Posts Bejin Bieneman PLC

PTAB: Derivatives Trading Patent Claim Passes Alice Test, Opinion Designated “Informative”

by Charles Bieneman on March 24th, 2019

Here is a sign that the USPTO’s January, 2019, guidance on 35 U.S.C. § 101 and patent-eligibility may have an immediate and significant impact on USPTO rejections under the Mayo/Alice abstract idea test. The guidance… Read More

Factual Dispute Precludes Summary Judgment on Alice / § 101 Motion

by Charles Bieneman on March 18th, 2019

Finding that competing expert declarations raised a factual question concerning whether claims recited an inventive concept, a Delaware magistrate judge found that a summary judgment motion for invalidity of claim… Read More

Another Delayed Patent Eligibility Decision

by Peter Keros on March 14th, 2019

Once again, a district court in California urged parties to improve their pleadings before deciding patent eligibility under 35 U.S.C. § 101. In Kajeet v. Qustodio, CV18-01519 JAK (Feb. 28, 2019), the Central District o… Read More

Patent Prior Art Inherency Requires More Than Mere Possibility

by Charles Bieneman on March 11th, 2019

A finding that prior art inherently disclosed elements of claims of U.S. Patent No. 7,802,310 was not supported by substantial evidence; the Federal Circuit therefore reversed the Patent Trial and Appeal Board’s concl… Read More

Absolute or Equitable Intervening Rights, It Matters

by Daniel Hegner on March 7th, 2019

Delaware District Court grants-in-part and denies-in-part patentee’s motion for summary judgment regarding accused infringer’s defense of intervening rights. Sonos, Inc. v. D&M Holdings, Inc.,No. 14-1330-WCB (D… Read More

District Courts Avoid Determining Patent Eligibility

by Peter Keros on March 4th, 2019

How much evidence and claim construction does a court need to make a determination on eligibility under 35 U.S.C. § 101? According to district courts in California, it depends? In SkyHawke Techs. v. DECA Int’l, CV 18-… Read More

Patent Claims Held Indefinite for Mixed Apparatus and Method

by Mike McCandlish on February 28th, 2019

In a Claim Construction Memorandum and Order, a court recently held a claim term indefinite for mixing an apparatus and a method. Wireless IP Holdings, L.P., v. Samsung Electronics Co., Ltd., et al. No. 2:18-CV-28-JRG, (… Read More

Videoconferencing Services Switch System Claim is Patent-Eligible

by Nathan Smith on February 25th, 2019

The Eastern District of Texas recently denied a Rule 12(b)(6) motion to dismiss based on lack of patent-eligible subject matter, under 35 U.S.C. § 101 and the Alice/Mayo test, in claims of U.S. Patent Nos. 9,154,734;… Read More

Using Claim Construction to Import Limitations

by Mark St. Amour on February 21st, 2019

In Continental Circuits LLC v. Intel Corp. No. 2018-1076 (Fed. Cir. Feb. 8, 2019) the Federal Circuit determined the district court erred in its claim construction and explained the high bar that must be met to import li… Read More

Network Monitoring Patents Fail Alice Test, Says Delaware’s Judge Stark

by Charles Bieneman on February 18th, 2019

Two patents directed to monitoring network response times to determine responsiveness of network services are invalid under 35 U.S.C. § 101 and the Alice/Mayo test, held Judge Stark in the District of Delaware. Citrix… Read More

B2 Intellectual Property Report

The Software IP Report

The Claims Interpreted Report