Charles Bieneman
Principal author, The Software IP Report

Indirect Patent Infringement Requires Direct Infringement

Because “a finding of direct infringement is a predicate to any finding of indirect infringement,” the Federal Circuit reversed a district court’s findings of indirect patent infringement where the evidence did not support a… Read More

Patent Pleadings Standards and Divided Infringement

When a plaintiff accuses multiple defendants of cooperating to infringe a patent, a well-pled complaint must make clear which defendant controls an accused system, and how defendants cooperate to practice a claimed method.  On th… Read More

Analogous Patent Prior Art from Different Field of Endeavor?

If you are trying to disqualify a prior art reference as non-analogous in either patent prosecution or litigation, here is a case to remind you of limitations of such arguments. In Smartdoor Holdings, Inc. v. Edmit Industries, Inc… Read More

Obviousness Upheld with Secondary Reference Unrelated to Field of Technology

When can prior art references be combined to invalidate patent claims as obvious under 35 U.S.C. § 103?  Here is one case providing a lesson on this question.  In Nidec Motor Corporation v. Zhongshan Broad Ocean Motor Co. Ltd.,… Read More

IPR Petitioner Must Establish References are Patents or Printed Publications

In Xactware Solutions, Inc. v. Pictometry Int’l Corp., No. IPR2016-00593, Paper 45 (PTAB Aug. 28, 2017), the Patent Trial and Appeal Board held Xactware did not establish that a document was a printed publication under 35 U… Read More

With License Ambiguous, Patent Exhaustion Heads to Jury

In Audio MPEG, Inc. v. Dell Inc., the Eastern District of Virginia denied summary judgment of patent exhaustion because it was ambiguous whether a license between Audio MPEG and Dell’s supplier Microsoft covered the allegedly in… Read More

No Patent-Eligibility for Biometric Identification System

Patent claims to “providing global biometric identification services to a plurality of remote parties” are directed to an unpatentable abstract idea under 35 U.S.C. § 101, said the court in IQS US Inc. v. Calsoft Labs, Inc.,… Read More

Court Finds Evonik Entitled to Permanent Injunction

In August 2009, Evonik Degussa GmbH filed a complaint for infringement of its U.S. Patent No. 7,378,528 directed to olefin metathesis catalysts containing NHC (N-heterocyclic carbene) ligands against Materia Inc.  After nearly ei… Read More

Is a Programmable Memory Patent-Eligible? Fed. Cir. Splits

A split Federal Circuit panel held that claims of U.S. Patent No. 5,953,740 are directed to “an improvement to computer memory systems” and “not to the abstract idea of categorical data storage.”  Visual Memory, LLC v. NV… Read More

Patent-Ineligibility in Collateral Case Kills Damage Award

After a jury found infringement of claims of two patents, and awarded damages, the Federal Circuit held the patent claims invalid under 35 U.S.C. § 101 in another case, whereupon the court in Prism Technologies, LLC v. Sprint Spe… Read More

Upcoming Webinar

Business Methods and Patent-Eligibility at the USPTO
September 22, 2017 at 12:00 pm EDT
During the webinar, Charles Bieneman will discuss recent trends and current practices with respect to patent-eligibility at the USPTO’s business methods arts units – including a looks at how some cases are surviving Section 101 rejections. Register

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