Disclaimed Claims Will Not Be Considered In Eligibility of Business Method Review CBM2016-00016

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Takeaway: If a patent owner disclaims claims when filing a preliminary patent owner response, those claims cannot be considered in the analysis of whether the patent is eligible for covered business method patent review.

In its Decision, the Board denied covered business method patent review of the challenged claims (1-19) of the ’957 Patent. The ’957 Patent relates to Geographic Information Systems (“GIS”), and, in particular, to a National Online Parcel-Level Map Data Porta (“NPDP”) that provides online delivery of parcel-level map data.

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CBM2014-00182 Challenged Claims Unpatentable

Takeaway: A patent owner’s motion to amend will not be granted when the proposed claims enlarge the scope of the original claims by rewriting limitations.

In its Final Written Decision, the Board found that claims 33-60 of the ’281 Patent are unpatentable, granted Patent Owner’s Motion to Amend to cancel claims 1-32 of the ’281 Patent, and denied Patent Owner’s Motion to amend to add proposed substitute claims 61-68. The ’281 Patent discloses an apparatus for protecting data.

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Instituting CBM Review for Patent with Claim Encompassing Transitory, Propagating Signal CBM2015-00182

Takeaway: A claim that encompasses a transitory, propagating signal is not patent eligible, and adding the phrase “having program code recorded thereon” to limit computer readable medium does not necessarily limit the medium to non-transitory media.

In its Decision, the Board instituted covered business method (CBM) review, finding that Petitioner demonstrated that it is more likely than not that the challenged claims of the ’132 patent are unpatentable. A request by Patent Owner to expand the panel for the decision to institute was also denied. Continue reading

Final Written Decision finding Challenged Claims Unpatentable under 35 U.S.C. 101 CBM2015-00012

Takeaway: The mere existence of a non-preempted use of an abstract idea does not prove that a claim recites patent-eligible subject matter.

In its Final Written Decision, the Board found that Petitioner demonstrated by a preponderance of the evidence that claims 7, 8, 26, and 27 of the ’947 patent are unpatentable. The ’947 patent “describes a method and system for making loans such as mortgages.” Continue reading

Covered Business Method Patent Review Instituted CBM2015-00161

Takeaway: The fact that a petitioner copied the arguments and exhibits from a prior petition of a non-party does not prove in itself that the non-party is a real party-in-interest to the current proceeding.

In its Decision, the Board granted institution of covered business method review on all challenged claims of the ’304 Patent. The ’304 Patent discloses a display and a method of using the display to trade a commodity.

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Final Written Decision Finding All Claims Unpatentable Subject Matter CBM2014-00171

Takeaway: The Board may refuse to adopt a district court claim construction ruling, even if the Board considers the construction under the Phillips standard.

In its Final Written Decision, the Board determined that all of the challenged claims of the ’740 Patent are unpatentable, and denied Patent Owner’s Motion to Amend. The ’740 Patent relates generally “to a method and system for entering data relating to an insurance claim for a damaged vehicle,” wherein the “data is processed into a valuation report that is transmitted through the world wide web.”

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Denying Institution of CBM Review Because Claims Not Directed to Financial Product or Service CBM2015-00164

Takeaway: To qualify as a CBM patent, the claims must be directed to a method of performing data processing or other operations used in the practice, administration, or management of a financial product or service, not merely whether the claims are capable of being used for marketing or valuation purposes.

In its Decision, the Board denied institution of any covered business method patent review of challenged claims 1-9 of the ’724 patent, because it concluded that Petitioner failed to demonstrate that the ’724 patent is a “covered business method patent” as defined by AIA § 18(d)(1). The ’724 patent is “directed to a ‘web site response measurement tool’ for collecting feedback and measuring opinion of users of the website.” Continue reading

Final Written Decision Finding Challenged Claims Eligible for CBM Review and Unpatentable Under Section 101 CBM2014-00156

Takeaway: The recitation in the challenged claims of communication or computer networks, display devices, point-of-sale devices, or the use of known technology, does not make a patent for a technological invention.

In its Final Written Decision, the Board determined that claims 1-4 of the ‘100 patent were unpatentable for claiming ineligible subject matter under 35 U.S.C. § 101. The ‘100 patent “generally relates to methods for coordinating financial transactions via a wireless network, for example, a wireless telephone network” and, in particular, disclosed methods that “allow a user, e.g., a customer or purchaser, to complete financial transactions at point-of-sale locations by using a wireless device, such as a wireless telephone, over a wireless network.” Continue reading

Instituting Review of Challenged Claims CBM2015-00091

Takeaway: The Board was persuaded to follow similar claim construction positions as well as its previous determination related to patent eligibility made in previous proceedings before the Board related to the same and similar patents.

In its Decision, the Board instituted a covered business method patent review of claims 12-16 of the ’850 patent, because it determined that Petitioner had demonstrated that it is more likely than not that the challenged claims are unpatentable on the grounds below. Continue reading

Institution Decisions Are Not Reviewable By Federal Circuit, But Whether Patent Qualifies As CBM Is – Sightsound v. Apple

Takeaway: The Federal Circuit does not have jurisdiction to review institution decisions under 35 U.S.C. § 324(e); however, it is not barred from reviewing whether a patent qualifies as a covered business method patent.

In its Opinion, the Federal Circuit held that the ’573 patent and ’440 patent qualify as covered business method (CBM) patents and affirmed the Board’s final written decision in CBM2013-00020.

In its petition to the Board, Apple asserted that claims 1, 2, 4, and 5 of the ’573 patent and claims 1, 64, and 95 of the ’440 patent were anticipated by CompuSonics. The Board instituted CBM and determined that both patents were CBM patents because they recite the electronic movement of money between financially distinct entities, and do not include features that would otherwise be excluded from CBM. Although Apple had only asserted that the patents were anticipated by CompuSonics, the Board exercised its discretion to institute review on obviousness grounds as well as anticipation grounds. SightSound argued that it had been deprived of a fair opportunity to respond to the obviousness grounds on which CBM had been instituted. The Board granted SightSound additional time for argument before rendering its final decision. In the final decision, the Board upheld institution of review on both anticipation and obviousness grounds. All of the claims of the ’573 patent and claim 1 of the ’440 patent were held to be anticipated by CompuSonics while claims 64 and 95 of the ’440 patent were deemed obvious in view thereof. Continue reading