Covered Business Method

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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 in the absence of meaningful legislative history to address how broadly this language should be read.
Continue Reading PTAB Standard for Qualifying CBM Patent Reviews is Now Set

Dollar SignsIf 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 merely “incidental to” a financial product or service, or, must a claim actually require that something be used to practice, administer, or manage a financial product or service? These are central questions currently under consideration at the CAFC in Unwired Planet LLC v. Google Inc., Nos. 15-1810 and 15-1812 (audio recordings). The PTAB found these facts sufficiently supported CBM review.  However, during recent oral arguments on appeal, the judges of the CAFC panel seemed skeptical, focusing on the text of the underlying statute and its implementing rules.
Continue Reading For CBM Standing, Is “Incidental To” a Financial Product or Service Enough?

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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 databases were directed at an abstract idea and recite ineligible subject matter.  Informatica Corp. v. Protegrity Corp., CBM2015-00021, Paper 38, (“Dec”) (PTAB May 31, 2016); Enfish, LLC v. Microsoft Corp., No. 2015-1244, Slip Op. at 11 (Fed. Cir. May 12, 2016). The Board also determined that some of these claims were also unpatentable under Section 103.  Focusing on the Board’s decision regarding Section 101, the Board held: (1) the ’201 patent was a covered business method patent, (2) Section 101 is a proper ground for review for covered business methods patents, and (3) the claims were directed at an abstract idea.
Continue Reading PTAB Concludes Database Patent Claims Are Ineligible under Section 101 Despite Enfish

stamp denied with red text on whiteResponsive 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 May 9, 2016 edition of the USPTO’s “Director’s Forum Blog,” confirms what the public, and certainly the patent bar, has suspected since the AIA created the PTAB to handle IPR, CBM, and PGR Trials: (1) that Patent Owners very rarely filed motions to amend, and (2) motions to amend, when filed, are rarely successful.
Continue Reading Motion(s) to Amend (Almost Always) Denied!

this way_that wayNRT Technology Corporation was not successful in petitioning the PTAB to institute CBM review of U.S. Patent No. 6,081,792, but was successful in moving a district court to dismiss an infringement action concerning the same patent on the basis that the patent claims ineligible (abstract) subject matter. Global Cash Access, Inc. v. NRT Tech. Corp., Case No. 2:15-cv-00822 (D. Nev. Mar. 25, 2016) (Order) (granting motion to dismiss). The apparently inconsistent PTAB and district court dispositions will no doubt encourage accused-infringers/putative-petitioners who do not succeed in initiating AIA (trial) review under a low evidentiary burden to try to invalidate the patent in district court under a higher evidentiary standard. Further, these decisions collectively demonstrate how a PTAB’s institution decision denying AIA review can be, without an appeal, effectively nullified by a parallel or later court proceeding.
Continue Reading No Appellate Review, No Matter: District Court Invalidates Patent After the PTAB Denies CBM Review

Third StrikeThe Federal Circuit has rejected for the third time efforts by the Director of the PTO to preclude appellate review of whether challenged patent claims were properly deemed “covered business methods,” and thereby subject to CBM review.  Previously, in Versata Development Group, Inc. v. SAP America, Inc., the Federal Circuit concluded that its jurisdiction to hear appeals of the PTAB’s final written decisions empowered it to examine if challenged claims qualified for CBM review (we reported here).  In doing so, the Federal Circuit rejected contrary arguments of the Director who intervened on appeal. 
Continue Reading Called Third Strike, Is the PTO Director Out? Federal Circuit Rejects

On January 5, a district court denied defendant Westlake Services, LLC’s Motion for recovery of costs related to CBM petitions that invalidated certain of the patent claims asserted in the pending litigation and prompted plaintiff to voluntarily dismiss the district court case. Credit Acceptance Corp. v. Westlake Services, LLC, Case 13cv01523 (C.D. Cal. January 5, 2016). The court’s decision was governed by the language of the local rules identifying taxable costs. Because the local rules provided only recovery for “filing fees paid to the Clerk” and not filing fees paid to other entities, the request to recover the filing fees of $73,200 paid to the USPTO as part of the CBM Proceedings was denied.
Continue Reading District Court Denies Recovery of PTAB Costs in Non-Exceptional Case

Apple 2Six days after issuing a final decision holding the claims of U.S. Patent No. 7,711,100 unpatentable under 35 U.S.C. § 101 in a first CBM review, Square, Inc. v. Unwired Planet, LLC, CBM2014-00156, (PTAB Dec. 22, 2015), the PTAB issued a decision denying institution in a second CBM Petition filed by the same Petitioner for the same patent, determining that the petitioner was estopped under 35 U.S.C. § 325(e)(1) from raising the grounds of the second petition, based on a later-identified, prior-art patent and later-obtained declaration evidence, because the later-identified prior art could have been discovered earlier and because it was foreseeable that the additional declaration evidence would have been needed in the first case. Square, Inc. v. Unwired Planet, LLC, CBM2015-00148, Paper 14 (PTAB Dec. 28, 2015).
Continue Reading Estoppel Applied in Second CBM to Later-Obtained Patent and Evidence

Getting LuckyIn SightSound Techs., LLC v. Apple Inc., Appeal Nos. 2015-1159, -1160 (Fed. Cir. Dec. 15, 2015), the Federal Circuit affirmed the PTAB’s final written decisions in two CBM patent review proceedings that canceled claims in SightSound’s patents as being obvious over prior art (referred to as the CompuSonics publications), even though Apple did not present that specific challenge in its petitions. The Federal Circuit’s decision is important because it shows that the court will not review a PTAB decision to institute an AIA trial on a ground the petitioner did not present.
Continue Reading Federal Circuit Affirms PTAB’s Victory on Invalidity Ground the Petition Did Not Even Present

RoseShakespeare’s Juliet famously observes, “What’s in a name? That which we call a rose by any other name would smell as sweet.”  The PTAB begs to differ. While a generic computing device may not render abstract claims patentable, introduce it with a fancy nom de guerre and you have got yourself patentable subject matter.
Continue Reading PTAB to Shakespeare: “ ‘What’s in a Name?’ Are you Kidding? Everything!”

Resources & Info

Arthrex and the Supreme Court Resource Center

In United States v. Arthrex, Inc., the Supreme Court has heard whether 125+ PTAB decisions rendered through October 2019 must be remanded for new decisions. Read about how that issue developed through our post.

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Our Team

PTABWatch, provided by Marshall, Gerstein & Borun LLP, analyzes and reports recent developments concerning Post-Grant Proceedings at the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (USPTO), including Inter Partes Review (IPR), Post Grant Review (PGR), and Covered Business Method (CBM) proceedings.