Author Archive | Charles Bieneman

Functional Claims Can Survive Alice Challenges If They Seem “Technical”

Patent claims directed to providing portable storage devices with access to terminals have survived a motion for summary judgment that made a patent-eligibility challenge under 35 U.S.C. § 101 and Alice Corp. v. CLS Bank.  IOENGINE LLC v. Interactive Media Corp., No. 14-1571-GMS (D. Del. Jan. 4, 2017).  Claims of U.S. Patent No. 8,539,047 are […]

Continue Reading

No Fee Award Against Plaintiff Who Asserted Patents Invalidated Under Alice

A district court has roundly rejected a request for an award of attorney fees against a plaintiff who asserted business method patents later found invalid under 35 U.S.C. § 101 and Alice Corp v. CLS Bank.  O2 Media LLC v. Narrative Science Inc., No. 15-CV-05129 (N.D. Ill. Jan 3, 2017). After succeeding with a Rule […]

Continue Reading

Intellectual Ventures’ Network Management and SMS Messaging Patents Invalidated under Alice

Claims of patents directed to network account management and messaging functionality recite patent-ineligible abstract ideas under the Mayo/Alice test, says Delaware’s Judge Stark. Intellectual Ventures I LLC v. AT&T Mobility LLC (D. Del., Dec. 30, 2016). Accordingly, Judge Stark granted Defendants’ Rule 12(c) Motion for Judgment on the Pleadings, holding claims of US Patent Nos. […]

Continue Reading

Another Reason Why Ex Parte Reexaminations May Not Be the Best Way to Challenge Patent Claims

Despite the defendant’s diligence in seeking an ex parte re-examination of the patent-in-suit by the USPTO shortly after being sued, a district court has denied the defendant’s motion for a stay.  Pro-Troll, Inc., v. Shortbus Flashers, Inc., No. 16-cv-04062-VC (N.D. Cal. Dec. 23, 2016).   The court’s reasoning included in an interesting comparison of ex parte […]

Continue Reading

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 […]

Continue Reading

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 […]

Continue Reading

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 […]

Continue Reading

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 […]

Continue Reading

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. […]

Continue Reading

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).  […]

Continue Reading

Powered by WordPress. Designed by WooThemes