Charles Bieneman
Principal author, The Software IP Report

DDR and Enfish Can’t Save Software Fault Recovery Claims

Claims directed to “software fault recovery” are patent-ineligible under 35 U.S.C § 101, said the court in Atticus Research Corp. v. MMSoft Design Ltd., No. 4:17-CV-3387 (S.D. Texas Sept. 6, 2018), granting a Rule 12(b)(6) m… Read More

The Federal Circuit on Claim Construction and Indefiniteness

In the recent case Intellectual Ventures I LLC v. T-Mobile USA, Inc., the Federal Circuit overturned a district court’s claim construction for reading in a limitation and upheld the district court’s invalidation for indefinite… Read More

Overcome Alice by Talking up Technical Benefits

Patent claims directed to dynamically generating and providing an applet to a client from a server should survive Rule 12(b)(6) motions to dismiss, says an Eastern District of Texas Magistrate Judge. Dynamic Applet Technologies, L… Read More

Enfish Does Not Save Patent-Eligibility of Database Claims

The Federal Circuit has affirmed a summary judgment from the Eastern District of Texas holding that claims directed to indexing and accessing information in large databases are patent-ineligible under 35 U.S.C. § 101 and the Alic… Read More

Requiring Condition Can Overcome Art Resulting In Condition

A claim that required a specific condition overcame prior art that merely disclosed an embodiment resulting in satisfaction of the condition. In re Facebook, Inc., No. 2017-2524 (Fed. Cir. Aug. 14, 2018) (nonprecedential) (C.J. Pr… Read More

Easy CAFC Patent-Eligibility Case: Digital Product Licensing

In a one-line order under its Rule 36, the Federal Circuit has affirmed a decision of Judge Schroeder in the Eastern District of Texas granted a Rule12(b)(6) motion to dismiss claims of patent infringement where claims were direct… Read More

Berkheimer Stops Patent-Eligibility Motion at Pleading Stage

Saying that a defendant’s patent-eligibility challenge raised questions of fact under Berkheimer v. HP Inc. (Fed. Cir. 2018), a District Court has denied a motion for judgment on the pleadings under FRCP 12(c) concerning U.S. P… Read More

Non-Patented Features and the Entire Market Value Rule

Evidence that a patented feature drives customer demand is insufficient to justify damages under the entire market value rule (EMVR) when non-patented features may drive customer demand. Power Integrations, No. 2017-1875 (Fed. Cir… Read More

Does Presumption of Patent Validity Extend to Eligibility?

A plaintiff seeking to enforce patents claiming automated methods for uploading multimedia content was ordered to pay defendants’ attorney fees based on a finding of an “exceptional case” under U.S.C. § 285.  Cellspin Soft… Read More

Arguments in Patent Appeal Reply Brief Wrongly Ignored

The Federal Circuit has clarified what arguments may be made in a reply brief during a patent appeal. In In Re: Durance, No. 2017-1486 (Fed. Cir. Jun. 1, 2018), the Federal Circuit vacated the PTAB’s obviousness decision and rem… Read More

Upcoming Webinar

Functional Claiming: Pitfalls and How To’s
October 18, 2018 at 12:00 pm EDT
Recent decisions under 35 U.S.C. §§ 101, 112, and 103 come into focus when viewed through a common lens. During the October webinar, Daniel Hegner of Bejin Bieneman discusses the convergence of federal court and PTAB decisions questioning funct…Register

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