B2 Intellectual Property Report

The Software IP Report

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The Claims Interpreted Report

Battery Charging Apparatus Held Patent Ineligible

N. District Court of California grants Apple’s 12(c) motion for judgment on the pleadings (following full briefing and oral argument) finding claims of U.S. Pat. No. 6,661,203 ineligible under 35 U.S.C. § 101 based on… Read More

Reversal of Parts Not Obvious in the Absence of Supporting Evidence

The ex parte Appellant successfully argued that the Examiner had not established a prima facie case of obviousness by failing to adequately explain why one skilled in the art would have made the proposed modification in… Read More

DDR and Bascom Don’t Save Internet Monitoring Patents

Patent claims directed to monitoring Internet activity “to increase the objectivity of the search results returned responsive to a search for talented original content creators” were held invalid under the Alice/Mayo… Read More

Novelty and Non-obviousness Do Not Save Patent-Eligibility

The Federal Circuit has held that patent claims directed to “performing certain statistical analyses of investment information” are patent-ineligible under the Alice/Mayo abstract idea test and 35 U.S.C. § 101, thus… Read More

Covered Business Method Patent Survives Alice

Patent claims can survive a patent-eligibility challenge under Alice and 35 U.S.C. § 101 even without a showing of a technological improvement.  In Dailygobble, Inc. v. SCVNGR, Inc., Case No. CBM2018-00002 (May 8, 2018… Read More

How Is Collateral Estoppel Applied to Patent Invalidity?

A California court has held that a defendant is collaterally estopped from asserting patent-ineligibility under 35 USC § 101 because the defendant, in prior litigation, lost a post-trial motion in which it evidently rai… Read More

Plain and Ordinary Meaning Requires More Than a Mere Capability

The Eastern District of Texas has granted-in-part Defendant HTC’s motion to strike expert testimony based on application of improper legal principles, to wit, the expert had improperly extended the plain and ordinary m… Read More

Beware Indefiniteness under Williamson and 35 U.S.C. §112(f)

Functional patent claim language not only justified an Examiner’s indefiniteness rejections under 35 USC § 112(b), but also justified a new ground of indefiniteness rejection in In re Xie, Ex parte Appeal 2017-000540,… Read More

PTAB: Encrypting Financial Account No. Is Patent-Eligible

After a patent examiner in a business methods art unit rejects claims as patent-ineligible under 35 USC § 101 and the Alice test, what does it take for the PTAB to reverse? Here is an example of an ex parte appeal in wh… Read More

Vague Development Agreement Allows Inventorship Challenge

Can vagueness in a development agreement allow standing to question inventorship of subsequently filed patents?  The Federal Circuit held in Gregory C. James v. j2 Cloud Services, LLC, No. 2017-1506 (Fed. Cir. 2018) tha… Read More

Upcoming Webinar

The patent system is designed to protect one invention per patent. In prosection, the Patent Office may enforce this rule by restricting the claims that will be examined. During the August webinar, Mark St. Amour of Bejin Bieneman will discuss the in…Register

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