CAFC Rejects Strict Requirement for Motions to Amend

Authored by Brian S. Mudge

In a recent precedential opinion, the Federal Circuit vacated a ruling by the PTAB that had rejected a motion to amend on procedural grounds. The case, Veritas Techs. LLC v. Veeam Software Corp.,[i] saw the court of appeals disagree with the Board on the level of discussion required of a patent owner seeking to amend, and represents a relaxation of one of the requirements imposed by the PTAB for motions to amend claims in an AIA trial. In addition, this case (along with the pending en banc review in the Aqua Products case) signals that the Federal Circuit may be taking a harder look at the procedures for amending patents in AIA trials.

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Tension in the PTAB: How to Determine Whether a Patent Claims a Covered Business Method?

Authored by Brian S. Mudge and Andrew D. Kasnevich
Congress enacted the transitional program for post-grant review of covered business method (“CBM”) patents by the Patent Trial and Appeal Board as a quick and cost-effective way to adjudicate the validity of business method patents. In determining whether to institute a patent trial, the PTAB normally decides, as a threshold matter, whether the challenged patent qualifies as a covered business method, i.e., whether the patent claims a method, or corresponding apparatus, that is used in the practice, administration, or management of a financial product or service. In the early stages of the program’s existence, the PTAB found a range of business methods and software patents eligible for CBM review.1

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USPTO Publishes Proposed Amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal Board

Today, the USPTO published proposed amendments to the rules of practice for trials before the Patent Trial and Appeal Board (PTAB). The USPTO, in concert with the American Intellectual Property Association (AIPLA), will discuss the proposed rules during upcoming road show presentations on August 24, 2015 in Santa Clara; August 25, 2015 in Dallas, Texas, and August 26, 2015 in Alexandria, Virginia. A copy of the Federal Register publication is available here.

Patent Challengers Succeed With New Covered Business Method Program

Authored by Brian S. Mudge

As part of the America Invents Act, Congress created the Covered Business Method (“CBM”) transitional review program to provide a quick and cost effective way to challenge business method patents. The CBM review program was launched about 18 months ago. Since then, the Patent Trial and Appeal Board (“PTAB”) has issued eleven final decisions in CBM proceedings after conducting trial. In all eleven cases, the patent challengers prevailed, winning complete (or nearly complete) victories over patent owners. As a result of these decisions, the Board has ordered cancellation (subject to any appeal) of over 200 patent claims in nine challenged patents. By any metric, patent challengers have achieved overwhelming success in the trials conducted under the CBM patent review program.

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