Charles Bieneman
Principal author, The Software IP Report

Routine Steps Fail to Transform Abstract Idea

Claims that fail to explicitly recite a specific way to solve a specific technological problem are at risk under §101, especially when the underlying technology is known and only implements routine steps. Such claims fail to tran… Read More

No Inequitable Conduct: Duty to Disclose Only Goes So Far

A patent prosecutor did not have a duty to disclose that a cited prior art reference inherently disclosed a claimed feature where the examiner misunderstood the reference as failing to disclose the feature. On this basis, a motion… Read More

Technical Environment Requires Detailed Tailoring

How much detail does patent claim language require to describe a technical solution to a technical problem to meet the patent-eligibility requirements of the Alice/Mayo test and 35 U.S.C. § 101? At the very least, enough to tailo… Read More

Telephone Call Processing Claims Patent-Ineligible

Various claims of two patents covering telephone call processing were found to be directed to respective patent-ineligible abstract ideas: “sequentially dialing a list of telephone numbers to overcome a busy signal,” and retri… Read More

Pleading Joint Patent Infringement

Pleading joint patent infringement of a method claim requires alleging that one defendant controlled the action of a third party or that two parties were engaged in a joint venture. In Sonrai System, LLC v. AMCS Group Inc., No. 16… Read More

Inter Partes Review Estoppel Extends to Non-Petitioned Grounds

Hewlett Packard Enterprises (“HP”), accused of infringing U.S. Patent No. 6,218,930 owned by Network-1 Technologies, Inc. (“Network-1”), was recently estopped from relying on certain references and combinations thereof to… Read More

Preview-Based File Sharing Claims Invalid Under 35 U.S.C. §101

In TS Patents LLC v. Yahoo! Inc., No. 17-cv-01721-lhk, (CAND Sept. 1, 2017) the Court applied the two-step Alice analysis and granted Yahoo’s motion to dismiss an infringement suit from TS Patents, finding claims from four asser… Read More

PTAB Invalidates Construction "Price Schedule" Patents

Autodesk, Inc. petitioned for covered business method review of two “Automated pricing system” patents of Uniloc USA, Inc. and Uniloc Luxembourg, S.A. CBM 2016-00042 re USPN 7783523; CBM 2016-00043 re USPN 8515820.  I… Read More

Patent-Eligibility Rejections of Transaction Verification Claims Reversed

After finding that representative patent claims were “directed to the abstract idea of generating a verification value in response to a transaction,” the Patent Trial and Appeal Board went on to reverse the patent examiner’s… Read More

Patent Prior Art and the Necessity Requirement for Inherency

A patent claim limitation can only be inherently disclosed by patent prior art when such limitation is necessarily a component of a disclosed subject matter. In Southwire Co. v. Cerro Wire LLC, No. 2016-2287 (Fed. Cir. Sept. 8, 20… Read More

Upcoming Webinar

Functional Claiming After Williamson v. Citrix
December 14, 2017 at 12:00 pm EST
During the webinar, Charles Bieneman will cover strategies for avoiding – or embracing – functional claim interpretations, and for avoiding findings that functional claim language is indefinite. Register

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