Covered Business Method Proceedings

News & Analysis as of

Are Patent-Friendly PTAB Decisions On the Rise?

Patent litigation changed with passage of the America Invents Act. Overnight the PTAB became a new venue for challenging patent claims using IPRs, CBMs and PGRs. The initial reaction by the patent bar to the PTAB’s “take...more

IPR and CBM Statistics for Final Written Decisions Issued in December 2016

In the 60 Final Written Decisions issued by the Patent Trial and Appeal Board in December, the Board cancelled 649 (83.10%) of the instituted claims and declined to cancel 124 (15.88%) of the instituted claims. Patent owners...more

Recent PTAB Decisions Further Illuminate Denial of Review Under 35 U.S.C. § 325(D)

Recently, the Patent Trial and Appeal Board (“PTAB”) denied grounds in petitions under 35 U.S.C. § 325(d) because the prior art and arguments relied on in the petitions were substantially similar to those presented during...more

2016 PTAB Year in Review

Wilson Sonsini Goodrich & Rosati is pleased to present our 2016 PTAB Year in Review. We begin with a look at 2016 activity at the Patent Trial and Appeal Board (PTAB), which again ranked as the busiest jurisdiction in the...more

USPTO Publishes Business Method Subject Matter Eligibility Examples: Part I

About a week before the holidays, the U.S. Patent and Trademark Office quietly published a trio of new subject matter eligibility examples directed to the abstract idea exception to patentability. These are the latest in a...more

CBM Review Standard

Whether a patent qualifies for a CBM review has been a moving target. Early decisions held that the claims do not need to be directed to a “financial product or service,” since a reference in the specification to a financial...more

Adding Pre-Existing Technology Won’t Save a Patent-Ineligible Claim

In the recent FairWarning and Synopsys cases (IP Update, Vol. 19, No. 11), the US Court of Appeals for the Federal Circuit found the challenged claims of a patent ineligible under 35 USC § 101 for not claiming a technical...more

PTAB’s Working Definition for CBM Jurisdiction Deemed Too Broad

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

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

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

Patent Owners’ Options After Claims Are Cancelled in AIA Post-Grant Proceedings

The America Invents Act (AIA) instituted sweeping changes in U.S. patent law, including creating new proceedings for third parties to challenge an issued patent before the Patent Trial and Appeal Board (PTAB). These new...more

USPTO Proposes Fee Increases for FY 2017

The USPTO has published its notice of proposed rulemaking for the FY 2017 patent fee schedule in the Federal Register. The USPTO proposes fee increases to recover its estimated costs for patent operations and achieve its...more

Evidentiary Thresholds for Establishing Prior Public Use in Post-Grant Proceedings

Petitioners in post-grant review (PGR) and covered business method (CBM) proceedings have a greater arsenal of prior art to develop patentability challenges than in inter partes review (IPR) proceedings. While IPR challenges...more

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

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

Terminating a Post-Grant Proceeding By Settlement Before the Patent Trial and Appeal Board Has “Decided the Merits”

Voluntarily terminating a post-grant proceeding before the Patent Trial and Appeal Board (PTAB) prior to a final written decision may be appropriate in situations where the parties have agreed to settle the proceeding....more

NRT Technology Corp. v. Everi Payments, Inc. (PTAB 2016)

Second CBM Petition Denied As "Second Bite at the Apple" - The U.S. Patent and Trademark Office Patent Trial and Appeal Board issued a decision denying institution of a covered business method (CBM) patent review in a...more

Lessons Learned from AIA Invalidity Proceedings in the Bio/Pharma Space

September 16, 2016, marked the fourth anniversary of the effective date for the invalidity proceedings before the Patent Trial and Appeal Board (PTAB or Board) created by the America Invents Act (AIA). These new AIA...more

Apple, Inc. v. Ameranth, Inc. (Fed. Cir. 2016)

Computerized Restaurant Ordering Menu Patents Found to Be Directed to Unpatentable Subject Matter - The U.S. Court of Appeals for the Federal Circuit reviewed a Patent Trial and Appeal Board (PTAB) decision in three...more

IPR and CBM Statistics for Final Written Decisions Issued in October 2016

In the 49 Final Written Decisions issued by the Patent Trial and Appeal Board in October, the Board cancelled 660 (70.36%) of the instituted claims and declined to cancel 278 (29.64%) of the instituted claims. Patent owners...more

Federal Circuit Firmly Rejects PTAB Criteria For Covered Business Method Review - Brooks Kushman Post-Grant

In a recent panel decision that deviates from the Federal Circuit’s current tendency to defer to the U.S. Patent and Trademark Office’s interpretation of the Leahy-Smith America Invents Act, the court vacated a final written...more

Patent Invalidity Offense: When Is District Court Action the Better Option Over IPR, PGR or CBM?

It’s Monday morning after the Thanksgiving holiday. Easing back into the workweek with the lingering effects of turkey, stuffing and a miraculous Ohio State victory still sapping my brain, I open the court docket report....more

A Patent Does Not Become a CBM Patent Because its Practice Could Involve a Potential Sale of a Product or Service

In Unwired Planet, LLC, v. Google, Inc., [2015-1812] (November 21, 2016) the Federal Circuit vacated and remanded the PTAB’s final written decision in Covered Business Method Patent Review No. 2014-00006, that found the...more

Disclaimer of Financial Claims May Avoid Eligibility for CBM Review

In defining what patents qualify as covered business method (CBM) patents under 37 CFR § 42.301(a), the Patent Trial and Appeal Board (PTAB or Board) continues to reach diverse and divided panel decisions. Various PTAB cases...more

Federal Circuit Reins in PTAB’s Use of CBM Reviews

In Unwired Planet, LLC v. Google Inc., Case No. 2015-1812 (Fed. Cir. November 21, 2016), the Federal Circuit rejected the PTAB’s broad application of CBM reviews to claims that are merely “incidental” or “complementary” to...more

How Much Did the Federal Circuit Narrow Eligibility for Covered Business Method Review?

Earlier this week, the Federal Circuit narrowed the types of patents eligible for covered business method (CBM) review. In Unwired Planet, LLC v. Google Inc., Case No. 15-1812, (Fed. Cir. Nov. 21, 2016) (“Unwired Planet”),...more

PTAB’s Definition of CBM Patent is Wrong and Too Broad, Federal Circuit Says

The America Invents Act (“AIA”) mandates that a Covered Business Method Review is available only for challenging the validity of covered business method patents. On November 21, 2016, the Federal Circuit ruled in Unwired...more

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