Charles Bieneman
Principal author, The Software IP Report

Generating Tactile Patterns Held Patent-Eligible

Patent claims directed to providing output in tactile patterns on a mobile device to provide an encoded message have survived a 35 USC § 101 patent-eligibility challenges under the Alice/Mayo test. In Ironworks Patents LLC v. App… Read More

When is Patent Prior Art Distinct but Not Different?

Where distinct physical concepts recited in a patent claim and applied prior art are related and can achieve same results, do not count on being able to distinguish teachings of the prior art.  In Mobileye Vision Technologies Ltd… Read More

DDR Holdings Saves Other DDR Holdings Patents

The Federal Circuit’s famous (or infamous) decision that one DDR Holdings’ patent was not invalid under 35 U.S.C. § 101 was used to support a district court’s denial of a motion for judgment of § 101 for three other DDR Ho… Read More

“Program,” “UI Code,” Not Means-Plus-Function Terms

The Federal Circuit has held that claim terms “program” and “user interface code,” as used in the phrases “program that can operate the movement of the pointer” and “user interface code being configured to detect one… Read More

Patent Drafting Tip: Take Care with Open-Ended Descriptions

Be careful with the conventional wisdom that tells a patent drafter to use permissive, open-ended language when describing features of an invention.  Like me, you may have been taught to avoid “patent obscenities” like “inv… Read More

Prior Art is What an Internet Search Engine Sees

A decision holding that an a YouTube video is a printed publication under 35 U.S.C. § 102(a) is a reminder that one should always assume that content on the Internet accessible via a public search engine qualifies as prior art. … Read More

Battery Charging Apparatus Held Patent Ineligible

N. District Court of California grants Apple’s 12(c) motion for judgment on the pleadings (following full briefing and oral argument) finding claims of U.S. Pat. No. 6,661,203 ineligible under 35 U.S.C. § 101 based on broad fun… Read More

DDR and Bascom Don’t Save Internet Monitoring Patents

Patent claims directed to monitoring Internet activity “to increase the objectivity of the search results returned responsive to a search for talented original content creators” were held invalid under the Alice/Mayo abstract… Read More

Novelty and Non-obviousness Do Not Save Patent-Eligibility

The Federal Circuit has held that patent claims directed to “performing certain statistical analyses of investment information” are patent-ineligible under the Alice/Mayo abstract idea test and 35 U.S.C. § 101, thus affirming… Read More

Covered Business Method Patent Survives Alice

Patent claims can survive a patent-eligibility challenge under Alice and 35 U.S.C. § 101 even without a showing of a technological improvement.  In Dailygobble, Inc. v. SCVNGR, Inc., Case No. CBM2018-00002 (May 8, 2018), the USP… Read More

Upcoming Webinar

Functional Claiming: Pitfalls and How To’s
October 18, 2018 at 12:00 pm EDT
Recent decisions under 35 U.S.C. §§ 101, 112, and 103 come into focus when viewed through a common lens. During the October webinar, Daniel Hegner of Bejin Bieneman discusses the convergence of federal court and PTAB decisions questioning funct…Register

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