Is it Settled (Part 2)? PTAB Following Federal Circuit’s Narrowed CBM Definition

Authored by Brian S. Mudge and Andrew D. Kasnevich

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.

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