Tag Archives: Business Method Patent / CBM

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

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

PTAB Standard for Qualifying CBM Patent Reviews is Now Set

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?

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

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!

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

No Appellate Review, No Matter: District Court Invalidates Patent After the PTAB Denies CBM Review

NRT 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., … Continue Reading

Called Third Strike, Is the PTO Director Out? Federal Circuit Again Rejects Intervenor’s Argument that it Lacks Jurisdiction to Review Qualifications for CBM Review

The 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 … Continue Reading

Supreme Court to Kill Golden Goose? Court Announces It Will Review Use of Broadest Reasonable Construction in IPR Proceedings

On January 15, 2016, the United States Supreme Court agreed to consider whether it is appropriate to give claims challenged in inter partes  review their “broadest reasonable construction.”  See Cuozzo Speed Tech., LLC v. Lee.  Given the Federal Circuit’s dismal recent track record when the Supreme Court has injected itself into disputed patent issues, practitioners … Continue Reading

District Court Denies Recovery of PTAB Costs in Non-Exceptional Case

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, … Continue Reading

Estoppel Applied in Second CBM to Later-Obtained Patent and Evidence

Six 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 … Continue Reading

Federal Circuit Affirms PTAB’s Victory on Invalidity Ground the Petition Did Not Even Present

In 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 … Continue Reading

PTAB to Shakespeare: “ ‘What’s in a Name?’ Are you Kidding? Everything!”

Shakespeare’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 Refuses to Terminate AIA Trial Despite Applying the Estoppel Provision to Dismiss the Petitioner

The PTAB recently issued an order applying the estoppel provision of the AIA (35 U.S.C. § 325(e)(1)) to dismiss a petitioner from covered business method (CBM) patent review proceedings a few days before a consolidated final hearing. Apple Inc. v. Smartflash LLC, CBM2015-00015, Paper 49 (PTAB Nov. 4, 2015) (common order involving CBM2015-00016 and CBM2015-00018). … Continue Reading

A 200% Increase in Appeals of Patent Office Decisions to the Federal Circuit

In August of 2012, the Federal Register published the Patent Office’s estimate of the number of AIA trial petitions the Office then expected to receive in each of the three succeeding fiscal years (each such year ends September 30). In October of 2015, the Patent Office published a report of the number of trial petitions … Continue Reading

How I Learned to Stop Worrying and Love the Bomb: Response to IPO Panel on PTAB Proceedings

Recently, in the pages of this blog, we reported on the dire predictions made at the IPO Annual Meeting here in Chicago of the “end of days” for patents.  The purported culprits?  The PTAB and the America Invents Act’s newly enacted Inter Partes Review and Covered Business Method Review.  “Well, allow me to retort,” to … Continue Reading

PTO Requests Congress Change AIA Proceedings

As required by the Leahy-Smith America Invents Act, the PTO issued a report to Congress in September  summarizing implementation of the AIA  in the four years since the Act went into effect. The report  proposes recommended changes to the law that the PTO would like to see enacted. A full copy of the report is … Continue Reading

IPO Annual Meeting Panel Spars Over Fairness of Current IPR System

Welcome to all of you who are new readers joining us from the IPO Annual Meeting (#IPOAM15). I hope that your time in Chicago was enjoyable and that you will add us to your RSS feeds or bookmark the blog and return often. For those who were unable to attend, the Tuesday panel titled “Post … Continue Reading

Federal Circuit Affirms Seven CBM Decisions

In a non-precedential decision issued on August 24, 2015, the Federal Circuit affirmed the final decisions of the PTAB in seven overlapping covered business method patent reviews. In those reviews, Liberty Mutual Insurance Company challenged claims in five patents owned by Progressive Casualty Insurance Company, all directed to pricing automobile insurance based on vehicle use … Continue Reading

Suppliers Can Lack Standing to Seek CBM Review on Behalf of Customers

In several recent decisions, the PTAB has clarified the standing required to file petitions seeking Covered Business Method review.  Under the AIA, standing to seek Covered Business Method review is limited to those charged with infringement and their “privies.”  “Privies,” however, do not encompass merely any party with whom the petitioner is in “privity.”  “Privies” … Continue Reading

PTAB Denies CBM Petition for Lack of Standing, Interpreting “Privies” as Customers and Not Suppliers

Acxiom Corp. v. Phoenix Licensing LLC (CBM2015-00068, Paper 23) presents a rare denial of a petition for covered business method review (as of June 25, 2015, CBM petitions are granted at a rate of over 70%).  In denying the petition,  the PTAB stressed that, to have standing, a petitioner must have been sued (or threatened … Continue Reading

Dissent in SAP v. Versata: Federal Circuit Lacks Authority to Review Whether Challenged Patent is Subject to CBM Proceedings

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 … Continue Reading

PTAB Allows Second Chance to Prove Patent is a Covered Business Method

Should a Petitioner who failed to obtain institution be allowed to refile and try again? When the initial failure was in proof that a patent is a covered business method (CBM) patent, the Board allowed a second petition to proceed. After the Board initially denied institution (CBM2014-00084), Motorola Mobility successfully obtained institution of a new … Continue Reading
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