Covered Business Method Proceedings

News & Analysis as of

Decision on Institution in PGR petition (PGR2015-00019); US Patent 8,876,991

To date, activity in the PGR (post-grant review) field is insignificant compared to activity in the IPR (inter partes review) or CBM (covered business method review) fields. For example, while there have been 3,953 petitions...more

IP Newsflash - February 2016

FEDERAL CIRCUIT CASES - Federal Circuit Strikes Down Award of Attorneys’ Fees - In a decision that rejects a recent trend of district courts’ willingness to award attorneys’ fees since the Supreme Court’s 2014...more

2015 IP Law Year In Review

Commil USA, LLC v. Cisco Systems, Inc., 135 S. Ct. 1920 (May 26, 2015) - ..Does a defendant’s belief that a patent is invalid serve as a defense to charges of inducing infringement? NO - ..Inducement requires...more

Cuozzo Expanded to CBMs to Bar Appellate Review of Institution Decisions - SightSound Tech., LLC v. Apple Inc.

Addressing the bar on appellate reviewability of the Patent Trial and Appeal Board’s (PTAB or Board) decisions, the U.S. Court of Appeals for the Federal Circuit concluded that § 324(e) bars review of the Board’s decision to...more

Federal Circuit Review | January 2016

The Federal Circuit Will Review Appeals from Inter Partes Review Proceedings Under the “Substantial Evidence” Standard - In Merck & Cie v. Gnosis S.p.A., Appeal No. 2014-1779, the Federal Circuit affirmed a PTAB IPR...more

Westlake Services v. Credit Acceptance: PTAB’s Precedential Decision to Apply Estoppel on a Claim-by-Claim Basis

The Patent Trial and Appeal Board recently designated as precedential its decision in Westlake Services, LLC v. Credit Acceptance Corp., CBM2014-00176, Paper 28 (PTAB May 14, 2015) addressing the scope of estoppel under 35...more

PTAB Designates Two America Invents Act Review Decisions as Precedential

Recently, the Patent Trial and Appeal Board (PTAB) designated two America Invents Act (AIA) review decisions as precedential: LG Electronics, Inc. v. Mondis Technology, Ltd. and Westlake Services, LLC v. Credit Acceptance...more

Higher PTAB Trial Fees On The Horizon

The USPTO has released proposed patent fee changes that include significant increases to PTAB trial fees. The proposed changes are summarized in the USPTO’s “Executive Summary” prepared for the Patent Public Advisory...more

A Solution to Business Problems May Not Be a Technological Invention - Apple Inc. v. Smartflash LLC

Addressing the standard for instituting a covered business method (CBM) review, as well as patent eligibility issues under 35 U.S.C. § 101, the Patent Trial and Appeal Board (PTAB or Board) found patents related to payment...more

Bare Allegations of Customer Indemnification Not Enough for CBM Standing - Acxiom Corp. v. Phoenix Licensing, LLC

In a decision denying institution on a covered business method (CBM) review petition, the Patent Trial and Appeal Board (PTAB or Board) declined to institute a proceeding, finding that the petitioner lacked of standing. The...more

Review of 2015 Federal Circuit Decisions Addressing IPR Claim Construction and Procedural Issues

2015 was a busy year for post-grant review appeals at the Federal Circuit and produced notable opinions in the areas of claim construction, IPR procedural issues, and the constitutionality of IPRs in general. In 2015, the...more

Fed. Circuit Affirms PTAB’S CBM Decision Based on a Ground Not Raised By Petitioner

In SightSound Technologies, LLC v. Apple, Inc. (CBM2013-00020), the Court of Appeals for the Federal Circuit (the patent appellate court) recently affirmed the decision of Patent Trial and Appeal Board (PTAB) to invalidate...more

The PTAB Can Institute Post Grant Trial on a Legal Ground Not Raised in the Petition

In In re Cuozzo Speed Tech., the patentee tried (and failed) to challenge the Board’s decision to institute an IPR on the basis of a combination of references that the petitioner had never suggested. However, even in Cuozzo...more

Is the Patent Trial and Appeal Board Still a “Death Squad” in Instituting Covered Business Method Reviews?

