The transitional program for covered business method (CBM) patents is a review proceeding administered by the Patent Trial and Appeal Board to reconsider the patentability of one or more claims in a CBM patent. Petitioners seeking CBM review have enjoyed good success in knocking out claims for reciting subject matter ineligible for a patent. They have not, however, enjoyed similar success when challenging claims under 35 USC § 112 (concerning clarity, enablement, or written description).
To date, the Board has considered institution of 106 challenges under Section 112, but has granted institution in only 29. In no instance has the Board instituted CBM review on the basis of an enablement challenge, although it has been presented with 13 such challenges. So, what has happened in the 29 instituted challenges based on Section 112?
- 15 Challenges are pending and awaiting a final written decision.
- 2 Proceedings settled before a final written decision.
- 4 Final written decisions confirmed patentability despite written description (2) or clarity (2) challenges.
- 7 Final written decisions canceled claims as lacking written description.
- 1 Final written decision canceled claims as lacking clarity.
While a written description challenge has had limited success, a clarity challenge has had more limited success, and an enablement challenge has—thus far—had no success in CBM proceedings.
Each case is highly fact specific, but those contemplating a Section 112 challenge in a CBM review should understand that, thus far, only about 25% of such challenges resulted in CBM-review institution. When a Section 112 challenge was instituted, only 33% of final written decisions canceled the claims on the basis of that challenge. While a written description challenge has had limited success, a clarity challenge has had more limited success, and an enablement challenge has—thus far—had no success.
Using these statistics as a guide, putative CBM petitioners are better off expending resources attacking CBM patents on the bases of eligibility and, optionally, printed prior art, rather than on Section 112 issues.