Intellectual property partner Braden Katterheinrich and associate JD Schneider coauthored an article for Law360 titled, “Fed. Circ. Ruling Shows Novelty's Role In Patent Eligibility,” that addresses the impact of the recent Federal Circuit decision in Simio LLC v. FlexSim Software Products Inc. (Simio).
In the article, Katterheinrich and Schneider discuss how the case highlights the role novelty can play in determining whether an invention is directed to an abstract idea. The authors note that in previous cases, courts have analogized the gist of claimed inventions to human abilities; however, in Simio, the Federal Circuit focused its attention on whether the claims were directed to an advance over the prior art and whether that advance was merely an old practice, conventional or nonabstract improvement.
Based off the Federal Circuit’s decision, Katterheinrich and Schneider suggest that for claimed inventions to pass Mayo/Alice step one, they should not only recite improvements over prior approaches, but the improvements themselves should be novel, specific and rooted in technology.