IP: Revenge of the Humans—Defending Business Method Patents

A recent circuit court decision gives companies the teeth with which to bite back.

Software patents. Business method patents. The words alone make me clutch my wallet. Easy to get. Costly to defend. And too often just plain absurd.

I remember defending a case involving a software patent on a method of updating address book contacts by emailing people and asking them for their current information. Really? I could do that with a telephone and pencil. Another favorite was a case involving a method of inducing people to watch more TV commercials by making them more interesting. Again, really? Isn’t that just a matter of better writing and directing? But both patents used a computer for some thing or another, which allowed the plaintiff to argue that the inventions were “tied to” a machine and, therefore, satisfied the machine-or-transformation test used to determine patent-eligible subject matter.


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Jeffrey Dean

Jeffrey Dean is a partner of Marshall, Gerstein & Borun LLP, and concentrates on the defense of patent infringement claims on behalf of corporations....

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