Charles Bieneman
Principal author, The Software IP Report

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

The Federal Circuit’s recent dicta in a non-precedential decision stating that it need not give deference to the USPTO’s 35 U.S.C. § 101 patent-eligibility guidance highlights the challenges faced by patent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

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

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”

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”

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

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

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

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

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

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

Upcoming Webinar

Christoper Francis and Charles Bieneman will conduct a two-part webinar to discuss best practices for preparing, and then prosecuting, patent applications at the USPTO. The presentation will dive underneath the basic legal requirements to provide ade…Register

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