Charles Bieneman
Principal author, The Software IP Report

Court Overturns § 102 Rejection Due to Limiting Preamble

The Federal Circuit overturned a PTAB decision affirming anticipation rejections under 35 U.S.C. § 102 of patent claims directed to “the construction of travel trailers” because the the PTAB “erred in concluding [the preamb… Read More

§ 112 Enablement and Written Description in Post-Grant Review

When are written description and enablement requirements of 35 U.S.C. § 112 met, and what is a Petitioner’s burden of showing those requirements are not met in a PTAB proceeding? In Instrumentation Laboratory Co. v. Hemosonics… Read More

Practical Application Saves Software Claims in PGR

The Patent Trial and Appeal Board recently upheld eligibility of claims in a post-grant review, relying on the USPTO’s 2019 Patent Subject Matter Eligibility Guidance (but writing just before the October 2019 update to the USPTO… Read More

Court Denies Motion to Reconsider Summary Judgment to Not Invalidate Under On-Sale Bar

Having previously denied summary judgment of invalidity of the plaintiff’s design patent, D450,839, under the 35 U.S.C. § 102 on-sale bar, the court in Junker v. Medical Components, Inc., et al., No. 2-13-cv-04606 (E.D. Pa Oct.… Read More

October 2019 USPTO Patent-Eligibility Guidance Provides Arguments for Software Patent-Eligibility (Especially Example 45)

The USPTO’s October 17, 2019, patent-eligibility guidance update (and new examples) have received copious attention from law firm commentators and other bloggers. As the PatentlyO blog notes, the USPTO’s guidance doesn’t nec… Read More

112 and the Zone of Uncertainty

In consolidated cases Niazi Licensing Corp. v. Boston Scientific Corp. and Niazi Licensing Corp. v. St. Jude Medical S.C. Inc. the district court found U.S. Patent 6,638,268 (“the ‘268 patent”) to be invalid under 35 U.S.C.… Read More

Automating Data Verification Ineligible under Section 101

Claims directed to automating employment verification data were held invalid under 35 U.S.C. § 101 in the Southern District of Indiana. Tenstreet, LLC v. DriverReach, LLC, No. 1:18-cv-03633 (S.D. Ind. Sep. 30, 2019). Plaintiff Te… Read More

Patent Owner Loses under § 101 in CBM Where Claims Not Limited to Technological Innovation Allegedly Disclosed in Patent Specification

All claims of a patent directed to a “security-based order processing technique” are unpatentable under 35 U.S.C. § 101, said the Patent Trial and Appeal Board (PTAB) in a final written decision in a Covered Business Method R… Read More

On-Sale Bar: Patent Invalid over Defendant’s Sale of the Product

A district court ruled that the on-sale bar can be triggered by sales by third parties, even if the product is not delivered until after the critical date. In OneSubsea v. FMC, Civil Action No. H-18-2459 (Sept. 24, 2019), the Sout… Read More

Details Matter for Patent-Eligibility (and Other Bases for Patent Validity)

An important lesson for patent drafting – disclose and claim as much detail as you can about how the invention works, as opposed to simply what it does – falls out of a Federal Circuit panel’s split decision holding patent-i… Read More

Upcoming Webinar

PTAB Practice: Recent Developments in Estoppel
November 21, 2019 at 12:00 pm EST
There are a wide range of estoppel issues that may be triggered under the America Invents Act (AIA) as a result of proceedings before the Patent Trial and Appeal Board (PTAB).  These estoppel issues complicate decision making in pursuing parallel pr…Register

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