Federal Circuit Lets CBM-Narrowing Decision Stand

Authored by Brian S. Mudge

The Federal Circuit has denied a request for rehearing en banc of a case, decided last fall, that narrowed the types of patents that may qualify as a Covered Business Method. The case, Unwired Planet v Google,[1] involves the standard to be applied for determining whether a patent is eligible for CBM review.

Key Takeaway.  The Federal Circuit’s November 2016 panel decision in the case – which rejected that portion of the Board’s CBM standard covering matter “incidental” or “complementary” to a financial activity – remains in place. As a result, the PTAB will most likely be applying a narrower definition for “covered business method,” as it has done since the panel decision issued. Parties should be aware of greater scrutiny and narrower scope of patents eligible for CBM review, and that Patent Owners have more opportunity to challenge allegations that a patent meets the statutory definition for CBM patents.

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PTAB, District Courts Diverge on Scope of Estoppel

Authored by Brian S. Mudge

We have previously written about how the Federal Circuit and the PTAB are applying the AIA estoppel provisions.[1] Since the Federal Circuit’s Shaw ruling, several recent opinions have construed the scope of estoppel. Two of these cases, from district courts, cases have applied estoppel narrowly. But a recent PTAB decision, issued in the wake of these decisions, shows that the Board is not following the lead of the district courts, but instead is continuing to apply its broad approach to estoppel. It will likely be left to the Federal Circuit to resolve the difference, although the Court of Appeals recently declined an invitation to take on the issue.

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