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Mark Raskin in Law 360


On Sept. 13, 2016, the Federal Circuit issued its decision in McRO Inc. v. Bandai Namco Games America Inc., et al., reversing the Central District of California, and finding the patents-at-issue covered patentable subject matter under 35 U.S.C. § 101. In doing so, the Federal Circuit reiterated and reconfirmed certain rules on patent eligibility.

In brief, the Federal Circuit (1) reiterated its caution against oversimplifying patent claims to the point that any invention becomes abstract, (2) held that the claim elements must be read as an “ordered combination,” (3) held that if claimed rules concern a “genus,” then there may be a greater risk of preemption but not necessarily to the extent of unpatentability, and (4) reconfirmed the importance of analyzing the claimed results (in McRO this was the automation of accurate and realistic lip synchronization). McRO should form the basis for the United States Patent and Trademark Office to update its 2014 interim eligibility guidance (IEG).

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