The Federal Circuit has affirmed the USPTO’s rejection of an applicant’s claims that it concluded “cover only the abstract idea of rules for playing a wagering game and use conventional steps of shuffling and dealing a standard deck of cards.” In re Smith, No. 2015-1664 (Fed. Cir. March 10, 2016) (opinion by Judge Stoll, joined […]
Author Archive | Charles Bieneman
When Is a Document on the Internet a “Printed Publication?”
Addressing an issue with which patent litigators and prosecutors alike regularly grapple, the Federal Circuit recently held that a graduate student’s report, provided on her personal web page, was not a “printed publication” under 35 U.S.C. § 102(b) (pre-America Invents Act). Blue Calypso, LLC. V. Groupon, Inc., Nos. 2015-1391, 2015-1393, 2015-1394 (Fed. Cir. March 1, […]
When Is a Patent Claim Indefinite for Encompassing Two Statutory Classes of Invention (e.g., System and Method)?
Patent claims can recite the functionality of a system or apparatus without being indefinite under 35 U.S.C. § 112 for encompassing two statutory classes (e.g., system and method), the Federal Circuit has explained in UltimatePointer, LLC v. Nintendo Co., Ltd., No 2015-1297 (Fed. Cir. March 1, 2016). Thus, the three-judge panel (Judge Lourie wrote for […]
Federal Circuit Lesson on the Written Description Requirement
The Federal Circuit upheld the invalidity of claims of U.S. Patent No. 7,003,500 under 35 U.S.C. § 112, 1st paragraph (pre-America Invents Act) for failure to provide an adequate written description of patent claim terms added by amendment well after the original patent application was filed. Driessen v. Sony Music Entertainment, No. 2015-2050 (Fed. Cir. […]
Virtual Classroom Claims Not Indefinite Under 35 U.S.C. § 112 Are Patent-Ineligible Under Alice
After a remand from the Federal Circuit decision nixing one independent claim of US patent no. 6,155,840 under 35 U.S.C. § 112, the district court has now held remaining independent claims patent-ineligible under 35 U.S.C. § 101. Williamson v. Citrix Online, LLC, No. CV 11-02409 SJO (JEMx) (C.D. Cal. Feb 17, 2016). All of the […]
Federal Circuit Easily Affirms Patent-Ineligibility of Claims Drawn to Managing Shipping Containers
Like drilling a small hole in the hull of the Titanic (post-iceberg), the Federal Circuit has affirmed a district court’s judgment on the pleadings of patent-ineligibility of 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 LLC v. Maher […]
PTAB Denies Petition for CBM Review of Patent Directed to ATM Banking Transactions: a Portent for Patent-Eligibility of Business Methods? (Maybe Not)
By Charles Bieneman on January 31, 2016 in America Invents Act, Covered Business Method Patent Review, Patentable Subject Matter
The USPTO’s Patent Trial and Appeal Board (PTAB) has denied a petition for Covered Business Method (CBM) Review of U.S. Patent No. 6,081,792, whose claims recite methods of “providing money or an item of value to an account-holder” and “paying on behalf of a person for money or an item of value, from an account […]
Alice Was a Game-Changer, Federal Circuit Affirms
The Supreme Court’s decision in Alice Corp. Pty., Ltd. v. CLS Bank Int’l. did indeed change the scope of patent-eligibility under 35 U.S.C. § 101, the Federal Circuit explained – just in case anyone in the patent community had any doubts – in Mortgage Grader, Inc. v. First Choice Loan Services Inc., No. 2015-1415 (Fed. […]
Section 101 Analysis Under Alice Reaches Different Results in Different Texas Districts
Courts in the Eastern and Western Districts of Texas have recently reached decisions that demonstrate the different results that different courts can reach when analyzing patent-eligibility under 35 U.S.C. § 101 in the wake of Alice Corp. v. CLS Bank. Summary judgement of invalidity under 35 U.S.C. 101 was denied on claims of U.S. 6,772,210 […]
Federal Circuit Demonstrates an Alice No-Brainer
In a one-word per curiam order two days after oral argument, the Federal Circuit affirmed, on grounds of patent-ineligibility under 35 U.S.C. § 101, the Rule 12(b)(6) dismissal of a lawsuit alleging infringement of patent claims directed to game scoring and processing Internet transactions. Priceplay.com, Inc. v. AOL Advertising, Inc., Nos. 2015-1492, 2015-1589, 2015-1660 (Fed. Cir. […]