Author Archive | Charles Bieneman

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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“Covered Business Method” Is Not Anything Under the Sun, Says Federal Circuit

Claims directed to “managing distribution of location information generated for wireless communications devices,” do not recited a “covered business method” within the meaning of the America Invents Act, said the Federal Circuit in Unwired Planet, LLC v. Google, Inc., No. 2015-1812 (Fed. Cir. Nov. 21, 2016).  The court thus remanded the case to the Patent […]

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Automated Migration of Computer Settings Not Patent-Eligible, Says Federal Circuit

In a non-precedential decision that appears to have been fairly easily reached, a Federal Circuit panel affirmed a district court’s summary judgment of invalidity under 35 U.S.C. § 101 for patent claims directed to migrating computer configuration settings.  Tranxition, Inc. v. Lenovo (United States) Inc., Nos. 20151907, 20151941, 20151958 (Fed. Cir. Nov. 16, 2016) (opinion […]

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Willful Patent Infringement and Opinions after Halo

As my partner Tom Bejin discussed in this recent webinar, Addressing Willful Patent Infringement Post-Halo, the pendulum governing standards for enhanced damages for patent infringement under 35 U.S.C. § 284 gyrated again when the U.S. Supreme Court decided Halo Electronics, Inc. v. Pulse Electronics, 136 S. Ct. 1923 (2016).  The Supreme Court rejected the two-part […]

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When Can Patent-Eligibility Be Decided on the Pleadings?

Defendants often urge courts to conclude that claim construction is not a prerequisite for deciding patent-eligibility on a defendant’s Rule 12 motion to dismiss. Here is a case in which a magistrate judge reached this conclusion but nonetheless recommended denying the defendants’ motion (without prejudice).  Kaavo, Inc. v. Amazon.com Inc., Nos. 15-638-LPS-CJB, 15-640-LPS-CJB (D. Del. […]

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Divided Infringement Means No Patent Infringement, Says Judge Gilstrap

Claims to a computer system for providing users with location information about an object were not directly infringed where the claims recited a step of user input not under the direction or control of the party requesting and receiving the input.  Accordingly, the court granted a motion for summary judgment of noninfringement of these claims.  […]

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Split Fed. Cir. Panel Bases Patent-Eligibility of Network Management Claims on Claim Construction

Co-authored by Mark St. Amour. How much does claim construction matter when determining patent-eligibility under 35 USC § 101? In Amdocs Ltd. V. Openet Telecom, Inc., (Fed. Cir. Nov. 1, 2016) a split Federal Circuit panel reversed a district court decision holding claims of four patents invalid under 35 U.S.C. § 101 as directed to […]

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How to Address Broadest Reasonable Interpretation in Ex Parte Patent Prosecution

Patent examiners often apply seemingly irrelevant prior art with the blithe statement that a claim rejection is justified by a broadest reasonable interpretation of claim terms.  I offer some tips on combating examiner abuses of broadest reasonable interpretation in this presentation, and in the accompanying paper, presented to the AIPLA’s Patent Law Committee at this […]

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Reconsidered After Recent Fed. Cir. Case, Vehicle Tracking/Monitoring Claims Mostly Patent-Eligible

After the Federal Circuit’s August 1, 2016, decision in Electric Power Group, LLC v. Alstom S.A., a defendant sought reconsideration of a Rule 12 motion to dismiss based on alleged patent-ineligibility of claims directed to “machine-to-machine communication platforms designed for tracking and monitoring the location and status of widely dispersed fleet vehicles and related mobile assets.” […]

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