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America Invents Act › Covered Business Method Patents › Covered Business Method Proceedings

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 -
Jones Day

FedEx Delivery Sufficiently Akin to Priority Mail Express for Petition Service

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A PTAB panel found FedEx sufficiently akin to Priority Mail Express to meet the petition service rule, and to the extent necessary further waived the regulatory requirements related to the timing of Petitioner’s (TIZ Inc....more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2020 Decisions: Data and Trends: AIA PTAB Appeals to the Federal...

Sterne, Kessler, Goldstein & Fox P.L.L.C. on

These charts and graphs appear in the firm's Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2020 Decisions report... Appeals from the USPTO dipped in FY20, reaching their lowest level since FY15. After four...more

White & Case LLP

CBM Review – Last Call

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Covered Business Method (“CBM”) review ends in mid-September, and you have one last chance to take advantage. In 2011, the AIA introduced three new administrative review proceedings of patentability with the goal of...more

Fenwick & West LLP

Whither (more likely wither) CBMs

Fenwick & West LLP on

Under the America Invents Act, the USPTO is to stop accepting petitions for review of covered business method patents after September 16, 2020. Given the various other priorities Congress will be dealing with between now and...more

McDermott Will & Emery

For CBM Review, Both Aspects of Technology Exception Must Be Addressed

McDermott Will & Emery on

In an opinion regarding a covered business method (CBM) review at the Patent Trial and Appeal Board (PTAB), the US Court of Appeals for the Federal Circuit adopted a new claim construction and found the PTAB’s decision on CBM...more

Akin Gump Strauss Hauer & Feld LLP

Federal Circuit Remands CBM Review Decision, Asks PTAB to Explain Meaning of Part One of “Technological Invention” Exception

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The Federal Circuit vacated a PTAB decision invalidating all challenged claims of U.S. Patent No. 8,908,842 (’842 Patent) and ordered the PTAB to reconsider whether the patent should have been disqualified from covered...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - September 2019 #4

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PATENT CASE OF THE WEEK - SIPCO, LLC v. Emerson Electric Co., Appeal No. 2018-1635 (Fed. Cir. Sept. 25, 2019) - In this appeal of the Patent Trial and Appeal Board’s (PTAB) final written decision regarding covered...more

Jones Day

Federal Circuit Provides Guidance on Section 101 and CBMs

Jones Day on

On Thursday, the Federal Circuit issued a precedential decision in Trading Technologies International, Inc. v. IBG Interactive Brokers, LLC, No. 17-2257 (Fed. Cir. Apr. 18, 2019), that provides another data point on how CBM...more

Bradley Arant Boult Cummings LLP

Changes to PTAB’s Claim Construction Standard - Intellectual Property News

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On October 10, 2018, the United States Patent and Trademark Office (USPTO) announced that it will issue a final rule changing the claim construction standard for interpreting claims in inter partes review (IPR), post-grant...more

Troutman Pepper

PTAB Abandons Its Practice Of Broadly Interpreting Claims Of Challenged Patents In Favor Of Phillips Standard Of “Ordinary And...

Troutman Pepper on

In a final rule published in the Federal Register on October 11, 2018, the U.S. Patent and Trademark Office (USPTO) took a remarkable step of acknowledging unfairness in the way its Patent Trial and Appeal Board (PTAB) has...more

Shook, Hardy & Bacon L.L.P.

USPTO Changes Claim Construction Standard Used In AIA Trial Proceedings

Shook, Hardy & Bacon L.L.P. on

On October 10, 2018, the United States Patent & Trademark Office (USPTO) published a final rule that changes the current “broadest reasonable interpretation” or BRI standard used in inter partes review (IPR), post grant...more

Jones Day

Eligibility for a Covered Business Method Review

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The PTAB recently clarified eligibility for a covered business method review (CBM). See Xerox Corp. v. Bytemark, Inc., No. CBM2018-00011 (P.T.A.B. July 12, 2018) (Paper 12). To establish standing for CBM review, a petitioner...more

Jones Day

Is the Government a “Person” Who May Institute PTAB Trials?

