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Patent-Eligible Subject Matter › America Invents Act › Covered Business Method Proceedings

Patent-Eligible Subject Matter refers to the types of inventions that can be legally patented. The criteria for patentability varies depending on the jurisdiction. In the United States, for instance, if a... more +
Patent-Eligible Subject Matter refers to the types of inventions that can be legally patented. The criteria for patentability varies depending on the jurisdiction. In the United States, for instance, if a researcher discovers a naturally occurring substance, the substance itself cannot be patented. This issue was examined in a United States Supreme Court case, AMP v. Myriad, in regard to the patentability of human genes.  less -
McDonnell Boehnen Hulbert & Berghoff LLP

Bozeman Financial LLC v. Federal Reserve Bank (Fed. Cir. 2020)

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Less than two years ago, in Return Mail, Inc. v. U.S. Postal Service, 139 S. Ct. 1853 (2018), the Supreme Court held that a government entity -- in that case, the U.S. Postal Service -- is not a "person" under the America...more

Foley & Lardner LLP

PTAB - 2019 Year in Review

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To wrap up 2019 and usher in 2020 for practitioners who handle Patent Trial and Appeal Board (PTAB) matters, Foley partners Jeanne Gills, Steve Maebius, and George Quillin discussed 2019’s major developments in a webinar on...more

Jones Day

PTAB Bar Association – Thought Leader Summit Recap

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In November, the PTAB Bar Association held its annual Thought Leader Summit. The Summit highlighted recent changes to PTAB practice, with a keynote address from USPTO Director Andrei Iancu. In the opening remarks, Director...more

Akin Gump Strauss Hauer & Feld LLP

Federal Circuit Remands CBM Review Decision, Asks PTAB to Explain Meaning of Part One of “Technological Invention” Exception

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The Federal Circuit vacated a PTAB decision invalidating all challenged claims of U.S. Patent No. 8,908,842 (’842 Patent) and ordered the PTAB to reconsider whether the patent should have been disqualified from covered...more

Jones Day

Federal Circuit Provides Guidance on Section 101 and CBMs

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On Thursday, the Federal Circuit issued a precedential decision in Trading Technologies International, Inc. v. IBG Interactive Brokers, LLC, No. 17-2257 (Fed. Cir. Apr. 18, 2019), that provides another data point on how CBM...more

McDermott Will & Emery

Intellectual Property Law Year in Review - March 2019

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In the continuously evolving world of intellectual property law, 2018 was another milestone year. The US Supreme Court and Federal Circuit continued to define key aspects of intellectual property (IP) law including: •...more

Jones Day

Eligibility for a Covered Business Method Review

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The PTAB recently clarified eligibility for a covered business method review (CBM). See Xerox Corp. v. Bytemark, Inc., No. CBM2018-00011 (P.T.A.B. July 12, 2018) (Paper 12). To establish standing for CBM review, a petitioner...more

Jones Day

PTAB Denies CBM Institution Based on Technological Invention Exception

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On December 1, 2017, the PTAB denied institution of a covered business method (“CBM”) petition because the challenged patent is directed to a “technological invention” and therefore is ineligible for CBM review under section...more

Knobbe Martens

Will Courts Consider Evidence of Patent Eligibility?

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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

McDermott Will & Emery

Petitions Seeking CBM Review Continue Uphill Battle After Unwired Planet

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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

Mintz - Intellectual Property Viewpoints

Federal Circuit Clarifies Scope of Covered Business Method Review

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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

McDonnell Boehnen Hulbert & Berghoff LLP

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

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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

Morrison & Foerster LLP

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

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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

McDermott Will & Emery

For CBMs, the Name of the Game is a Financially Limited Claim

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In two recently denied petitions for covered business method (CBM) review, the Patent Trial and Appeal Board (PTAB or Board) provided further guidance on what claimed subject matter is eligible for CBM review. BMC Software,...more

McDermott Will & Emery

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

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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

McDermott Will & Emery

PTAB Prevails in First Appeal of a CBM Review - Versata Development Group, Inc. v. SAP America, Inc.

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In the first appeal of a covered business method (CBM) review, the U.S. Court of Appeals for the Federal Circuit affirmed the Patent Trial and Appeal Board’s (PTAB or Board) decision, and explained that the eligibility of a...more

Foley Hoag LLP

Patenting: A Guidebook For Patenting in a Post-America Invents Act World

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Patenting - Patenting generally offers a superior means for legally protecting most inventions, particularly since: • copyright, when available, does not provide a broad scope of protection; and • the...more

McDermott Will & Emery

PTAB Institutes Very First Post-Grant Review (PGR) - American Simmental Association v. Leachman Cattle of Colorado, LLC

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Representing the first decision of its kind, the Patent Trial and Appeal Board (PTAB or Board) instituted the first post-grant review (PGR) under the American Invents Act (AIA). American Simmental Association v. Leachman...more

Foley & Lardner LLP

Federal Circuit Answers Questions About Covered Business Method Review Proceedings

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In Versata Development Group, Inc. v. SAP America, Inc., the Federal Circuit outlined the permitted extent of judicial review of Covered Business Method (CBM) patent review proceedings conducted by the USPTO Patent Trial and...more

McDonnell Boehnen Hulbert & Berghoff LLP

Versata Development Group, Inc. v. SAP America, Inc. (Fed. Cir. 2015)

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Section 18 of the Leahy-Smith America Invents Act (AIA) established a transitional program through which the USPTO conducts post-grant reviews of covered business method (CBM) patents. For the most part, § 18 incorporates...more

McDermott Will & Emery

CBM Review Threshold Met by the Intrinsic Record - Google Inc. et al. v. Priceplay.com, Inc.

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Addressing threshold issues for instituting a covered business method (CBM) review, in two recent related cases, the Patent Trial and Appeal Board (PTAB or Board) found each of the two patent cases eligible for CBM review,...more

JAMS

Effect On Settlement Of Post-Grant Patent Review Proceedings

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The recent America Invents Act both modified and created procedures for challenging patents in proceedings before the United States Patent and Trademark Office (PTO) after they have been issued, which are called post grant...more

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