B2 Intellectual Property Report

The Software IP Report

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The Claims Interpreted Report

It’s Official: Berkheimer and USPTO’s January 2019 Guidance Have Reduced Alice Rejections

According to a recent report by the USPTO’s Chief Economist, the Federal Circuit’s 2018 Berkheimer decision and the USPTO’s January 2019 patent-eligibility guidance have reduced both the frequency and uncertainty o… Read More

Another Motion to Dismiss Denied by Alleging Inventive Concept: Nice Ltd. v. Callminer, Inc.

Once again, a court has denied a motion to dismiss a patent infringement suit, holding that the question of patent-eligibility under 35 U.S.C. § 101 could not be decided on a Rule 12(b)(6) motion. The Court held that th… Read More

CAFC: Obviousness and Design Patents: Spigen Korea Co., LTD. v. Ultraproof, Inc.

The Federal Circuit, in reversing a court’s decision to grant summary judgment of invalidity of claims of three design patents, held that the identification of multiple differences between the claimed design and a cite… Read More

Extrinsic Evidence and Abstract Ideas in Patent-Eligibility: CardioNet, LLC v. InfoBionic, Inc.

What if any limits are there on the extrinsic evidence (prior art) that can be considered in determining whether a patent claim is drawn to an abstract idea under step one of the Alice/Mayo 35 U.S.C. § 101 patent-eligi… Read More

Will Dismissal on the Pleadings for Section 101 Eligibility Become Rare?

Should district courts consider eligibility of patent claims under 35 U.S.C. § 101 in a motion to dismiss under Rule 12(b)(6)? The Western District of Texas seems to think this analysis should wait, and only rarely shou… Read More

Claim Interpretation and the Enablement Requirement

Providing a reminder about how to interpret elements of a patent claim when analyzing the claim against prior art during patent prosecution, in Technical Consumer Products, Inc. v. Lighting Science Group Corp. (April 8,… Read More

A Printed Publication in Patent Prosecution May Not be Printed Publication in an IPR Proceeding

In a recently designated precedential decision (Ex parte Grillo-Lopez), the Patent Trial and Appeal Board (PTAB) explained the differences regarding what a printed publication is during inter partes review (IPR) and what… Read More

Federal Circuit Holds Telecommunications System Access Control Patent-Ineligible: Ericsson Inc. v. TCL Comm. Tech. Holdings, Ltd.

Patent claims directed to “limiting and controlling access to resources in a telecommunications system” failed the 35 U.S.C. § 101 and the Alice/Mayo patent-eligibility test, held a split Federal Circuit panel, rev… Read More

Lack of Antecedent Basis Renders Claim Indefinite, but Subjective Claim Terms Found Not Indefinite Under § 112

During a Markman hearing, the Eastern District of Texas ruled claim 12 of U.S. Patent No. 7,865,920 invalid for indefiniteness under 35 U.S.C. § 112 because “[t]here is no antecedent reference to ‘storage locations… Read More

Anticipation of Software Patent Claims: Arguments Must Be Consistent with Court’s Claim Construction

In a decision instructive on patent claim interpretation and anticipation analysis in software cases, claims directed to “computerized fitness equipment” that “simulates… actual race conditions with other users… Read More