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The America Invents Act (“AIA”) provides that a “[a] person may not file a petition for [covered business method review] unless the person or the person’s real party in interest or privy has been sued for infringement or...more

Jones Day

PTAB Denies CBM Institution Based on Technological Invention Exception

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On December 1, 2017, the PTAB denied institution of a covered business method (“CBM”) petition because the challenged patent is directed to a “technological invention” and therefore is ineligible for CBM review under section...more

Weintraub Tobin

USPTO Finalizes Rule For Privileged Communications In Trials Before The PTAB

Weintraub Tobin on

The Leahy-Smith America Invents Act (“AIA”) provided for trials before the Patent Trial and Appeal Board (“PTAB”) of the United States Patent and Trademark Office (“USPTO”) in inter partes reviews, post-grant reviews, the...more

McDermott Will & Emery

Petitions Seeking CBM Review Continue Uphill Battle After Unwired Planet

McDermott Will & Emery on

In a series of cases addressing the standard for initiating a covered business method (CBM) review, both the US Court of Appeals for the Federal Circuit and the Patent Trial and Appeal Board (PTAB) reached the same...more

McDonnell Boehnen Hulbert & Berghoff LLP

Twilio, Inc. v. Telesign Corp. (PTAB 2017)

McDonnell Boehnen Hulbert & Berghoff LLP on

No CBM Review for On-Line Registration Patent Having Financial Applications and Uses - Twilio Inc. filed a Petition requesting covered business method patent review of claims 1–18 of U.S. Patent No. 9,300,792. The Board...more

McDonnell Boehnen Hulbert & Berghoff LLP

MBHB Snippets: A review of developments in Intellectual Property Law - Volume 15, Issue 1

McDonnell Boehnen Hulbert & Berghoff LLP on

In 2011, the Leahy-Smith America Invents Act (“AIA”) established new post-issuance procedures for challenging the validity of a granted patent before the Patent Trials and Appeal Board (“PTAB” or “Board”). Inter partes...more

McDonnell Boehnen Hulbert & Berghoff LLP

Narrowing Jurisdiction in Covered Business Method Proceedings

McDonnell Boehnen Hulbert & Berghoff LLP on

In 1998, the United States Court of Appeals for the Federal Circuit decided State Street Bank & Trust Co. v. Signature Financial Group, Inc., which upheld the patentability of business methods in the United States. Since...more

McDonnell Boehnen Hulbert & Berghoff LLP

Post-Grant Review Estoppel – Looking Forward by Looking Back at Estoppel in Inter-Partes and Covered-Business-Method Review

McDonnell Boehnen Hulbert & Berghoff LLP on

In 2011, the Leahy-Smith America Invents Act (“AIA”) established new post-issuance procedures for challenging the validity of a granted patent before the Patent Trials and Appeal Board (“PTAB” or “Board”). Inter partes...more

Morgan Lewis

Highest Patent Court Narrows Scope of Covered Business Review

Morgan Lewis on

A patent does not qualify for “covered business method” review if its claims are only incidental to a financial activity. The US Court of Appeals for the Federal Circuit (CAFC) recently decided that a claimed method (in...more

Mintz - Intellectual Property Viewpoints

Federal Circuit Clarifies Scope of Covered Business Method Review

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The Federal Circuit has further clarified the scope of the covered business method (CBM) review program under the America Invents Act (AIA), explaining in Secure Axcess, LLC. v. PNC Bank National Association that in order for...more

McDermott Will & Emery

PTAB’s Working Definition for CBM Jurisdiction Deemed Too Broad

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Addressing the standard for initiating a covered business method (CBM) review, the US Court of Appeals for the Federal Circuit vacated a Patent Trial and Appeal Board (PTAB or Board) decision invalidating a patent, and in the...more

McDonnell Boehnen Hulbert & Berghoff LLP

Kayak Software Corp. v. International Business Machines Corp. (PTAB 2016) - PTAB Follows Strict Application of CBM Statute...

McDonnell Boehnen Hulbert & Berghoff LLP on

Petitioners, KAYAK Software Corp., OpenTable, Inc., Priceline.com LLC, and The Priceline Group Inc. filed a Petition requesting a covered business method (CBM) patent review of claims 1–9 and 12–17 of U.S. Patent No....more

McDonnell Boehnen Hulbert & Berghoff LLP

iVenture Card Traveler Ltd v. Smart Destinations, Inc. (PTAB 2016)

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Patent Directed to Programmable Ticketing System Determined to be Eligible for Covered Business Method Patent Review - Petitioner, iVenture Card Traveler Ltd, filed a Petition seeking to institute a covered business...more

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