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.” […]
Author Archive | Charles Bieneman
Under Alice, Some Patent-Ineligibility Determinations Are Routine
Here is a patent claim concerning which the Federal Circuit, without comment, agreed was not patent-eligible under 35 U.S.C. § 101 and the Alice test: A method for monitoring and analyzing at least one signal comprising: receiving at least one reference signal to be monitored; creating an abstract of said at least one reference signal […]
Claims Reciting Mental Steps Are Not Patent-Eligible, Says Federal Circuit
In an opinion authored by Judge Chen (joined by Judges Lourie and Moore), the Federal Circuit held claims of three patents to be patent-ineligible under 35 U.S.C. § 101 because “they are directed to the abstract idea of translating a functional description of a logic circuit into a hardware component description of the logic circuit.” […]
Patent Lessons From a Garbage Bag
Perhaps the most challenging aspect of patent preparation and prosecution is describing an invention in terms that are clear enough to show novelty and non-obviousness, while yet preserving sufficiently broad claim scope to capture potential infringers. Here is a lesson from the world of garbage bags, in which the Federal Circuit held that a patentee […]
Another Business Method Patent Falls at the Federal Circuit
A district court properly found that patent claims reciting “detecting improper access of a patient’s protected health information (PHI) in a computer environment” were directed to patent-ineligible subject matter under 35 U.S.C. § 101. Fairwarning IP, LLC v. Iatric Systems, Inc., No 2015-1985 (Fed. Cir., Oct. 11, 2016 (opinion by Judge Stoll, joined by Judges Lourie […]
Patent Claims Found to be Directed to Abstract Idea, but Pass Alice’s “Inventive Concept” Prong
Having found that patent claims were directed to abstract ideas under the first prong of the Alice/Mayo test, a court then found that the claims were patent-eligible under 35 U.S.C. § 101 because the claims recited an inventive concept, satisfying the second prong of the Alice/Mayo test. The court thus denied the defendant’s Rule 12(b)(6) […]
Three-Judge Fed. Cir. Panel Shows How Patent-Eligibility Law Is All Over the Map
A split Federal Circuit panel (Judges Dyk, Mayer, and Stoll) affirmed a district court’s holding that two Intellectual Ventures software patents were patent-ineligible under 35 U.S.C. § 101, while reversing the lower court’s holding that a third patent claimed eligible subject matter under the Mayo/Alice Section 101 test. Intellectual Ventures I LLC v. Symantec Corp., […]
Complaint Dismissed to Uncharted Patent Claims Under Iqbal/Twombley Notice Pleading Standard
For those paying attention to the evolving law of notice pleading patent infringement, a Florida court confirmed that patent plaintiffs face a raised bar under Ashcroft v. Iqbal, 556 U.S. 662 (2009) and Bell Atl. Corp. v. Twombly, 550 U.S. 544 (2007)). The plaintiff, who provided a claim chart alleging a theory that one patent […]
Federal Circuit Reminder that “Comprising” is Open-Ended in Patent Claims
Construing patent a patent claim whose preamble recited an “electrical power distribution plugstrip comprising in combination” a variety of elements listed in the body of the claim, the Federal Circuit overturned a finding of infringement based on a construction that “the claimed invention was limited to a single, fully-integrated device.” Server Technology, Inc. v. American […]
What Is a Party’s Burden in Seeking a Determination of Patent-Ineligibility?
A court denied a patent infringement defendant’s motion to dismiss under FRCP 12(b)(6); the defendant, alleging that four patents were invalid under 35 U.S.C. § 101 for failing to recite patent-eligible matter, failed in its burden of stating a representative claim. JSDQ Mesh Technologies LLC v. Fluidmesh Networks, No. 1-16-cv-00212 (D. Del. Sept. 6, 2016). The […]