Last year, then Federal Circuit Chief Judge Randall R. Rader referred to the Patent Trial and Appeal Board (the “PTAB”) as a “death squad,” a view not shared by the PTAB. The focus of this blog is to look at the latest trends...more

Federal Circuit Judges Voice Concern Over PTAB Practice of Denying AIA Petitions Based on “Redundancy”

In a recent oral argument, Federal Circuit judges criticized the USPTO practice of not instituting AIA post grant proceedings on grounds considered “redundant” of other grounds in a petition. The USPTO conceded that it uses...more

PTAB Finds Claims to Be Directed to Covered Business Method, but Denies Institution Anyway - E-Loan, Inc. v. IMX, Inc.

Considering whether to institute a covered business method (CBM) review for a patent directed to mortgage loan systems and methods, the Patent Trial and Appeal Board (PTAB or Board) agreed that the patent was a covered...more

Federal Circuit Unanimously Upholds the Constitutionality of Inter Partes Review in MCM Portfolio LLC v. Hewlett-Packard Company

On December 2, 2015, the Federal Circuit issued its decision in MCM Portfolio LLC v. Hewlett-Packard Company (No. 2015-1091), finding inter partes reviews (IPRs) by the Patent Trial and Appeal Board (the Board) constitutional...more

Disclaimed Claims May Be Considered When Determining Eligibility for CBM Review - Compass Bank et al. v. Maxim Integrated...

Addressing the issue of whether disclaimed subject matter may be considered in determining if a patent is eligible for a covered business method (CBM) review, the Patent Trial and Appeal Board (PTAB or Board) found that a...more

Support from Specification Not Enough for Covered Business Method Review - ServiceNow, Inc. v. Hewlett-Packard Company

The Patent Trial and Appeal Board (PTAB or Board) determined that a patent directed to a web services management was not eligible for covered business method (CBM) review under § 18 of the America Invents Act (AIA) and that...more

Standing for CBM Proceeding Only Necessary at Time of the Petition - Westlake Servs., LLC v. Credit Acceptance Corp.

Addressing the issue of whether standing must be maintained throughout a covered business method (CBM) proceeding under the America Invents Act (AIA), the U.S. Patent and Trademark Office’s (PTO’s) Patent Trial Appeal Board...more

Starbucks Brews Successful CBMs - Starbucks Corp. v. Ameranth, Inc.

Addressing patent eligibility for a covered business method (CBM) review under Section 18 of the America Invents Act (AIA), the Patent Trial and Appeal Board (PTAB, the Board) found the patents-at-issue to be eligible and...more

Which Is Better – Patent Arbitration Or Patent Post-Issuance Proceedings?

Tom Brady, New England Patriots quarterback, has seemingly won his dust-up with the National Football League over the air pressure in footballs. Brady received a four-game suspension after an NFL investigation of...more

Federal Circuit Holds That It Lacks Jurisdiction To Review PTAB’s § 315 Time-Bar Determination

The Federal Circuit has again held that it lacks jurisdiction to review certain decisions of the U.S. Patent Trial & Appeal Board in Inter Partes Reviews, continuing the Court’s apparent “hands off” approach to reviewing PTAB...more

MoFo IP Newsletter - October 2015

The Survey Says: Tiffany Is Not Generic for A Ring Setting - Last month, the Southern District of New York granted summary judgment to Tiffany & Co. on its trademark infringement claim against Costco Wholesale...more

PTAB Continues to Evolve Its Covered Business Method Patent Jurisprudence - International Internet Technologies, LLC and Red Rock...

In two related decisions, the Patent Trial and Appeal Board (PTAB or Board) determined that patents directed to a personal computer interactive lottery/casino type game that allows players to purchase game tickets in the form...more

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