Charles Bieneman
Principal author, The Software IP Report

Claim Term “Important” Leads to Indefiniteness

The Eastern District of Texas recently invalidated several patent claims that the court had found indefinite in a separate claim construction ruling in the case Uniloc 2017 v. Samsung. Interestingly, the court found the claim term… Read More

Conventional Component For Accepting Credit Card Payment In Taxicab is Ineligible: Curb Mobility, LLC v. Kaptyn, Inc.

A court held that patent claims directed to “the longstanding commercial practice of paying for public transit” are abstract ideas, and “the mere assemblage of admittedly known components” does not provide an inventive con… Read More

Insufficient Written Description in Provisional Application Triggers On-Sale Bar of Subsequent Patent

A provisional patent application must include sufficient description to allow a person having ordinary skill in the art to make an invention as claimed in an asserted patent claiming priority to the provisional application, as rec… Read More

Patent-Eligibility Legislative Reform Is Not Coming Soon

In an interview published by the Intellectual Property Owner’s Association, Senator Thom Tillis (R-N.C.) addressed the question many have asked: is Congress going to fix the § 101 patent-eligibility mess? The answer? Not any ti… Read More

Patent Claims to Evaluating Body Movement Fail § 101 on Post-Trial Motion: ILife Technologies, Inc. V. Nintendo Of America, Inc.

Patent claims directed to automating collection and interpretation of sensor data are often suspect under the two-part  Mayo/Alice patent-eligibility test under 35 U.S.C. § 101. Not so often, however, do judges do as the court… Read More

Emergency Alert System Is Not Patent-Eligible: Tenaha Licensing LLC v. TigerConnect, Inc.

Patent claims directed to “alert and notification” are ineligible under 35 U.S.C. § 101 and the two-part Mayo/Alice patent-eligibility test, said a Delaware magistrate judge, recommending  granting a Rule 12(b)(6) motion t… Read More

Claims Combing a System and a Method for Using the System are Invalid for Indefiniteness Under § 112

During a Markman patent claim construction proceeding, the Western District of Texas ruled multiple claims of U.S. Patent No. 7,284,203 invalid for indefiniteness under 35 U.S.C. § 112 because the claims “improperly combine sys… Read More

No Attorney Fees for § 101 Dismissal: Data Scape Ltd. v. Spotify USA Inc.

Despite a refiled case and a subsequent dismissal for ineligible subject matter, plaintiff Data Scape escaped paying attorney fees to defendant Spotify in a recent decision from the Central District of California.  Data Scape Lim… Read More

Federal Circuit Upholds Noninfringement Because of Claim Construction of “Extruded Parison”: Plastic Omnium v. Donghee America

The Federal Circuit recently upheld a summary judgment of noninfringement based on an undisputed claim construction in Plastic Omnium v. Donghee America. The dispute centered on manufacturing plastic fuel tanks by blow molding. Pl… Read More

Patent Claims to Virtual Smartphone for Automobile Fail Alice Test: KCG Technologies, LLC v. CarMax Auto Superstores, Inc.

Claims directed to a virtual smartphone that could be displayed on a vehicle touchscreen are patent-ineligible under 35 U.S.C. § 101 and the two-part Mayo/Alice patent-eligibility test, held the court in KCG Technologies, LLC v… Read More