Charles Bieneman
Principal author, The Software IP Report

Indefiniteness Challenges Hinge On Textual Support

Whether a court holds a patent claim indefinite under 35 U.S.C § 112 can depend on textual support in the body of the claim or in the patent specification. In Luminati Networks, Ltd. v. UAB Tesonet, no. 2:18-cv-299 (E.D. Tex. Aug… Read More

Death and Taxes and Patent-Ineligibility of Business Methods

For all the kvetching about the frustrating subjectivity and unpredictability of applying the Mayo/Alice patent-eligibility test, here is a case showing that there is a zone of certainty in determining patentability under 35 U.S.C… Read More

Generic Computer Collecting Data and Using Mathematical Formula is Ineligible

A court held that patent claims directed toward “data collection and mathematical computations are quintessential abstract ideas,” and “[t]he generic equipment underlying the claims does not provide an inventive concept,”… Read More

"Virtual Client Entity" Deemed Indefinite By District Court Under MPF Analysis

The District Court for the District of Delaware recently handed down a claim construction order in T-JAT Systems 2006 v. Expedia that held the claim limitation “virtual client entity” was indefinite under 35 U.S.C. §… Read More

TTAB Requires Cross-Examination By Oral Deposition in CAPTAIN CANNABIS Battle

In a precedential decision in a cancellation proceeding, the Trademark Trial and Appeal Board has ruled that Petitioner Laverne J. Andrusiek must cross-examine, by oral deposition, Respondent Cosmic Crusaders LLC’s witnesses who… Read More

Means-Plus-Function Claim Construction of “Customization Module” Results in Indefinite Finding

In William Grecia v. Samsung Electronics (Fed. Cir. 2019) the Federal Circuit affirmed a finding of invalidity for U.S. Patent 8,533,860 (the ‘860 patent) under 35 U.S.C. § 112, ¶2 (indefinite). The invalidly determination for… Read More

Claim term “Processor” does not invoke MPF Construction

In a tentative ruling, a court held the claim term “processor” did not invoke means-plus-function construction and was not governed by 35 U.S.C. §112¶6. Realtime Adaptive Streaming LLC v. Adobe Systems Inc., No. cv 18-9344-G… Read More

Terminal Disclaimer: Common Ownership Necessary—or Not—for Standing

Two district courts recently came to the opposite conclusion on terminal disclaimers, an important issue in patent portfolio management. In both cases, the plaintiff asserted a patent for which a terminal disclaimer had been filed… Read More

Your Garage Door Opener Is Not Patent-Eligible

Patent claims directed to a “movable barrier operator,” i.e., controlling a garage door, are not patent-eligible under 35 U.S.C. § 101 and the Alice/Mayo test. Chamberlain Group, Inc. v. Techtronic Industries Co. Ltd., Nos.… Read More

Transmitting Particular Data via Conventional Mode is Ineligible

The Eastern District of Texas recently granted a motion to dismiss based on lack of patent-eligible subject matter, under 35 U.S.C. § 101 and the Alice/Mayo test, in U.S. Patent No. 6,014,089 directed to methods of transmitting… Read More