As reported earlier, the Federal Circuit recently affirmed the PTAB’s final written decision in SAP v. Versata, No. 2014-1194 (Fed. Cir. 2015), its first final written decision in a CBM review. As part of that decision, the Court determined that it had jurisdiction to determine whether the patent at issue was a “covered business method patent” within scope of the PTAB’s authority for a CBM review under Section 18 of the American Invents Act (“AIA”), and that such review by the Court was not precluded by 35 U.S.C. § 324(e), which provides that a decision to institute a CBM review is “final and nonappealable.”
Continue Reading Dissent in SAP v. Versata: Federal Circuit Lacks Authority to Review

Win or Draw or LoseThe Federal Circuit recently issued its opinion deciding SAP v. Versata, an appeal of the first PTAB final written decision in a post grant AIA trial. The court’s opinion (split on one issue) is significant because it decides a number of issues that will guide pending and future AIA trials, especially CBM proceedings. Below is a short summary of who—patent owners or petitioners—can claim victory in the court’s five major conclusions. 
Continue Reading Who Benefits from the Federal Circuit’s SAP v. Versata Decision?

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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

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In Unwired Planet, LLC v. Google Inc., the Federal Circuit vacated the PTAB’s final decision in a CBM review because the PTAB had applied an overly broad standard to determine that the challenged claims were directed to a “financial product or service” subject to CBM review, and remanded the case for evaluation under the proper standard.

Google had filed a petition for CBM review of Unwired’s patent entitled “Method and System for Managing Location Information for Wireless Communications,” and in particular, claims directed to methods of limiting access to location information for wireless communication devices. According to Google, the patent is eligible for CBM review, and it notes that the specification discusses using the claimed methods to facilitate advertising, which would facilitate financial activity.
Continue Reading Federal Circuit Limits Scope of CBM Reviews

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The Federal Circuit continues to declare aspects of the PTAB’s work to be beyond its review.  Most recently, in Husky Injection Molding Systems Ltd., v. Athena Automation Ltd., Case Nos. 2015-1726, 2015-1727 (Fed. Cir. Sept. 23, 2016), the Federal Circuit, in a 2-1 decision, concluded that it lacked authority to question the PTAB’s refusal to extend the equitable doctrine of assignor estoppel to PTAB proceedings. We previously reported on the Federal Circuit’s opinion regarding the merits of the PTAB’s Final Decision invalidating the Husky patent. The following discussion instead focuses on those aspects of the Federal Circuit’s opinion concerning appellate review of the Board’s decision to institute review.
Continue Reading Federal Circuit Declares Unreviewable PTAB’s Refusal to Apply Assignor Estoppel

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

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

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