Charles Bieneman
Principal author, The Software IP Report

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

Alice Step 2 Saves Conference Call Patents

Patent claims directed to managing teleconferences over hybrid networks, i.e., PSTN and Internet, recited an unconventional combination of elements, said the court in Meetrix, IP, LLC v. Citrix Systems, Inc., No. 1-16-CV-1033-LY (… Read More

No Estoppel for IPR Dicta

In Oil-Dri Corp. v. Nestlé Purina Petcare Co., No. 15-cv-1067 (N.D. Ill. Aug. 2, 2017), an Illinois district court held that 35 U.S.C. § 315(e)(2) does not estop an accused infringer from challenging the validity of claims under… Read More

No CBM Patent Review for Software Based Trading Turret

The Patent Trial and Appeal Board (PTAB) has denied institution of CBM patent review, as a claimed trading turret system did not constitute a financial activity.  Cloud9 Tech. LLC v. IPC Systems, Inc., CBM2017-00037 (Pat. 8, 189… Read More

Contingent Patent Assignee Has Standing to Assert Patent

A patent assignee was found to have standing to assert a patent assigned to it, even though the patent assignor retained both a conditional right to mandate a return assignment, and to receive 50% of any enforcement proceeds.  In… Read More

PTAB Declines to Institute CBM Review on Financial Industry Telecommunications Technology

The PTAB recently declined to institute CBM on US8189566 titled “Software based trading turret.” According to the patent specification, “[a] trading turret system is a specialized telephony switching system that… Read More

Alice Dismissal No Basis for Exceptional Case, Attorney Fees

Having brought a lawsuit for a patent who claims are found invalid under 35 U.S.C. § 101, and the Alice abstract idea test, is the plaintiff’s conduct “objectively baseless” justifying an award of attorney fees under 35 U.S… Read More

Federal Circuit: District Court Should Have Construed Claims

The Federal Circuit in Nobelbiz v. Global Connect recently reversed a district court for relying on the “plain and ordinary meaning” of claim terms rather than offering construction because the parties disputed the scope of th… Read More

E.D. Texas Mag. Payne: Bandwidth Allocation Patent-Eligible

Claims of a patent directed to “management of bandwidth allocation in a network server” were not directed to an abstract idea, and not invalid under 35 U.S.C. § 101, held Magistrate Judge Payne in a report and recommendation… Read More

Upcoming Webinar

Business Methods and Patent-Eligibility at the USPTO
September 22, 2017 at 07:00 am 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