Business Method Patent / CBM

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 judgment, which upheld the Patent Trial and Appeal Board’s (PTAB) common practice of instituting review on some, but not all challenged claims, and then issuing a final written decision addressing only the claims for which review was instituted.
Continue Reading Supreme Court Decides that IPR Final Decisions Must Address All Challenged Claims

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 the PTAB’s decision and remanding with instructions that the PTAB dismiss the CBM proceeding for lack of jurisdiction.

PTABWatch Takeaway: When “sued for infringement” within the meaning of 28 U.S.C. § 1498(a), the United States has standing to petition the Patent Office to institute Covered Business Method (CBM) review.  Return Mail v. U.S. Postal Service, Appeal 2016-1502 (Fed. Cir. Aug. 28, 2017)

Background

Patentee, Return Mail, Inc., filed suit in the U.S. Court of Federal Claims Court alleging that the United States, through the actions of the United States Postal Service, used without license the subject matter claimed in U.S. Pat. No. 6,826,548.
Continue Reading The United States Can Have Standing in AIA Proceedings

In the November 14, 2017, Federal Register, the Patent Office issued its final rule setting and adjusting the fees the Office charges for its products and services, including relatively substantial increases for standard AIA trial fees (as shown below). As a simple example, a petitioner challenging all claims of a patent containing 30 claims will pay 37% more in fees for inter partes review ($42,500 v. $31,000), and 33% more in fees for post grant or covered business method review ($54,125 v. $40,750). These AIA trial fees become effective on January 16, 2018.
Continue Reading Petitioners Will Pay More for Immensely Popular AIA Trials

In a CBM appeal, TransPerfect Global, Inc. v. Matal, No. 2016-1121 (Fed. Cir. July 12, 2017) (non-prec.), the Federal Circuit determined that the PTAB correctly construed the word “said” in the claim term “said hyperlink,” and determined that TransPerfect’s challenged claims were unpatentable for lack of written description. The court’s claim construction analysis is thorough and well supported, but the treatment of the challenged patent as CBM-eligible appears to be inconsistent with Federal Circuit precedent.
Continue Reading PTAB Correctly Construed “Said” and Canceled Claims—but Was the Patent CBM Eligible?

In a final written decision issued on April 24, 2017, the PTAB canceled all four challenged claims of U.S. Patent No. 8,671,057, directed to detecting invalid and fraudulent clicks in pay-per-click web advertising (Google Inc. v. Zuili, CBM2016-00008 (Paper 56)). The PTAB found all four claims unpatentable under 35 U.S.C § 101, and obvious under 35 U.S.C. § 103 over a combination two prior art documents related to a study on online advertising reporting and auditing.
Continue Reading Pay-Per-Click Patent Found Ineligible Under Section 101

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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 affirmed the PTAB’s IPR decision that the challenged claims are invalid as obvious and dismissed the PTAB’s CBM review as moot.

Petitioner Google filed IPR and CBM petitions challenging claims 1-6 of U.S. Patent No. 7,024,205 (“the  ’205 patent”) owned by Unwired Planet, LLC.  The ’205 patent describes a system and method for providing wireless network subscribers with prioritized search results based on the location of the mobile device.  Claim 1 is the sole independent claim of the ’205 patent and recites “farther-over-nearer ordering” in the context of wireless location-based services.  We previously discussed a related CBM review between the same parties.
Continue Reading Federal Circuit Affirms Cancellation of Claims Based on Analogous Art

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, determined that the patents are CBM patents, and determined that most challenged claims were unpatentable under § 101, but that the PTAB erred in concluding that some dependent claims were not unpatentable under § 101.

More specifically, the claims in the disputed Ameranth patents are directed to a “first menu that has categories and items, and software that can generate a second menu from the first menu by allowing categories and items to be selected.” 
Continue Reading PTAB Should Have Canceled All Challenged Claims in CBM Reviews

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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 PTAB allow the Board to impose an appropriate sanction on any attorney, registered practitioner or party that violates the PTAB’s rules after the offending party has had an opportunity to respond.  35 C.F.R. §42.11(d)(1).  The Board has the authority to sanction parties or a party may file a motion for the Board to impose sanctions. 
Continue Reading Guidance on Requesting Motions for Sanctions

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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