Patent applicants and owners should position claims for narrow constructions where subject matter is susceptible to challenge under 35 U.S.C. § 101, suggests a recent decision from the USPTO’s Patent Trial and Appeal Board (PTAB). In a Covered Business Method (CBM) review Final Written Decision, the PTAB held that claims of U.S. Patent No. 8,402,281, […]
Archive | Covered Business Method Patent Review
Patent Claims to Collecting Website Feedback Not a “Financial Product or Service,” Do Not Qualify for CBM Review, Says PTAB
Patent claims reciting subject matter that, among other applications, could be used in the financial industry, do not qualify for Covered Business Method (CBM) review, said the USPTO’s Patent Trial and Appeal Board in Qualtrics, LLC v. OpinionLab, Inc., Case CBM2016-00003 (PTAB April 13, 2016). Claims of U.S. Patent No. 8,041,805 were directed to collecting […]
Ho-Hum – Federal Circuit Affirms PTAB Decision that Claims Directed to Securities Trading System Are Not Patent-Eligible
By Charles Bieneman on April 5, 2016 in Covered Business Method Patent Review, Patentable Subject Matter, Software Patents
In a one-word per curiam order, the Federal Circuit has affirmed the Patent Trial and Appeal Board’s holding that patent claims directed to a securities trading system are invalid under 35 U.S.C. § 101. Chicago Board Options Exchange Inc. v. International Securities Exchange LLC, 2015-1728, 2015-1729, 2015-1730 (Fed. Cir. March 25, 2016). Here are links […]
Patent Directed to “Data Security System for a Database” Qualifies for Covered Business Method Review at PTAB
In Square Inc v. Protegrity Corp., CBM2014-00182 (March 2, 2016), the Patent Trial and Appeal Board (PTAB) offered some insight as to when patent claims will be subject to covered business method (CBM) review. The patent at issue is US 8,402,281, titled “Data Security System for a Database.” Claim 33 was one of the illustrative […]
PTAB Denies Petition for CBM Review of Patent Directed to ATM Banking Transactions: a Portent for Patent-Eligibility of Business Methods? (Maybe Not)
By Charles Bieneman on January 31, 2016 in America Invents Act, Covered Business Method Patent Review, Patentable Subject Matter
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 […]
Federal Circuit Affirms PTAB’s CBM Determinations
By Charles Bieneman on December 20, 2015 in America Invents Act, Covered Business Method Patent Review, Patent Claim Construction
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 […]
PTAB Finds Means-Plus Function Indefiniteness
By Charles Bieneman on November 19, 2015 in Covered Business Method Patent Review, Indefiniteness, Section 112
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 […]
Suit Tossed on Alice Grounds Does Not Merit Attorneys Fees Under Octane Fitness
By George Schooff on November 13, 2015 in Covered Business Method Patent Review, Exceptional Case, Litigation, Patentable Subject Matter
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) […]
How Expansive Is the Definition of “Covered Business Method Patent?” (Part 2)
By Charles Bieneman on September 20, 2015 in America Invents Act, Covered Business Method Patent Review, Patentable Subject Matter
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 […]
How Expansive Is the Definition of “Covered Business Method Patent?”
By Charles Bieneman on September 14, 2015 in America Invents Act, Covered Business Method Patent Review, Patentable Subject Matter
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 […]