News & Analysis as of

Covered Business Method Proceedings

Bar for CBM Review Inching Higher

by McDermott Will & Emery on

Addressing the standard for initiating a covered business method (CBM) review, the Patent Trial and Appeal Board (PTAB) declined to institute CBM review given the generic, broad nature of the claims and specification. Ford...more

Will Courts Consider Evidence of Patent Eligibility?

Patent enforcement by Texas-based DataTreasury Corp. (“DataTreasury”) was a key motivation for the creation of Covered Business Method Review (“CBM”) proceedings. Senator Charles Schumer of New York, referring to...more

IPR and CBM Statistics for Final Written Decisions Issued in March 2017

by Finnegan – AIA Blog on

In an unusually favorable month for patent owners, the Patent Trial and Appeal Board issued 75 Final Written Decisions in March, and cancelled 540 (48.04%) of the instituted claims while declining to cancel 578 (51.42%) of...more

PTAB Releases March 2017 Stats

The USPTO’s Patent Trial and Appeal Board (PTAB) has released its March 2017 statistics. The end of March marking the halfway point in the USPTO's fiscal year, the overall totals for fiscal year 2017 (FY 2017) are coming...more

Federal Circuit PTAB Appeal Statistics – April 2017

by Finnegan – AIA Blog on

Through April 1, 2017, the Federal Circuit decided 185 PTAB appeals from IPRs and CBMs. The Federal Circuit affirmed the PTAB on every issue in 142 (76.76%) cases, and reversed or vacated the PTAB on every issue in 16 (8.65%)...more

USPTO Seeking Potential Reforms to PTAB Proceedings

by Brinks Gilson & Lione on

On April 7, the U.S. Patent and Trademark Office (“USPTO”) announced its PTAB Procedural Reform Initiative. Patent Trial and Appeal Board (“PTAB”) proceedings created under the America Invents Act (“AIA”) have been in...more

Federal Circuit Confirms Judicial Review On PTAB's CBM Institution

by Brinks Gilson & Lione on

On April 4, 2017, the United States Court of Appeals for the Federal Circuit (“CAFC”) denied Google’s petition for rehearing en banc. Unwired Planet, LLC v. Google Inc., ___ F.3d. ___, Case No. 2015-1812 (Fed. Cir. Apr. 4,...more

Petitions Seeking CBM Review Continue Uphill Battle After Unwired Planet

by 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

Federal Circuit Review | March 2017

Federal Circuit Remands IPR Final Decision For Inadequate Obviousness Analysis, Sidesteps Issue of Proper Claim Construction Standard - In Personal Web Technologies, LLC v. Apple, Inc., Appeal No. 2016-1174, the Federal...more

IPR and CBM Statistics for Final Written Decisions Issued in February 2017

by Finnegan – AIA Blog on

In the 36 Final Written Decisions issued by the Patent Trial and Appeal Board in February, the Board cancelled 384 (74.56%) of the instituted claims and declined to cancel 131 (25.44%) of the instituted claims. Patent owners...more

Generic Claim Terms and Broad Specification Led to No CBM Review

by Finnegan – AIA Blog on

In Twilio, Inc. v. Telesign Corp., CBM2016-00099, Paper 13 (Feb. 27, 2017), the Board refused to institute a covered business method (CBM) review because the Petitioner failed to show that the patent at issue qualified to be...more

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

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

Federal Circuit PTAB Appeal Statistics – March 2017

by Finnegan – AIA Blog on

Through March 1, 2017, the Federal Circuit decided 172 PTAB appeals from IPRs and CBMs. The Federal Circuit affirmed the PTAB on every issue in 132 (76.74%) cases, and reversed or vacated the PTAB on every issue in 15...more

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

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

Federal Circuit Limits Scope of Covered Business Method Review

The Federal Circuit recently clarified what patents are subject to the Transitional Program for Covered Business Method Patents, or CBM review, in Secure Axcess, LLC v. PNC Bank National Association. In clarifying what...more

Narrowing Jurisdiction in Covered Business Method Proceedings

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

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

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

Internet Advertising Claims Deemed Not Eligible for Covered Business Method Patent Review

by Jones Day on

In a decision dated February 27, 2017, the Board denied institution of Google Inc.’s petition for Covered Business Method Patent Review of claims 20, 21, 23–26, 28, and 29 of U.S. Patent No. 6,128,651 (“the ’651 patent”)...more

Patent Claims, Not Embodiments Disclosed in Specification or Litigation Strategy, Determine Eligibility for Covered Business...

by Brooks Kushman P.C. on

A divided Federal Circuit panel recently vacated a Patent Trial and Appeal Board final decision ruling that challenged patent claims were unpatentable, by holding that the patent was not eligible for review under the...more

PTAB Finds Patent Eligibility in a CBM Proceeding, With a Dissent Challenging the Federal Circuit

In a final written decision, the PTAB found all challenged claims patent-eligible in Tradestation Group, Inc. v. Trading Tech. Int’l, Inc., CBM2015-00161, Paper 129 (P.TA.B. Feb. 17, 2017), an uncommon result in a CBM...more

Secure Axcess, LLC v. PNC Bank National Association (Fed. Cir. 2017)

Federal Circuit Finds That USPTO Board Interpreted CBM Statute Too Broadly - In an appeal of a Covered Business Method (CBM) patent review, the Federal Circuit overturned a decision by the U.S. Patent and Trademark...more

Highest Patent Court Narrows Scope of Covered Business Review

by 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

IPR and CBM Statistics for Final Written Decisions Issued in January 2017

by Finnegan – AIA Blog on

In the 47 Final Written Decisions issued by the Patent Trial and Appeal Board in January, the Board cancelled 513 (85.79%) of the instituted claims and declined to cancel 69 (11.54%) of the instituted claims. Patent owners...more

Federal Circuit Clarifies Scope of Covered Business Method Review

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

Covered Business Method Patent: You Keep Using Those Words … We do not Think They Mean What You Think They Means

In Secure Access, LLC v. PNC BANK NATIONAL ASSOCIATION, [2016-1353] (February 21, 2017), the Federal Circuit vacated the Board’s decision in CBM2014-00100 on the ground that U.S. Patent No. 7,631,191 on a “system and method...more

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