Charles Bieneman
Principal author, The Software IP Report

Supreme Court Upholds IPRs in Oil States

On Tuesday, the Supreme Court released its opinion in Oil States Energy Services, LLC v. Greene’s Energy Group, LLC, holding that the inter partes review procedure does not violate Article III of the Constitution. The Court main… Read More

Berkheimer Prompts USPTO to Modify § 101 Exam Procedure

Following the Federal Circuit’s recent discussion in Berkheimer v. HP, Inc., of the requisite factual inquiry when applying the Alice/Mayo patent-eligibility test of 35 U.S.C. § 101, United States Patent and Trademark Office ha… Read More

CAFC: Alice Not a Change in Law Preventing Issue Preclusion

A Federal Circuit panel (Judges Lourie, Newman, and Reyna) has rejected a district court’s statement that Alice Corp. v. CLS Bank Int’l., was “an intervening change in the law” that would “exempt a potential applicat… Read More

Berkheimer Effect?  Alice Query Deferred For Fact Questions

A complaint for patent infringement has survived a Rule 12 motion to dismiss by making specific factual allegations to support arguments that the claims met the patent-eligibility requirements of Alice and 35 U.S.C. § 101. Read More

Prosecution History Crucial for Claim Interpretation of “Remote”

The Federal Circuit has again highlighted the importance of prosecution history for patent claim interpretation. In Baker v. Microsoft Corp., No. 2017-2357 (Fed. Cir. Apr. 9, 2018) the Federal Circuit upheld a district court claim… Read More

Controlling Subscription Entertainment Not Patent Eligible

Affirming a motion to dismiss, the Federal Circuit found claims from four patents, directed to “electronic means of increasing user control over subscription entertainment content,” patent-ineligible under the Mayo/Alice test… Read More

Invention Disclosure to In-House Counsel Privileged

Is an invention disclosure submitted by an inventor to an in-house attorney for procurement of a patent covered by attorney-client privilege? The Central District of California held in The California Institute of Technology v. Bro… Read More

This Patent-Eligibility Decision Could Have Gone Either Way

Providing a common data format for “out-of-band network management” is patent-eligible, said a court in denying a motion to dismiss under FRCP 12 and 35 U.S.C. § 101.  Avocent Huntsville LLC v. ZPE Systems, Inc., No. 3:17-cv… Read More

Modifying Toolbars in Internet Apps Held Patent-Ineligible

A district court has granted a Rule 12 motion for judgment on the pleadings, holding that claims of two patents directed to modifying toolbars of Internet applications are patent-ineligible under the Alice test and 35 USC § 101.… Read More

Written Description Required to Claim Priority from a PCT

The Federal Circuit has clarified what written description is sufficient for a PCT application to qualify as a priority document for a U.S. Patent application. In Hologic, Inc. v. Smith & Nephew, Inc., No. 2017-1389 (Fed. Cir.… Read More

Upcoming Webinar

Divided Infringement
May 17, 2018 at 12:00 pm EDT
Divided infringement is the silent patent killer. It renders otherwise valid patents unenforceable. During the May B2 IP Webinar, Stephen Kontos of Bejin Bieneman will discuss the case law on divided infringement and propose best practices for patent…Register

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