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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Patent Owner’s Challenge to Wayback Machine Evidence Fails

Authored by Brian S. Mudge

We have previously written about disputes over prior art used in an AIA patent trial. A recent case presented challenges to materials obtained from the Internet. The case, Johns Manville Corp. v. Knauf Insulation, Inc.,[1] involved a petitioner’s reliance on exhibits downloaded from the Wayback Machine as prior art. In its final written decision, the PTAB determined that Wayback Machine exhibits were sufficiently authenticated and reliable to withstand a motion to exclude. However, the Board’s ruling did not specifically address one aspect of the challenge relating to a party, Alexa Internet, which initially captured the Internet pages that were archived.

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CAFC Rejects Broad Eligibility For CBM Review, Adds to Program Uncertainty

Authored by Brian S. Mudge

We have previously written about the uncertainty in CBM reviews resulting from the PTAB’s inconsistent approaches in determining whether patents qualify for CBM review.[1] What had been consistent, however, was the PTAB’s broad definition of a CBM patent. In a recent decision, however, the Federal Circuit has rejected the PTAB’s broad reading of eligibility for CBM review, finding that the standard applied by the PTAB did not follow the statutory definition. The case, Unwired Planet, LLC v. Google Inc.,[2] ruled that the Board could not apply a CBM standard that queried whether a patent claimed activities “incidental to” or “complementary to” a financial activity.

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PTAB Rules Dealer Show Catalog Fails to Qualify as Prior Art

Authored by Brian S. Mudge and co-authored by Dragan Plavsic

In a recent decision, the Patent Trial and Appeal Board held that a reference used to support each of the grounds for invalidity did not qualify as prior art. The case, GoPro v. Contour IP,[1] involved the Board’s analysis of whether a reference, the GoPro Catalog, was publicly accessible to persons of ordinary skill in the art. Because the Petitioner failed to establish that reference was publicly accessible to ordinary artisans, the PTAB rejected the instituted prior art challenges without reaching the merits of the obviousness grounds. The Board also denied the parties’ respective admissibility challenges to evidence relating to the GoPro Catalog.

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