Archive | December, 2016

Broadest Reasonable Interpretation of Patent Claims Must Be Logically Consistent

Here is ammunition for patent applicants and patent owners alike when examiners, or challengers in Inter Partes Reviews, rely on broad readings of claim language that go beyond a broadest reasonable interpretation: D’Agostino v. Mastercard International. Inc., No. 2016-1592, 2016-1593 (Fed. Cir. Dec. 22, 2016.  In this case, the Federal Circuit vacated a claim construction […]

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Incorporation by Reference Saves Patent-Eligibility

A continuation-in-part patent application incorporated its parent by reference; now a court has relied on subject matter disclosed in the parent’s specification to support a finding that claims of the child patent were patent-eligible under 35 U.S.C. § 101.  Finjan Inc. v. Blue Coat Systems Inc., No. 5-15-cv-03295 (N.D. Cal. Dec. 13, 2016).  Accordingly, the […]

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Communications with Patent Agents and Foreign Associates – Recent Developments on Privilege

If you are, or work with, a patent agent – or if you are at one end or the other of communications between U.S. attorneys and foreign attorneys and/or patent agents – this recent presentation by my colleague Peter Keros has some useful information.  The basic takeaways are these.  First, patent agents are treated like […]

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Enfish Did Not Change the Law of Patent-Eligibility, Says E.D. Texas Court

Judge Schroeder in the Eastern District of Texas has declined to reconsider a prior ruling (and resulting final judgment) of patent-ineligibility of claims directed to “entering location information into a positional information device.”  Rothschild Location Technologies LLC v. Geotab USA, Inc., No. 6-15-cv-00682 (E.D. Texas Dec. 5, 2016). The court emphasized that, the patent owner’s […]

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Internet Advertising Patents Once Held Not Patent-Eligible Now Are

In a somewhat stunning turnabout, a US District Judge has vacated her predecessor’s dismissal order predicated on a finding that claims of three patents directed to Internet advertising failed to recite patentable subject matter under the two-part Alice test and 35 USC § 101.  TNS Media Research, LLC v. TiVo Research and Analytics Inc., No. […]

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Patent-Eligibility Not Saved by Claiming Functionality Via a Device

In another sign that broad patent claims to software functionality cannot survive Alice’s patent-eligibility test, patent claims directed to automating a sequence of events on the Internet were held invalid under 35 USC § 101 in Content Aggregation Solutions, LLC v. Sharp Corp.,  Nos. 3:16-cv-00527, -00528, -00529, -00530, -00531, -00533-BEN-KSC (S.D. Cal. Nov. 29, 2016).  […]

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Post-Solution Activity in Menu Generation Patent Claims Does Not Overcome Alice

In holding all claims of patents directed to generating electronic menus patent-ineligible under 35 USC § 101, a Federal Circuit panel handed Covered Business Method Review petitioners an even bigger win than they had gotten from the Patent Trial and Appeal Board (PTAB).  Apple, Inc. v. Amaranth, Inc., Nos. 2015-1792, 2015-1793 (Fed. Cir. Nov. 29, […]

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