Author Archive | Charles Bieneman

No Stay When Inter Partes Review Not Yet Instituted

Where the Patent Trial and Appeals Board (PTAB) had not yet ruled on a petition for Inter Partes Review (IPR), a U.S. District Court denied a defendant’s motion for a stay pending completion of the IPR. Seymour Levine v. The Boeing Co., No. 14-1991RSL (W.D. Wash. July 29, 2015). The court was swayed by the […]

Continue Reading

Updated USPTO Patent-Eligibility Guidelines Are a Must-Read

The U.S. Patent and Trademark Office recently updated its patentable subject matter guidance.  Anyone involved in making filing decisions and/or preparing and prosecuting software or business methods patent applications would be well advised to consult the new documents.  I did not provide such a recommendation concerning the USPTO’s initial “Interim” post-Alice guidance, issued in December […]

Continue Reading

Stay Granted Based on Inter Partes Review Petition Filed Four Months Before Patent Lawsuit

Judge Gilstrap in the Eastern District of Texas has granted a defendant’s motion for a stay based on institution of an Inter Partes Review (IPR) proceeding.  MemSmart Semiconductor Corp. v. AAC Technologies Pte. Ltd., No. 2:14-CV-1107-JRG (E.D. Texas July 10, 2015).  The defendant was able to present strong facts in support of a stay.  Notably, […]

Continue Reading

Patent-Eligibility at the PTAB in Ex Parte Appeals

Far from finding relief from an examiner’s patent-ineligibility rejection at the Patent Trial and Appeal Board (PTAB), patent applicants may find that ex parte appeals are their undoing.  A recent decision in an appeal filed in 2012, reversing an examiner’s prior art rejections under 35 U.S.C. § 103(a), but setting forth a new ground of […]

Continue Reading

Claims to Online Purchasing Method Not Patent-Eligible

A court has granted summary judgment of invalidity for failure to claim patent-eligible subject matter under 35 U.S.C. § 101 for claims to “[a] method of purchasing goods or services over a data network.”  Source Search Technologies, LLC v. Kayak Software Corp., No. 11-3388 (D. N.J. July 1, 2015). The patent owner conceded that the […]

Continue Reading

Federal Circuit Holds Two Intellectual Ventures Patents Invalid for Claiming Unpatentable Subject Matter

The Federal Circuit has held two patents, owned by the well-known non-practicing entity Intellectual Ventures, invalid under 35 U.S.C. § 101.  Intellectual Ventures I LLC et al. v. Capital One NA, No.2014-1506 (July 6, 2015).  One of these patents was directed to a budgeting application, and the other was directed to tailoring web pages to […]

Continue Reading

Website Navigation Claims Patent-Ineligible, Says Federal Circuit

The Federal Circuit has agreed with a district court that claims of U.S. Patent No. 7,707,505 were directed to “retaining information lost in the navigation of online forms,” and that this subject matter constitutes an unpatentable abstract idea.  Internet Patents Corp. v. Active Network, Inc., Nos. 2014-1048, 2014-1061, 2014-1062, 2014-1063 (Fed. Cir. June 23, 2015).  […]

Continue Reading

Powered by WordPress. Designed by WooThemes