Charles Bieneman
Principal author, The Software IP Report

Fact Disputes Don’t Prevent Patent-Ineligibility Finding

In affirming a district court’s grant of summary judgment of patent-ineligibility under 35 U.S.C. § 101, a Federal Circuit panel provided some reassurance to those who were unsettled by the court’s recent dicta in Berkheimer… Read More

Providing Haptic Feedback Patent-eligible or Abstract Idea?

Claims from two out of three patents for providing haptic feedback to computer users survived a motion to dismiss based on a patent eligibility challenge under the Mayo/Alice test and 35 U.S.C. § 101. Considering their character… Read More

CBM Estoppel Limited to Substantially Identical References

A district court recently held the scope of estoppel from covered-business-method (CBM) review encompasses the references used in the CBM as well as almost-identical references. (Solutran, Inc. v. U.S. Bancorp et al. (D. Minn. 201… Read More

Contemporary Evidence Beats Google Obviousness Challenge

The Federal Circuit recently upheld two patents against an obviousness challenge by Google. (Google v. At Home Bondholders Liquidating Trust (Fed. Cir. 2018).) This case demonstrates the importance of contemporary evidence to supp… Read More

Does the Alice Patent-Eligibility Test Require a Jury Trial?

A split Federal Circuit panel has affirmed a district court’s holding that patent claims directed to a “temporal artery temperature detector” are patent-eligible under 35 USC § 101 and the Mayo/Alice test.  Exergen Corp. v… Read More

Can Internet Advertising Claims Ever Be Patent-Eligible?

One should never say never in the constantly-evolving world of patent-eligibility law, but a recent case demonstrates the perhaps insurmountably steep obstacles faced by patent claims directed to Internet advertising under the May… Read More

When Is Benefit from a System Patent Claim Infringing Use?

The Federal Circuit has affirmed a district court’s rule 12(b)(6)dismissal of a complaint alleging direct patent infringement where the patent owner pled that the defendant at most benefited from the claimed system as a whole, a… Read More

Supreme Court of Texas Recognizes Patent Agent Privilege

Texas now recognizes an independent patent agent privilege in Texas state courts. In re Andrew Silver, No. 16-0682 (Texas 2018). This now aligns with the Federal Circuit, which recognized patent agent privilege a few years ago, an… Read More

How Easy Can Patent-Eligibility Analysis Be?

Claims directed to “providing an internet third party data channel” were held invalid at the pleadings stage under 35 U.S.C. § 101 and the two-part Alice patent-eligibility test because the claims attempt “to monopolize the… Read More

Controlling Video Playback Preferences Not Patent-Eligible

Claims reciting a “method of playing back a recorded signal” are “directed to the [patent-ineligible] abstract idea of choosing to playback media with or without playback preferences,” held the court in D&M Holdings, I… Read More

Upcoming Webinar

Peter Keros of Bejin Bieneman PLC will cover approaches to responding to Office Actions during patent prosecution. Topics discussed will include: Interviews with Examiners Why to interview with Examiners When in prosecution can you have an intervie…Register