it’s too ‘pat’. Personally, I fell into the profession some 30 years ago due to circumstances, and have never looked back. And I’ve met more patent attorneys who fell into it than actually planned a career in patents. 

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