About Charles Bieneman

Author Archive | Charles Bieneman

PTAB Finding of Invalidity Does Not Trump Federal Court’s Final Judgment

The Covered Business Method Patent review procedure created by the America Invents Act may be a powerful tool for attacking business method patents, but CBM cannot overcome all court proceedings, at least if Versata Software, Inc. v. SAP America, Inc., No. 2:07cv153-RSP (April 21, 2014), is any guide.  In this case, Magistrate Judge Payne held […]

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Financial Business Method Claims Held Not Patent-Eligible (and Invalid for Indefiniteness)

The clear trend of district courts invalidating business method patent claims has continued in Intellectual Ventures I, LLC v. Capital One Financial Corp., No. 1:13-cv-00740 (E.D. Va. April 16, 2014).  Further, the court provided some lessons for claim drafters in holding claims of one patent invalid for indefiniteness under 35 U.S.C § 112. Intellectual Ventures […]

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Abandonment of Android Trademark Makes Google the Senior User

After the owner of a registration for the “Android Data” trademark alleged that Google infringed the mark, the Seventh Circuit has affirmed the district court’s entry of summary judgment, based on a finding that the “Android Data” mark had been abandoned.  Specht v. Google, Inc., No. 11-3317 (7th Cir. April 4, 2014). Erich Specht’s application […]

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Customer Suits Alone Do Not Confer Declaratory Judgment Jurisdiction

DataTern, Inc. sued Microsoft’s and SAP’s customers alleging infringement of U.S. Patent Nos. 5,937,402 and 6,101,502.  Microsoft and SAP then brought actions against DataTern seeking declaratory judgments of non-infringement.  The Federal Circuit affirmed the district court’s finding that it had jurisdiction over all claims except Microsoft’s claims against the ’402 patent, because DataTern’s claim charts […]

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Fee Award Under 35 U.S.C. § 285 Supported by Evidence of Subjective Bad Faith and Objective Baselessness

Awards of attorneys fees under 35 U.S.C § 285 may seem difficult to obtain, given the dual requirement of proving a party’s subjective bad faith, as well as the objective baselessness of its position.  However, as demonstrated in Gabriel Technologies Corp. v.  Qualcomm Inc., No. 2013-1205 (Mar. 18, 2014), some conduct is so egregious that […]

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FRCP 12 and 35 U.S.C. § 101

Three recent district court cases illustrate the viability, and the limitations, of bringing a motion to dismiss and/or for judgment on the pleadings, under Federal Rule of Civil Procedure 12, based on a failure of patent claims to define eligible subject matter under 35 U.S.C § 101.  In each of these cases, courts considered the […]

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Federal Circuit Reverses Software System Patent Claim Construction

In an opinion authored by Chief Judge Rader, and joined by Judges Dyk and Taranto, the Federal Circuit has reversed and vacated a summary judgment of non-infringement in favor of Google, finding that the district court based its finding of non-infringement on an erroneous claim construction.  Vederi, LLC v. Google, Inc., No. 13-1057 (Fed. Cir. […]

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Knowledge Not Enough for Induced Patent Infringement

A retailer’s Rule 12(b)(6) motion to dismiss a claim of induced patent infringement has been granted where the only allegation of intent to induce infringement rested on the retailer’s alleged knowledge that the product’s user manual instructed customers to perform infringing acts.  Tierra Intelectual Borinquen, Inc. v. ASUS Computer Int’l, Inc., No. 2:13-CV-38-JRG (E.D. Texas […]

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Is Section 101 Patent Eligibility Determined By Claim Breadth?

A Federal Circuit panel has held invalid, for not reciting patent-eligible subject matter under 35 U.S.C. § 101, patent claims directed to separating telephone transaction data into component parts, and storing it at different destinations.  CyberFone Sys., LLC v. CNN Interactive Group, Inc., Nos. 2012-1673, 2012-1674 (Fed. Cir., Feb. 26, 2014).  An opinion authored by […]

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Common Meaning Given to Claim Language Using Terms of Art

A question of infringement turned on the meaning of “gateway” in the phrase “intelligent gateway” in a patent claim.  The Federal Circuit agreed that a district court was entitled to consult technical dictionaries and use commonly understood meanings of the word to construe the claim.  Accordingly, the court affirmed the district court’s claim construction, and […]

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