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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Not So Fast! PTAB Rules Patent Not Covered Business Method

Authored by Brian S. Mudge

The Patent Trial and Appeal Board recently ruled, in a case of first impression, that a patent challenged under the Covered Business Method (“CBM”) transitional review program was not directed to a financial product or service. In PNC Financial Services Group, Inc. v. Intellectual Ventures I, LLC, CBM2014-32 (“PNC Financial”), the petitioners challenged U.S. patent 7,757,298 on grounds that claims 1-16 were unpatentable under 35 U.S.C. §101. But the Board did not even reach the merits of the dispute because it determined, as a threshold matter, that the challenged patent failed to qualify for CBM review.

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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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