Charles Bieneman
Principal author, The Software IP Report

Details Matter for Patent-Eligibility (and Other Bases for Patent Validity)

An important lesson for patent drafting – disclose and claim as much detail as you can about how the invention works, as opposed to simply what it does – falls out of a Federal Circuit panel’s split decision holding patent-i… Read More

Limits on Obviousness - Beyond the Claim Elements

Here is a lesson on obviousness. The Federal Circuit agreed with the Patent Trial and Appeal Board (PTAB) that claims for a system to measure degradation of cooking oils in a deep fryer were non-obvious under 35 U.S.C. §103. The… Read More

Failure to Disclose Sales Before Critical Date is Inequitable Conduct

Failure to disclose “material information of prior sales” resulted in a holding that U.S. Patent No. 8,146,428 “is unenforceable due to inequitable conduct” based on a finding of a “specific intent to deceive the PTO int… Read More

Online User Authentication Service Fails § 101 Patent-Eligibility Test

Claims of a patent directed to “an interaction between a user, an ASP [authentication service provider] client, and an ASP” were invalid under 35 U.S.C. § 101 and the Mayo/Alice patent-eligibility test, said a Northern Distri… Read More

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

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PTAB Practice: Recent Developments in Estoppel
November 21, 2019 at 12:00 pm EST
There are a wide range of estoppel issues that may be triggered under the America Invents Act (AIA) as a result of proceedings before the Patent Trial and Appeal Board (PTAB).  These estoppel issues complicate decision making in pursuing parallel pr…Register

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