Archive | America Invents Act

PTAB Denies Petition for CBM Review of Patent Directed to ATM Banking Transactions: a Portent for Patent-Eligibility of Business Methods? (Maybe Not)

The USPTO’s Patent Trial and Appeal Board (PTAB) has denied a petition for Covered Business Method (CBM) Review of U.S. Patent No. 6,081,792, whose claims recite methods of “providing money or an item of value to an account-holder” and “paying on behalf of a person for money or an item of value, from an account […]

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Federal Circuit Vacates PTAB Written Decision in IPR For Inadequate Explanation of Invalidity Holding

In a non-precedential opinion, Cutsforth, Inc. v. MotivePower, Inc., No. 15-1316 (Fed. Cir. Jan. 22, 2015), the Federal Circuit criticized the Patent Trial and Appeal Board (PTAB) for failing to explain its obviousness rejection of U.S. Patent No. 7,990,018, which is directed to a removable brush holder. The Federal Circuit vacated and remanded the decision back […]

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PTAB Grants Request for Re-hearing from Denial of Petition to Institute Inter Partes Review

Requests to the Patent Trial and Appeal Board for rehearing of decisions on Petitions for Inter Partes Review are commonplace.  PTAB decisions summarily denying them are as well.  In AVX Corporation v. Greatbatch, Ltd., IPR2015-00710, Paper 13 (Jan. 13 2016), however, a Petitioner succeeded in convincing a PTAB panel to reverse itself (in part) on […]

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USPTO Holds First-Ever Inter Partes Review Hearing in Midwest Regional Office in Detroit

Back in 2012, the U.S. Patent and Trademark Office officially opened its first satellite Office—the Midwest Regional Office—in Detroit, Michigan. In another first for the Detroit Regional Office, on January 11, 2016, the Office conducted the first oral hearings in an inter partes review proceeding outside of the Patent Office’s Alexandria, Virginia headquarters. A few […]

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Federal Circuit Affirms PTAB’s CBM Determinations

The PTAB was not arbitrary and capricious in determining that patent claims directed to transmitting digital data were Covered Business Method (CBM) claims, despite a seeming recitation of technological elements, and an omission of any explicit recitation of a financial element.  SightSound Technologies v. Apple, Inc., No.s 2015-1159, 2015-1160 (Fed. Cir. Dec. 15, 2015).  Although […]

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Broadest Reasonable Interpretation Has Limits

Every patent practitioner has felt the frustration that the USPTO’s “broadest reasonable interpretation” standard for claim construction seems to mean that claims say whatever the Patent Office wants them to mean. However, the Federal Circuit has reaffirmed that the standard does have limits. In Straight Path IP Group, Inc. v. Sipnet EU S.R.O., No. 15-1212 […]

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PTAB Finds Means-Plus Function Indefiniteness

Following Williamson v. Citrix Online, LLC, the Patent Trial and Appeal Board has held means-plus-function patent claims indefinite under 35 U.S.C. § 112 for failing to “disclose sufficient corresponding structure for the [means-plus-function claim] limitation.”  Boku Account Services, Inc. v, Xilidev, Inc., Cases CBM2014-00140 and CBM2014-00148 (US Patent 7,273,168) (Nov. 2, 2015).  Even assuming the […]

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Suit Tossed on Alice Grounds Does Not Merit Attorneys Fees Under Octane Fitness

A California district court recently considered the intersection between the patent-eligibility law of Alice and the fee award standard of Octane Fitness, set against the backdrop of a (mostly) successful challenge to the patent-in-suit’s claims before the Patent Trial and Appeal Board.  In Credit Acceptance Corp. v. Westlake Servs., LLC, No. CV 13-01523 SJO (MRWx) […]

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How Expansive Is the Definition of “Covered Business Method Patent?” (Part 2)

Last week I wrote about institution of a Covered Business Method (CBM) patent post-grant review that seemed to stretch the bounds of the definition of “covered business method.” Here is a case denying a petition to institute CBM proceedings, illustrating boundaries of eligibility for CBM review.  In Servicenow, Inc. v. BMC Software, Inc., Case CBM2015-00107 (Patent […]

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How Expansive Is the Definition of “Covered Business Method Patent?”

The USPTO’s Patent Trials and Appeals Board (PTAB) has held that patent claims directed to “de-identifying health care data” are directed to a “covered business method” under Section 18 of the America Invents Act.  Symphony Health Solutions Corp. v. IMS Health, Inc., Case CBM2015-00085 (Patent 8,473,452 B1) (PTAB Sept. 10, 2015).  The PTAB held that […]

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