Covered business method reviews are an important component of AIA patent trials, but the extent of patents eligible for CBM review has not been subject to a consistent standard. In Part 1, we discussed the Federal Circuit’s decisions narrowing the scope of CBM eligibility, eliminating from CBM review patents claiming activities that are only “incidental to” or “complementary to” financial activity, and its most recent order denying en banc rehearing in Secure Axcess — which may have settled the legal question of CBM scope. In Part 2 (herein), we discuss recent PTAB decisions showing how the Board has adjusted its approach in evaluating whether a patent is eligible for CBM review in view of the Federal Circuit’s guidance, along with considerations for parties and practitioners going forward.
We have previously written about the scope of patents eligible for CBM review, including the PTAB’s inconsistent approaches in determining whether patents qualify for CBM review and the Federal circuit’s narrowing of the eligibility standard employed by the PTAB. On June 6, 2017, a divided Federal Circuit issued an order in Secure Axcess denying petitions for rehearing en banc. By declining en banc rehearing, the Federal Circuit may have placed a stamp of finality on the scope of CBM review.
For the second time in less than a month, the U.S. Supreme Court on June 12, 2017 granted certiorari in a case involving inter partes review. In Oil States v. Greene’s Energy Group, the Court has agreed to decide whether administrative patent trials, launched in 2012 by the America Invents Act, are Constitutional. The case will decide if the AIA patent review program, which has resulted in over 1,500 final decisions declaring some or all challenged claims unpatentable, remains viable, or whether validity challenges must be heard by the district courts. A ruling that AIA patent trials are unconstitutional would result in substantial change to the current patent litigation landscape and strategy.
On May 22, 2017, the United States Supreme Court granted certiorari in SAS Institute, Inc. v. Lee, agreeing to decide whether the PTAB is required to issue a final written decision with respect to patentability of all claims challenged in a petition for inter partes review (IPR) or whether it may issue a final written decision with respect to only some of the claims challenged in the petition. The case may significantly affect how the PTAB handles IPR proceedings.
Authored by Brian Mudge
We have previously written about disputes regarding whether a prior art reference qualifies as a publication in AIA trials. In a recent decision, the Board ruled that a prior art reference did not qualify as a publication under §102(a). The case, Activision Blizzard v Acceleration Bay, rejected petitioner’s attempt to rely on a 1999 technical report allegedly published by University of California / San Diego (“UCSD”).
Key Takeaway: This case demonstrates that the PTAB will adhere to demanding requirements for petitioners to establish that a reference qualifies as a prior art publication. Petitioners should be prepared to provide detailed evidence showing a prior art reference was publicly accessible before the priority date of a challenged patent. Meanwhile, patent owners should take advantage of opportunities to challenge the public accessibility of references, particularly where the evidence and arguments in a petition are conclusory; such challenges can be effective in a preliminary response and may derail a case before trial is instituted.