In cxLoyalty, Inc. v. Maritz Holdings Inc., Appeals 2020-1307, -1309 (Fed. Cir. Feb. 8, 2021), the Federal Circuit affirmed a PTAB final written decision in a CBM proceeding canceling Maritz’s original claims related to a GUI for a customer loyalty program, as ineligible for patenting under 35 U.S.C. § 101. The PTAB had granted Maritz’s request to substitute amended claims, but the court reversed, concluding those claims also are ineligible under section 101.
Continue Reading Federal Circuit Finds Loyalty Rewards Claims Ineligible
Supreme Court to Review the Arthrex Decision
The Supreme Court issued an order on October 13, 2020, granting and consolidating three certiorari petitions seeking review of the Federal Circuit’s judgment in Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320 (Fed. Cir. 2019), reh’g denied, 953 F.3d 760 (Fed. Cir. 2020). We discussed the Federal Circuit’s judgment here and its decision denying rehearing here. The Supreme Court, at the government’s recommendation, asks the parties to address the following two questions.
Continue Reading Supreme Court to Review the Arthrex Decision
Designating Specific Storage Location for Ad Data Not Enough for Patentability
In Customedia Techs. v. Dish Network Corp., No. 18-2239, the Federal Circuit affirmed a pair of PTAB judgments in CBM reviews canceling claims directed to the use of “a computer to deliver targeted advertising to a user” as ineligible under 35 U.S.C. § 101. More specifically, the claims recite reserving memory for advertising data in a data management system audio-visual processor recorder, like a set-top cable box. The court said that these claims recite nothing more than “an improvement to the abstract concept of targeted advertisement” with the aid of “generic computer components.”
Continue Reading Designating Specific Storage Location for Ad Data Not Enough for Patentability
PTAB says 58% of Patents Survive Post-grant Proceedings Unchanged
On October 24, 2017, the PTAB held its inaugural “Chat with the Chief” webinar. The main topic of the webinar was to discuss multiple petitions filed against the same patent. The PTAB sought to address concerns that have been raised by patent owners that challengers just keep filing petitions until something sticks, and that petitioners presenting multiple petitions unfairly gain an advantage by obtaining information from the Patent Owner’s response to the first petition or the Board’s Institution Decision that help provide a roadmap for the subsequent petition. The PTAB presents results from an internal study that appears intended to alleviate these concerns.
Continue Reading PTAB says 58% of Patents Survive Post-grant Proceedings Unchanged
CBM Eligibility: Patent Must Have a Claim that Contains, However Phrased, a Financial Activity Element
Update: The Federal Circuit’s decision in this case was vacated as moot, on the basis that the challenged claims had been canceled in a separate IPR proceeding. PNC Bank Nat’l Assoc. v. Secure Axcess, LLC, 138 S. Ct. 1982 (2018).
A patent that is merely incidental to a financial activity is not sufficient to render that patent eligible for CBM review. Secure Access, LLC v. PNC Bank National Association et. al, Case No. 2016-1353 (Fed. Cir. Feb. 21, 2017). In Secure Access, the Federal Circuit reversed and vacated the PTAB’s decision that U.S. Patent No. 7,631,191 (“the ’191 patent) is a CBM patent. The Board had concluded that the method and apparatus claimed by the ’191 patent “perform operations used in the practice, administration, or management of a financial product or services and are incidental to a financial activity.” (Op. at 18). The Court concluded that the Board had improperly broadened the scope of the statute that defines a CBM patent, and that under proper scope, the ’191 patent is not a CBM patent.
Continue Reading CBM Eligibility: Patent Must Have a Claim that Contains, However Phrased, a Financial Activity Element