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The Federal Circuit’s recent dicta in a non-precedential decision stating that it need not give deference to the USPTO’s 35 U.S.C. § 101 patent-eligibility guidance highlights the challenges faced by patent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

Specification Provides Insufficient Structure for MPF Claim

by Mike McCandlish on April 8th, 2019

Granting summary judgement to a defendant accused of patent infringement, a court held two patent claims including the term “control unit” indefinite, finding the description in the specification of a “tone control circuit�… Read More

Attorney Fees for Suing on Patent that “Looks Like Alice”

by Charles Bieneman on March 28th, 2019

After dismissing a lawsuit alleging infringement of US Patent No. 9,569,755 (“Financial Management System”), Delaware’s Judge Richard Andrews has awarded attorney fees under Octane Fitness and 35 U.S.C. § 285, finding an e… 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

Patent Prior Art Inherency Requires More Than Mere Possibility

by Charles Bieneman on March 11th, 2019

A finding that prior art inherently disclosed elements of claims of U.S. Patent No. 7,802,310 was not supported by substantial evidence; the Federal Circuit therefore reversed the Patent Trial and Appeal Board’s conclusion that… Read More

Absolute or Equitable Intervening Rights, It Matters

by Daniel Hegner on March 7th, 2019

Delaware District Court grants-in-part and denies-in-part patentee’s motion for summary judgment regarding accused infringer’s defense of intervening rights. Sonos, Inc. v. D&M Holdings, Inc.,No. 14-1330-WCB (D. Del. Nov… 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