Covered Business Method

Subscribe to Covered Business Method RSS Feed

Federal Circuit Finds Lack of Enablement in Prior Art Reference

By William (Bill) J. Samore on Posted in Appeals, Covered Business Method, Inter Partes Review, IPR, Sections 102/103
In Raytheon Technologies v. General Electric Corp., Appeal 2020-1755, (Fed. Cir. April 16, 2021), the Federal Circuit reversed a PTAB inter partes review decision that determined Raytheon’s claims, directed to gas turbine engines, are unpatentable as obviousness over “Knip,” a 1987 NASA technical memo.  In particular, the court determined that Knip did not enable a … Continue Reading

Supreme Court to Review the Arthrex Decision

By Sandip H. Patel on Posted in Appeals, CBM, Covered Business Method, Inter Partes Review, IPR, Post Grant Review
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 … Continue Reading

The Arthrex Mulligan

By Sandip H. Patel on Posted in Covered Business Method, Inter Partes Review, IPR, Post Grant Review, Stays, Trial Procedures
The Federal Circuit, in Arthrex, concluded that the Patent and Trial Appeal Board’s Administrative Patent Judges were unconstitutionally appointed “principal” officers. The court therefore vacated the Board’s decision that canceled claims in an inter partes review and remanded so a new panel of APJs would re-decide the patentability of the claims. What happens, however, when … Continue Reading

Designating Specific Storage Location for Ad Data Not Enough for Patentability

By Tiffany D. Gehrke on Posted in CBM, Covered Business Method, Section 101
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 … Continue Reading

A Fine Mess

By Sandip H. Patel on Posted in Covered Business Method, Inter Partes Review, IPR, Post Grant Review, Trial Procedures
Update (Apr. 3, 2020): The Federal Circuit recently denied rehearing petitions in the Polaris appeals referenced below (see link and link), and also denied the PTO’s request to stay the mandate in the Arthrex appeal (see link). The Federal Circuit recently issued an order denying multiple rehearing petitions in Arthrex Inc. v. Smith & Nephew, … Continue Reading

Haste Makes Waste?

By Sandip H. Patel on Posted in Appeals, Covered Business Method, Inter Partes Review, Interferences
If the Federal Circuit’s decision in Arthrex wasn’t sufficiently newsworthy, then look at what lurks in its wake. The day after the decision, the court issued precedential orders indicating that a timely Constitutional challenge apparently must be presented to the court in an opening brief. A few days after those orders, two of the court’s … Continue Reading

Fixing an Appointments Clause Violation

By Sandip H. Patel on Posted in Covered Business Method, Inter Partes Review, IPR, Post Grant Review, Trial Procedures
In Arthrex Inc. v. Smith & Nephew, Inc., Appeal 2018-2140 (Fed. Cir. Oct. 31, 2019), the Federal Circuit concluded that the PTAB’s Administrative Patent Judges (APJs) are “principal” officers and their appointment by the Secretary of Commerce therefore violates the Constitution’s Appointments Clause. The issue arose in an appeal of a decision by a panel … Continue Reading

Trial Practice Guide Updates and Future Fee Increases

By Sandip H. Patel on Posted in Covered Business Method, Inter Partes Review, IPR, Post Grant Review, Trial Procedures
Today’s Federal Register includes a notice that the Patent Office updated its August 2012 Trial Practice Guide. The Federal Circuit recently noted that the Practice Guide “is a thoughtful and useful resource to which individual Board members and the public might turn for guidance,” but “is not binding on Board panel members.” Application in Internet … Continue Reading

CBM Case Remanded to Determine if Claims are CBM Eligible under Unwired Planet

By Michael R. Weiner on Posted in Covered Business Method
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.… Continue Reading

Patent Office Proposes to Jettison BRI in AIA Trials

By Sandip H. Patel on Posted in Covered Business Method, Inter Partes Review, Post Grant Review, Trial Procedures
The Patent Office today issued a press release of its notice of proposed rulemaking that would replace the broadest reasonable interpretation standard the Patent Trial and Appeal Board applies to construe unexpired patent claims and proposed substitute (amended) claims in AIA trial proceedings with the Phillips standard applied in patent cases before federal district courts … Continue Reading

Supreme Court Decides that IPR Final Decisions Must Address All Challenged Claims

By Sandip H. Patel and Michael R. Weiner on Posted in Covered Business Method, Estoppel, Institution / Denial, Inter Partes Review, IPR, Post Grant Review, Trial Procedures
On April 24, 2018, the Supreme Court issued its decision in SAS Institute, Inc. v. Iancu, holding that if the Patent Office institutes an inter partes review (IPR) proceeding, it must issue a final written decision with respect to the patentability of every patent claim challenged by the petitioner. The Court reversed the Federal Circuit’s … Continue Reading

The United States Can Have Standing in AIA Proceedings

By Ryan N. Phelan on Posted in Appeals, Covered Business Method, Inter Partes Review, IPR, Section 101, Trial Procedures
Update: On June 10, 2019, the Supreme Court issued a decision, 6-3, reversing the Federal Circuit’s judgment and remanding the case for further proceedings. The Court held that “a federal agency is not a ‘person’ who may petition for post-issuance review under the AIA.” On August 9, 2019, the Federal Circuit issued an order vacating … Continue Reading

