Covered Business Method Proceedings

News & Analysis as of

Intellectual Ventures I LLC v. J. Crew Group, Inc. (E.D. Tex. 2016)

Eastern District of Texas and PTAB Issue Conflicting Decisions on Same Patent - IV sued J. Crew for patent infringement of three patents: U.S. Patent Nos. RE43,715, 6,782,370, and 5,969,324. J. Crew filed a Motion to...more

Sally Beauty Holdings, Inc. v. Intellectual Ventures I LLC (PTAB 2016)

Sally Beauty (Petitioner) filed a Petition requesting a review under the transitional program for covered business method (CBM) patents of U.S. Patent No. 5,969,324, owned by Intellectual Ventures I LLC (IV)....more

Of Technical Tools and Problems: Going Beyond the Two-Prong Alice Test

It is abundantly clear that the Supreme Court's 2014 Alice Corp. v. CLS Bank decision has significantly changed the patent-eligibility landscape for business methods and some types of software inventions. For instance, in...more

The PTAB Review - August 2016

Covered Business Method Patent Review: What Constitutes a Financial Product or Service? Along with inter partes review (IPR) and post-grant review (PGR), the America Invents Act (AIA) created a transitional program for...more

Life Technologies Corporation v. Unisone Strategic IP, Inc. (PTAB 2016)

Life Technologies Corp. filed a petition requesting covered business method (CBM) patent review of a number of claims of U.S. Patent No. 6,996,538. The PTAB determined that the claims are unpatentable under 35 U.S.C. § 101...more

HP Inc. v. Big Baboon, Inc. (PTAB 2016) - Business Method Patent Not Invalid under 35 U.S.C. § 101

HP Inc. and SAP America, Inc. filed a Petition seeking a covered business method (CBM) patent review of claims 15 and 20–34 of U.S. Patent No. 6,343,275 owned by Big Baboon, Inc. The PTAB, however, determined that the...more

Patent Due Diligence and Evaluation After the AIA

Many factors must be considered for due diligence and valuation of a patent portfolio. The patent owner’s desire to have broad claims that capture a large number of infringements must be tempered against its need for claims...more

Perspectives On The PTAB - Inaugural Issue

We are pleased to share this Perspectives on the PTAB newsletter. Its content is directed toward providing information and analysis of the decisions made by the Patent Trial and Appeal Board. We hope that this newsletter...more

PTAB Provides Procedural Guidance, Designates Five Opinions as Precedential

On May 10, 2016, the Patent Trial and Appeal Board (PTAB or Board) designated five post-grant trial decisions as precedential, bring the total number of precedential decisions in inter partes review (IPR) and covered business...more

PTAB Still Divided Over What Patents Qualify for CBM Review

Last month, we noted two recent Patent Trial and Appeal Board (PTAB) decisions that appeared to signal a more exacting standard for defining what patents may qualify as covered business method patents, focused on finding a...more

Supreme Court Upholds the PTAB’s Status Quo in Cuozzo

On June 20, 2016, the Supreme Court issued its opinion in Cuozzo Speed Technologies, LLC v. Lee, which unanimously upheld the “broadest reasonable construction” claim construction standard (BRI) used by the Patent Trial and...more

Cuozzo Speed Technologies, LLC v. Lee (2016) -- Question 2 -- PTAB Shenanigans and Reviewability

The saga of the first-filed IPR petition (IPR2012-00001) came to a close today when the Supreme Court decided the Cuozzo Speed Technologies, LLC v. Lee case. We have been following this case ever since the PTAB issued its...more

First PGR Final Written Decisions – Look a Lot Like IPR/CBM Decisions

Despite the overwhelming popularity of IPR proceedings since their inception, about three and a half years ago, Post Grant Review has, to date, been little used. There are probably valid reasons for this low popularity,...more

Strategic Options for Challenging 3rd Party Patents

You have been accused of infringing a patent and you can’t believe that the asserted patent could ever have been granted. What can you do to take the offensive in attacking the asserted patent? Beginning with the...more

PTAB Relies on the Federal Circuit’s Recent § 101 Decision to Deny CBM Institution

On May 12, 2016, the Federal Circuit issued a decision on 101 patent eligibility that overturned a summary judgment finding of § 101 invalidity for software used for databases. Enfish, LLC v. Microsoft Corp., No. 2015-1244,...more

Corelogic, Inc. v. Boundary Solutions, Inc. (PTAB 2016)

Patent Directed to Geographic Parcel Boundary Maps (for Tax Purposes) Not a Covered Business Method - On May 24, 2016, the U.S. Patent Office Patent Trial and Appeal Board (PTAB) issued a decision denying institution of...more

The PTAB Applies Enfish

The PTAB recently relied on the Federal Circuit’s decision in Enfish, LLC v. Microsoft Corp. in refusing to institute a Covered Business Method review of a patent for a system for managing personal electronic information....more

The First Wave of Post-Grant Appeals

2015 brought the first wave of Federal Circuit decisions in appeals from inter partes review (IPR) and covered business method (CBM) proceedings. The trend has been deference: in 83 post-grant appeals, the Federal Circuit has...more

AT&T Mobility LLC v. Intellectual Ventures II LLC (PTAB 2016)

Directory Assistance Call Completion Is Not A Financial Service for CBM Purposes - On May 4, 2016, the USPTO Patent Trial and Appeal Board (PTAB) issued a decision denying institution of a Covered Business Method (CBM)...more

Shifts in Amendments at the PTAB

Despite another year of attempts to amend in IPR and CBM, success is still rare. But is a change coming? In the summer of 2015, the PTAB issued its final written decision in REG Synthetic Fuels LLC v. Neste Oil OYJ,...more

PTAB Trials Rule Package Library

Some of you have requested a collection of the rule packages from the PTAB. ...more

U.S. Patent Trial and Appeal Board Designates Five New Post-Grant Review Decisions as “precedential” and Thus Binding on the Board

On May 9, 2016, the Patent Trial and Appeal Board (PTAB) designated as “precedential” four Inter Partes Review (IPR) decisions and one Covered Business Method (CBM) Patent Review decision. This almost triples the total number...more

PTAB Practice Update: Amended Rules of Practice for Trials before the PTAB Now in Effect

Effective May 2, 2016, the United States Patent and Trademark Office (USPTO) has amended the existing consolidated set of rules of practice for trial proceedings before Patent Trial and Appeal Board (PTAB), including inter...more

PTAB Designates Five Decisions as Precedential

To date, the PTAB has been stingy in its designation of panel decisions as “precedential.” Indeed, before now, only 3 decisions in the AIA era had been designated as precedential. That number increased dramatically on May 10,...more

Federal Circuit Review | April 2016

Federal Circuit Upholds Broad Scope of CBM Review and Explains that an Internet Reference Must be Indexed by a Search Engine to Qualify as a Prior Art Publication - In Blue Calypso, LLC v. Groupon, Inc., Appeal Nos....more

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