In Unwired Planet, LLC v. Google Inc., 841 F.3d 1346 (Fed. Cir. 2016) (discussed here), the Federal Circuit determined that the PTAB was using an overly-broad standard for CBM eligibility. Specifically, the PTAB was administering CBM review of patents if they included claims directed to activities that are “incidental to” or “complementary to” a financial activity. The court determined the PTAB’s standard was too broad and that only patents with claims directed to a financial product or service are eligible for CBM review. In Apple Inc. v. ContentGuard Holdings, Inc., the Federal Circuit vacated the PTAB’s final written decision in a CBM case decided before Unwired Planet because the PTAB applied the overly-broad standard, and remanded the case for the PTAB to evaluate eligibility for CBM review under the proper standard.

The petitioners Apple Inc. and Google Inc. (also a petitioner in Unwired Planet) requested review of ContentGuard’s patent directed to digital rights management (DRM) systems. These systems allow content owners to control use of their digital works, such as by preventing users from making unauthorized copies or requiring users to pay a fee before accessing the content. The PTAB determined that the patent was eligible for CBM review because the claimed methods for transferring rights may require payment of a fee. In its final decision, the PTAB canceled the challenged claims, and granted the Patent Owner’s motion to amend claims.

But after the PTAB’s decision in this case and while the appeal was pending, the court determined in Unwired Planet that the mere possibility that a patent can be used in financial transactions is not sufficient to make it a CBM patent. The court remanded the case because on the record it was unable to discern whether the PTAB would have concluded that the challenged patent was CBM eligible under the proper standard.