Bejin Bieneman PLC

Courts Don’t Follow the PTO’s § 101 Patent-Eligibility Guidance so Why Should You?

by Charles Bieneman on April 15th, 2019

The Federal Circuit’s recent dicta in a non-precedential decision stating that it need not give deference to the USPTO’s 35 U.S.C. § 101 patent-eligibility guidance highlights the challenges faced by patent applicants. In Cle… Read More

Radio over Internet Protocol (RoIP) is Patent-Eligible

by Nathan Smith on April 11th, 2019

The District of Delaware recently denied a 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 No. 7,333,806 directed to two-way radio commu… Read More

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 became ef… 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 claims of U.S.… 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 of Californ… 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 18-1234-GW(PL… 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; 9,253,444;… 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 Systems, I… Read More

Patent-Eligibility Not Supported by an Ordered Combination of Generic Technology Elements

by Charles Bieneman on February 14th, 2019

Patent claims reciting “buying and selling an item relating to unique subjects” unsurprisingly could not meet the patent-eligibility bar of 35 U.S.C. § 101 and the Alice/Mayo test when the patent owner appealed a lower court… Read More

NASDAQ Patent Doesn’t Claim Covered Business Method

by Charles Bieneman on February 7th, 2019

The PTAB has declined to institute a Covered Business Method (CBM) review for a patent, owned by NASDAQ, claiming a computerized system for executing securities transactions. Investors Exchange LLC v. NASDAQ, Inc., Case CBM2018-00… Read More