Covered Business Method Proceedings

News & Analysis as of

New Amendments to USPTO Post-Grant Regulations

On May 19, 2015, the United States Patent and Trademark Office (USPTO) issued a final rule amending its regulations that apply to post-grant proceedings. These new rules deal with ministerial changes such as increasing page...more

PTO Formally Issues First Set of New Changes to PTAB Rules, Including Increased Page Limits for Petitioner Replies and Patent...

The U.S. Patent & Trademark Office (PTO) has issued several rule amendments that it refers to as “ministerial changes” to procedures for post-grant proceedings before the Patent Trial and Appeal Board (PTAB), including Inter...more

Non-Claimed Elements Cannot Transform an Abstract Idea - Agilysys, Inc. et al. v. Ameranth, Inc.

Addressing unpatentable subject matter under 35 U.S.C. §101, the Patent Trial and Appeal Board (PTAB or Board) concluded that additional elements not recited or required by the claim, such as a non-limiting preamble, cannot...more

Financial Product or Service Is Not Just for Financial Service Industry - Samsung Electronics v. Smartflash LLC; Motorola Mobility...

Addressing the requirements for instituting a covered business method (CBM) review in three decisions, the U.S. Patent and Trademark Office (PTO) Patent Trial and Appeal Board (PTAB or Board) explained that the “financial...more

USPTO Implements Quick Fixes to AIA Review Rules

On March 27, 2015, the director of the U.S. Patent and Trademark Office (PTO) announced several quick fixes in response to public comments on proposed revisions to the rules for inter partes review (IPR), post grant review...more

Indefiniteness Before the PTAB [Video]

Recent years have seen an increase in the number of post-grant decisions on the issue of indefiniteness. What does this mean for patent owners and petitioners? Attorneys Seth Northrop and Cyrus Morton discuss the Patent Trial...more

No Interlocutory Review of Pre-Institution Stay Motion’s in CBM Proceedings - Intellectual Ventures II LLC v. JPMorgan Chase &...

Upon consideration of an issue of first impression, the U.S. Court of Appeals for the Federal Circuit addressed its limited jurisdiction to hear an interlocutory appeal on a motion to stay a district court proceeding under §...more

Tracking #AliceStorm: The Dead Keep Piling Up

For the first week of April, AliceStorm continues unabated, and though the indices are down, the damage spreads. Not surprisingly, the Eastern District of Texas appears to have become the eye of the storm--that place of calm...more

District Court Lifts Stay After Covered Business Method Review Is Dismissed Because Federal Circuit Would Not Have Jurisdiction to...

Plaintiff GT Nexus, Inc. ("GT Nexus") filed a declaratory judgment action against Inttra, Inc. ("Inttra") seeking a declaration that four of Inttra's patents ("patents-in-suit") were invalid and have not been infringed....more

Timing Is Everything When It Comes To Interlocutory Appeals of CBMR-Related Motions To Stay

The issue of when interlocutory appellate jurisdiction vests with the Federal Circuit under Section 18 of the AIA to review a district court’s decision on a motion to stay in view of a related CBMR was recently addressed in...more

Claims Must Be Limited to Financial Activities to Be Covered Business Methods - Salesforce.com, Inc. v. Applications in Internet...

Narrowing the application of covered business method (CBM) patent review, in two recent cases, the Patent Trial and Appeal Board (PTAB or Board) concluded that patents whose claims may apply to industries other than the...more

Second Bites At the Post-Grant Apple?

The America Invents Act (AIA) gives the Board broad discretion in deciding whether or not to institute an IPR or CBM when the Petition addresses substantially the same prior art or arguments to those previously considered by...more

No Early Peek of Cross-Examination Documents - TD Ameritrade Holding Corp. v. Trading Techs. Int’l, Inc.

Addressing patent owner’s challenge to the accuracy of the translation of a foreign language reference that was relied upon in a petition for covered business method (CBM) review, the U.S. Patent and Trademark Office’s...more

PTAB Rejects Attempts to Expand the Scope of CBM Review - Par Pharm., Inc. v. Jazz Pharm., Inc.

Addressing for the first time a request for covered business method (CBM) review by a generic drug maker facing an infringement suit under the Hatch-Waxman Act, the U.S. Patent and Trademark Office’s (PTO’s) Patent Trial and...more

Amending Claims Before the PTAB: What Have We Learned From the Board?

When Congress enacted the America Invents Acts in 2011, they created three new mechanisms to challenge issued claims at the Patent Office – Covered Business Method patent review, Post-Grant Review, and Inter Partes Review...more

Prior Declaratory Judgment Action Fatal to CBM Petitioner - GTNX, Inc. v. INTTRA, Inc.

In a decision bringing four instituted covered business method (CBM) review proceedings to a full stop, the Patent Trial and Appeal board (PTAB or Board) reiterated that a petitioner’s declaratory judgment action filed before...more

Patentability Under § 112 ¶ 2 May Be Raised in CBM Patent Review - Chicago Mercantile Exchange, Inc. v. 5th Market, Inc.

The Patent Trial and Appeal Board (PTAB or Board) of the U.S. Patent and Trademark Office affirmed its earlier determination that a patent was a covered business method (CBM) patent that it was subject to review on questions...more

Energy Management Patent Triggers a Covered Business Method Review

Faced with a patent threat, renewable energy and climate change companies may have a new defense option – a Covered Business Method (CBM) proceeding. Ushered in less than 2 years ago as part of comprehensive patent reform...more

Patent Trial and Appeal Board Rejects Petitions for Covered Business Method Patent Review of Orange Book-Listed Patents Claiming...

On January 13, 2015, the Patent Trial and Appeal Board (PTAB) denied institution of four Covered Business Method (CBM) patent reviews of Orange Book-listed patents owned by Jazz Pharmaceuticals plc (“Jazz”), holding that the...more

PTAB Update -- No Institution of CBM Patent Review for Jazz's Orange-Book Listed Patents

On January 13, 2015, the Patent Trial and Appeal Board ("PTAB" or "Board") denied institution of four covered business method ("CBM") patent review petitions filed by Par Pharmaceutical, Inc. ("Par"), Roxane Laboratories,...more

Post-Alice—Claims Directed to an Abstract Idea Must Have Meaningful Limitations

LinkedIn Corp. v. AVMarkets, Inc. - Addressing patent eligibility in a covered business method (CBM) patent review, the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB or Board) concluded that...more

Standing Requires Articulation of Jurisdictional Facts

E*Trade Financial Corp. v. Droplets, Inc. - Addressing a petition for a covered business method (CBM) patent review, the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB or Board) denied...more

Stays of Litigation Warranted Even When the CBM Review Does Not Address All Asserted Claims or All Invalidity Defenses

Versata Software, Inc. v. Callidus Software, Inc. - Addressing the denial of a stay pending the covered business method (CBM) review of some, but not all, asserted claims in a district court action, the U.S. Court of...more

Dismissal Based on Petitioner's Prior DJ Action Cannot Be Waived

In a covered business method review filed by petitioner GTNX, Inc., the petitioner sought review of four patents owned by patent owner INTTRA, Inc. The PTAB instituted trial on all four patents following the patent owner's...more

Impact of the Alice V. CLS Bank Decision – A Year-End Review

The Supreme Court’s Alice Corp. v. CLS Bank Int’l decision has had a significant impact on the prosecution of software-based patent applications, on the institution of 101-based covered business method patent reviews, and on...more

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