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, 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.