PTAB Should Have Canceled All Challenged Claims in CBM Reviews

By Lynn L. Janulis, Ph.D. on Posted in Appeals, Claim Construction, Covered Business Method, Post Grant Review, Section 101
In Apple, Inc. v. Ameranth, Inc. (Fed. Cir. 2016), the Federal Circuit reviewed the final written decisions in CBM reviews of three related patents owned by Ameranth, Inc., directed to computerized systems for generating and displaying menus for use in the restaurant industry.  The court determined that the PTAB properly construed all disputed claim terms, … Continue Reading

Guidance on Requesting Motions for Sanctions

By Sharon M. Sintich, Ph.D. on Posted in Covered Business Method, Discovery, Inter Partes Review, IPR, Real Party-in-Interest, Trial Procedures
On November 10, 2016, the Intellectual Property Owners Association (IPO) hosted a panel discussion entitled Ethics in AIA Post-Grant Proceedings at the PTAB with the Honorable Thomas Giannetti, Lead Administrative Patent Judge of the PTAB. The main topic of the discussion was guidance on motions for sanctions.  The rules relating to trial practice before the … Continue Reading

Proposed Rule to Recognize Patent Agent Privilege in PTAB Proceedings

By Jennifer Burnette on Posted in Covered Business Method, Discovery, Inter Partes Review, IPR, Post Grant Review
In its Notice of Proposed Rulemaking published on October 18, 2016, the USPTO proposes to amend the rules of practice before the PTAB to “recognize that, in connection with discovery conducted in certain proceedings at the [USPTO], communications between U.S. patent agents or foreign patent practitioners and their clients are privileged to the same extent … Continue Reading

Patent Office Proposes to Increase AIA Trial Fees

By Sandip H. Patel on Posted in Covered Business Method, Inter Partes Review, IPR, Post Grant Review
In the October 3, 2016, Federal Register, the Patent Office published a notice of proposed rulemaking to adjust various fees the Office charges for its services, including 18% to 56% increases for AIA trial fees (as shown below). According to the notice, the Patent Trial and Appeal Board has received more than 4,700 AIA trial … Continue Reading

PTAB Finds Motivation to Combine References, but Cancellation Comes Too Late for More than 200 Defendants

By Thomas L. Duston on Posted in Covered Business Method, Sections 102/103
On July 6, 2016, the PTAB cancelled claims in a patent which had bedeviled more than 250 named defendants in litigation dating back to 2008.  The list of defendants reads like a Who’s Who of financial and commercial businesses, including the nation’s most prominent banks, credit card companies, online stock traders, e-Commerce retailers, cable and … Continue Reading

“It’s a Bird, It’s a Plane, NO it’s a Granted Motion to Amend.”

By Ryan J. Schermerhorn on Posted in Amendments, Claim Construction, Covered Business Method, Inter Partes Review, Post Grant Review, Sections 102/103
We previously reported the May 9, 2016, Patent Office’s study that the PTAB rarely grants motions to amend.  There, we explained that patent owners rarely file motions to amend and, even when such motions are filed, the PTAB rarely grants such motions. Last week, in Google Inc. and Apple Inc., v. ContentGuard Holdings, Inc., Case … Continue Reading

PTAB Standard for Qualifying CBM Patent Reviews is Now Set

By Thomas I. Ross on Posted in Covered Business Method
The AIA provides for the post-grant review of “covered business method patents,” which are defined as: a patent that claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service. AIA §18(d)(1). The PTAB was left to its own devices … Continue Reading

For CBM Standing, Is “Incidental To” a Financial Product or Service Enough?

By Marshall Gerstein on Posted in Covered Business Method, Institution / Denial
If a patented mobile phone app can locate a nearby ATM machine, are the claims of that patent subject to CBM review because ATMs are used in financial transactions? What if the claim could cover a business entity that, incidentally, might also push advertisements to a mobile phone? Is it enough that a claim is … Continue Reading

PTAB Concludes Database Patent Claims Are Ineligible under Section 101 Despite Enfish

By Tiffany D. Gehrke on Posted in Covered Business Method, Section 101
Notwithstanding the Federal Circuit’s Enfish warning that “we do not read Alice to broadly hold that all improvements in computer-related technology are inherently abstract,” in Informatica Corp. v. Protegrity Corp., the PTAB cancelled claims 1-8 and 18-53 of U.S. Patent No. 6,321,201 under Section 101 because the claims relating to a data security system for … Continue Reading

Motion(s) to Amend (Almost Always) Denied!

By Ryan J. Schermerhorn on Posted in Covered Business Method, Inter Partes Review, Post Grant Review, Trial Procedures
Responsive to public interest in whether it is too difficult for Patent Owners to amend claims during PTAB Trials, the Patent Office recently published a study providing aggregate data about motions to amend filed with the PTAB since its inception in 2013.  The study, which was published by PTAB Chief Judge Nathan Kelly in the … Continue Reading
LexBlog