America Invents Act Covered Business Method Patents

The Leahy-Smith America Invents Act is a United States federal statute enacted in 2011 aimed at simplifying the U.S. patent system and allowing inventions to be brough to market sooner. The AIA makes significant... more +
The Leahy-Smith America Invents Act is a United States federal statute enacted in 2011 aimed at simplifying the U.S. patent system and allowing inventions to be brough to market sooner. The AIA makes significant changes to the patent system, including changing from a first-to-invent scheme to a first-to-file scheme, eliminating interference proceedings and developing post-grant opposition.  less -
News & Analysis as of

Federal Circuit Review (August 2014)

Post Grant Review of Patent Favors Stay of Litigation - In VIRTUALAGILITY INC. v. SALESFORCE.COM, INC., Appeal No. 14-1232, the Federal Circuit reversed the district court's denial of a motion to stay pending a post...more

Board Issues First Precedential Opinion

An ongoing and (surprisingly) often-raised issue in Covered Business Method Reviews has led the Board to issue its first Precedential opinion in an AIA post-grant proceeding. ...more

Federal Circuit Orders Stay Pending Completion of CBM Review

Applying section 18(a)(1) of the America Invents Act (AIA) to an issue of first impression, a divided panel of the U.S. Court of Appeals for the Federal Circuit reversed a district court, ordering a stay of the district court...more

Federal Circuit Favors Stay of Litigation Pending CBMR

In Virtualagility Inc. v. Salesforce.com, Inc., [2014-1232] (July 20. 2014), the Federal Circuit reversed the district court’s denial of a stay of an infringement suit pursuant to AIA § 18(b)(1) pending disposition of a...more

Federal Circuit Reverses District Court and Orders Stay Pending Covered Business Method Patent Review

On July 10, 2014, the U.S. Court of Appeals for the Federal Circuit addressed a statutory provision of the recently enacted America Invents Act (AIA) that permits a stay of a district court patent litigation pending a Covered...more

Docs @ BIO -- Federal District Court vs. the PTAB

Yesterday, BIO 2014 presented a session entitled "Navigating Patent Challenges Under the America Invents Act" during which the presenters analyzed the differences between patent challenges in Federal District Court and before...more

Liberty Mutual Achieves Total Knockout of Progressive Patents in Series of Post-Grant CBM Proceedings

A recent dispute involving major automobile insurance companies resulted in the invalidation of five patents through the initiation of post-grant Covered Business Method Patent Review proceedings. The dispute demonstrates...more

A Primer On Claim Amendments in Post-Grant Review

Bloomberg Inc. et al. v. Markets-Alert Pty Ltd. - In the final written decision of a covered business method (CBM) review, the Patent Trial and Appeal Board (PTAB) sided with the petitioner, canceling all claims under...more

Ruling in Eastern District of Texas Sets the Stage for the Federal Circuit to Revisit Fresenius v. Baxter

Versata Software, Inc. et al. v. SAP America, Inc. et al., Case No. 2:07cv153-RSP (E.D. Tex.) - Versata v. SAP has been a dispute that the patent bar has followed with interest because it spawned the very first Covered...more

Intellectual Property Bulletin - Winter 2014

The America Invents Act (AIA) came into law back in September 2011, but it was not until last March that its provisions were completely phased in. The changes last year included not only the switch from a “first-to-invent” to...more

Patent Holders Beware in America Invents Act Review Proceedings

The impact of the new post-grant review provisions of the America Invents Act (“AIA”) are beginning to be felt. The U.S. Patent and Trademark Office (“USPTO”) recently issued an opinion invalidating key claims of a patent in...more

12 Observations on Covered Business Method Review

CBM: When the America Invents Act (AIA) was passed in 2011, it ushered in a number of new post-grant options to challenge and defend patents at the United States Patent and Trademark Oce. One of these newly-created...more

The Futility of Petitioning Congress (After the Fix Is In): Stakeholders Tell Judiciary Committee What's Wrong with Goodlatte Bill...

What everybody doesn't seem to know is how to get Congress to listen to the needs of the innovation community when well-heeled sectors put their lobbying and financial support in favor of legislation purportedly aimed at...more

Business Litigation Report -- September 2013

In This Issue: ..Private Antitrust Litigation in the UK ..First Decision by PTO Under America Invents Act Invalidates Business Method Patent ..September 2013: Bankruptcy & Restructuring Litigation...more

First Decision by PTO Under America Invents Act Invalidates Business Method Patent

The United States Patent & Trademark Office (“PTO”) recently issued its first decision under the transitional program for covered business method (“CBM”) patents—a creation of the Leahy-Smith America Invents Act (“AIA”)—in...more

District Court Refuses to Review USPTO Decision to Institute Post Grant Review of Versata Covered Business Method Patent

In Versata Development Corp. v. Rea, the U.S. District Court for the Eastern District of Virginia dismissed Versata’s challenge of the PTAB’s decision to institute post grant review of its patent for lack of jurisdiction....more

Intellectual Property Newsletter - June 2013

In This Issue: *News from the Bench - Unanimous Supreme Court Ruling on Gene Patentability: Natural DNA “No”/ cDNA “Yes” - CAFC Reverses Denial of Permanent Injunction Based on Perceived Future...more

Three New Tools to Challenge Patents

Among the most significant changes made by the America Invents Act (AIA) are the provisions that permit a business to challenge a patent at the U.S. Patent and Trademark Office in litigation-type proceedings, but at a lower...more

A Quick Look at the First Patent Trial and Appeal Board Decision in a Covered Business Method Patent Proceeding, SAP America, Inc....

On June 11, 2013, the USPTO Patent Trial and Appeal Board (PTAB) issued its first final decision in a covered business method patent (CBM) proceeding, in SAP America, Inc. v. Versata Development Group, Inc. (CBM2012-00001)....more

Focus on Private Equity - Issue 2, June 2013

In This Issue: - Avoiding Repricing Pitfalls - America Invents Act: Practical Considerations for Portfolio Companies. - Excerpt from Avoiding Repricing Pitfalls: Perhaps it is no more than a result of...more

Intellectual Property Alert: First Decision In New AIA Process Invalidates Software Business Method Patent As Unpatentable Subject...

On June 11, 2013, the first decision in the new post grant review (PGR) process created by the 2011 America Invents Act (AIA) was issued. ...more

Patent Trial and Appeal Board Issues First Final Written Decision Under America Invents Act Proceeding

On June 11, 2013, the Patent Trial and Appeal Board (PTAB) of the United States Patent and Trademark Office (USPTO) issued the first final written decision in one of the new proceedings created by the America Invents Act...more

Patent Office Issues First Decision Invalidating Patent Under New AIA Rules

The U.S. Patent & Trademark Office recently issued its first decision under the America Invents Act’s new system for reviewing the validity of patents. See SAP America, Inc. v. Versata Dev. Group, Inc., Case CBM2012-00001...more

IP Update, Vol. 16, No. 3, March 2013

In This Issue: Supreme Court - Supreme Court Finds That “First Sale” Doctrine Applies to Works Patents - Joint Actors as It Relates to Method Claim Infringement; Federal Circuit Ruling Clears Way...more

Patent Office Litigation Update: Stays at the U.S. District Court [Video]

In this video, Donald R. Banowit, director with the intellectual property law firm Sterne, Kessler, Goldstein & Fox P.L.L.C., discusses the interface between district court patent litigation and contested patentability...more

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