Charles Bieneman
Principal author, The Software IP Report

Phone Registration Verification Patents Easily Fail Alice

Claims of four patents directed to using a telephone to verify a person registering for an account are invalid under 35 U.S.C. § 101 and the Alice patent-eligibility test, the court held in TeleSign Corporation v. Twilio, Inc.,… Read More

Heart-Monitoring Ineligible under § 101 as Abstract Idea

The District of Massachusetts recently granted a motion to dismiss for ineligible subject matter under 35 U.S.C. § 101 and the Alice/Mayo test in a case involving home electrocardiogram sensors, CardioNet, LLC v. InfoBionic, Inc… Read More

PGR Gives a Second Bite at Patent-Ineligibility

Recent PTAB decisions on petitions for Post-Grant Review (PGR) demonstrate how little deference judges can give to patent examiners patent-eligibility decisions.  Even if the USPTO in the form of a patent examiner has deemed clai… Read More

Can One Predict Patent-Eligibility at the Federal Circuit?

Some claims directed to a computer spreadsheet are patent-eligible, while others are not, said the Federal Circuit in Data Engine Techs. LLC v. Google LLC (Fed. Cir. 2018) (precedential).  The District of Delaware had granted a… Read More

When is a document a “Printed Publication” under 102(b)?

The Federal Circuit held that there was an insufficient record to qualify the reference “IsoMed Constant-Flow Infusion System (“IsoMed”) as publicly accessible and therefore a printed publication under 35 U.S.C §102(b), and… Read More

Plain and Ordinary Claim Construction

In Wisconsin Alumni Research Foundation v. Apple, No. 2017-2265 (Fed. Cir. Sept. 20, 2018), the Federal Circuit construed a pair of claim terms under their plain and ordinary meaning in reversing summary judgment that Apple was n… Read More

Linking Web Pages to Each Other Not Patent-Eligible

Agreeing that patent claims “are directed to the abstract idea of facilitating cross-marketing relationships and fail to add any inventive concept” under 35 U.S.C. § 101 and the Alice/Mayo abstract test, Delaware’s Judge S… Read More

Menu Claims Patent-Eligible Under Apple, Core Wireless

Claims directed to an “information management and real time synchronous communications system for configuring and transmitting hospitality menus” were held patent-ineligible under 35 U.S.C. § 101 and the Alice abstract idea… Read More

Thales Saves Step-Counter Patent Claims in E.D. Texas

Patent claims directed to counting steps in an exercise session, including accounting for an incline of a surface on which a user is stepping, have survived a Rule 12(b)(6) motion to dismiss. Uniloc USA Inc. v. Samsung Electronics… Read More

Another Unsupported Patent Royalty Rejected

Expert testimony on patent royalties that is unsupported by evidence is excluded. Dominion Assets LLC v. Masimo Corp., Case No. 14-cv-03002 (N.D. Cal. Aug. 1, 2018). Plaintiff Dominion alleged infringement by Defendant Masimo of… Read More

Upcoming Webinar

Bejin Bieneman is delighted to kick off the first B2 IP Webinar of 2019 with David Hannon, Of Counsel at Bejin Bieneman, who will provide an outline of issues for decision by a US brand owner in its pursuit of trademark protection in China. Mr. Hann…Register

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