Author Archive | Charles Bieneman

Ultramercial Cert. Petition Denied

The Supreme Court has denied the latest petition for certorari in Ultramercial, LLC, et al. v. WildTangent, Inc., thus ending a case that had already taken two trips to the SCOTUS. Last December, the Federal Circuit finally took a hint and held that the claims of Ultramercial’s patent, directed to a method for monetizing Internet […]

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Williamson v. Citrix Online, LLC, and Lessons for Patent Drafting

Williamson v. Citrix Online, LLC, No. 11-CV-2409 (Fed. Cir. June 16, 2015), raises the specter that software patent claims, already oft-challenged in the wake of Alice Corp. v. CLS Bank, could face the additional challenge of being unexpectedly construed as “means-plus-function” claims under 35 U.S.C. § 112(f). (Or, prior to the America Invents Act, “Section 112, […]

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Means-Plus-Function Claims Are Dangerous in Software Patents

The latest example of the danger of drafting software patent claims to include means-plus-function limitations comes from Eon Corp. IP Holdings LLC v. AT&T Mobility LLC, No. 2014-1392 (Fed. Cir. May 6, 2015).  U.S. Patent No. 5,663,757 included eight “means” limitations that the district court had held indefinite under 35 U.S.C. 112.  These limitations required […]

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Software Patent Claims Are Invalid Under 35 U.S.C. § 101 Without Magic (Statutory) Words

A savvy drafter of software patent claims will, to use one of the worst legal cliches, exalt form over substance.  Software in general unquestionably can be patent-eligible even after Alice Corp. v. CLS Bank International.  Undoubtedly, no magic words can promise that a software patent claim will be found patent-eligible under 35 U.S.C. § 101.  […]

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Patent Claims Drawn to Managing Shipping Containers Held Patent-Ineligible

Illustrating that business method patent claims face an uphill battle for patent-eligibility after Alice Corp. Pty. Ltd. v. CLS Bank Int’l., a court has invalidated, under 35 U.S.C. § 101, claims directed to a “container monitoring system for accumulating and storing information on shipping containers including container location and container load status.” Wireless Media Innovations […]

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Patent Claims in Intellectual Ventures Case Held Patent-Eligible Where No Application Without a Computer; Other Claims Held Patent-Ineligible

Considering claims of various patents-in-suit, a court drew a patent-eligibility line at the point where claims could be practiced without a computer, invalidating claims of two patents, but upholding claims of a third, under 35 U.S.C. § 101. Intellectual Ventures I LLC v. Symantec Corp., no 1:10-cv-01067, Intellectual Ventures I LLC v. Trend Micro Inc., […]

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Patent-Eligibility Can Be Deferred Until Claim Construction

Although many courts are often willing to rule on patent-eligibility under 35 U.S.C. § 101 at the pleadings stage, sometimes courts are more comfortable deferring the issue until claim construction. An interesting recent example is Mobile-Plan-It LLC v. Facebook Inc., no. 3:14-cv-01709 (N.D. Cal. April 20, 2015), where patent claims directed to a “method for […]

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DDR Holdings Saves Patent-Eligibility of SMS Messaging Claims

Surviving a patent-eligibility challenge under 35 U.S.C. § 101 were patent claims drawn to a “method of using a computer system to facilitate two-way communication between a mobile device and an Internet server.” Messaging Gateway Solutions LLC v. Amdocs Inc., No. 1:14-cv-00732 (D. Del. April 15, 2015). Accordingly, the court denied defendants’ motions for judgment […]

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The PTAB Can Be Aggressive in Raising Patent-Eligibility Under Alice

Entering a new ground of rejection under 35 U.S.C. § 101, the Patent Trial and Appeal Board, deciding an ex parte appeal, applied Alice Corp. Pty. Ltd. v. CLS Bank Int’l. to hold that claims directed to a system and method for “propagating a media item recommendation” were not patent-eligible. Ex parte Svendsen, Appeal 2012-010845; […]

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