Final Written Decision Finding Standing Based on Eminent Domain Lawsuit CBM2014-00116

Share

Takeaway: Standing for a covered business method patent review was demonstrated by a suit for unlicensed use of the patent under an eminent domain statute, 28 U.S.C. § 1498.

In its Final Written Decision, the Board found that Petitioner had demonstrated by a preponderance of the evidence that claims 39-44 of the ’548 patent are unpatentable. Also, the Board denied-in-part and dismissed-in-part each of Patent Owner’s and USPS’s Motion to Exclude. Continue reading

Denying Institution Because Patent Ineligible for CBM Review CBM2015-00109; CBM2015-00149

Share

Takeaway: The Board refused to allow the parties to file a motion to terminate the proceeding without a written settlement of the dispute.

In its Decision, the Board declined institution of covered business method patent review in either CBM2015-00109 or CBM2015-00149 as to any of the challenged claims (1-26) of the ’074 Patent. The ’074 Patent relates to “a ‘unified messaging service’ that allows a user to access communications such as e-mail and voice mail using ‘a single point of access to all communications, integrated with personal information management tools and customized public content delivery.’” Continue reading

Claims Unpatentable Under Alice CBM2015-00070

Share

Takeaway: A claim may be novel but still lack subject matter eligibility.

In its Decision, the Board instituted a covered business method patent review for claims 1–7, 11, 12, 14–22, 25, 26, 28–35, 39, 40, and 42 of U.S. Patent No. 6,397,224. The ’224 patent relates to providing increased confidentiality of information through the use of systems and methods for anonymously linking data records in a database.

Continue reading

Patent Claims Not Eligible for CBM Review CBM2015-00108

Share

Takeaway: In order to show eligibility for covered business method patent review, the petitioner must show that the claimed language is financial in nature, not just that an embodiment is financial in nature.

In its Decision, the Board declined to institute covered business method patent review as to any of the challenged claims (1, 5, 7-10, 12, 15, and 24-26) of the ’860 Patent. The ’860 Patent relates to a web service management system for monitoring a “conversation,” or “a set of related messages sent and received by a particular conversation.”

Continue reading

CBM Review Instituted for Lottery Game Patent CBM2015-00105

Share

Takeaway: The Board will not construe claim terms when it is not necessary to determine the scope of those terms for its analysis.

In its Decision, the Board determined that Petitioner had established that U.S. Patent No. 5,569,082 is a covered business method patent and that it is more likely than not that all challenged claims (claims 1-17) of the ’082 patent are unpatentable under 35 U.S.C. § 101. The ’082 patent relates to “administrating, operating, and playing of a game in which a player acquires a chance to win and the outcome of that chance is displayed in an interesting, fun, and exciting fashion,” including a “personal computer lottery game.”

Continue reading

Institution Denied Because No Claim Directed To Financial Product or Service CBM2015-00107

Share

Takeaway: Where the claims and specification are not tied to a financial product or service, and the specification does not indicate any particular usefulness in financial products, services, or activities, the Board may determine that the patent is not a covered business method patent under § 18(d)(1) of the AIA.

In its Decision, the Board denied institution of covered business method patent review of claims 1-3, 12, 14, 21, 22, 24-26, 35, 37, 44, 45, 56-58, 67, 69, 76, 77, 79, 80, 83, 85, and 88-90 of the ’683 patent. Claim 79 was selected as an exemplary claim for Petitioner’s challenge and the Board’s analysis. Continue reading

Denying Institution where Claimed Invention Merely Capable of Use with a Financial Service CBM2015-00078

Share

Takeaway: A covered business method patent is a patent that claims a method or apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service, not a method or apparatus that merely can be used in connection with a financial service.

In its Decision, the Board denied institution of covered business method patent review. The challenged ‘903 patent relates to “the powering of 10/100 Ethernet compatible equipment,” specifically “automatically determining if remote equipment is capable of remote power feed and if it is determined that the remote equipment is able to accept power remotely then to provide power in a reliable non-intrusive way.” Continue reading

Denial of Institution Where Unsworn Declaration Given No Weight CBM2015-00053

Share

Takeaway: The Board will not give any weight to declarations that are not sworn under penalty of perjury and do not indicate that the witness was warned that willful false statements are punishable by fine or imprisonment.

In its Decision, the Board determined that Petitioner did not demonstrate that U.S. Patent No. 6,292,547 is a covered business method patent and therefore denied a petition to institute a covered business method (CBM) review of claims 11 and 18 of the ’547 patent. The ’547 patent relates to a telephonic-interface statistical analysis system. Petitioner contended that the challenged claims are unpatentable under 35 U.S.C § 101 and under § 103 over Jordan and Michlin.

Continue reading

Denying Request for Rehearing where Arguments Deemed Not Commensurate with Claim Scope CBM2015-00010

Share

Takeaway: Arguments related to either patentability or whether claims qualify for covered business method patent review are likely not persuasive if they are not commensurate in scope with the claims of the challenged patent.

In its Decision, the Board denied both parties’ requests for rehearing of the Board’s Decision to institute trial with respect to some of the asserted grounds in the Petition. The Board reviews decisions for an abuse of discretion, which “may be determined if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors.” The party requesting rehearing has the burden to show the decision should be modified and “must identify specifically all matters the party believes the Board misapprehended or overlooked.” Continue reading

Denying Institution Concluding Challenged Patent Was Not a Covered Business Method Patent CBM2015-00060

Share

Takeaway: The scope of a covered business method patent review is not so broad as to encompass any claim that may result in cost-savings or be used financially.

In its Decision, the Board found that the ‘373 patent is not a covered business method patent and denied institution of a covered business method patent review of claims 1-20 of the ‘373 patent. The ‘373 patent “relates to a test system that executes an enhanced test process for testing components, such as semiconductor devices on a wafer, circuit boards, packaged devices, or other electrical or optical systems, and collecting and analyzing test data.” Petitioner challenged the patentability of the ‘373 patent claims based on patent-ineligible subject matter under 35 U.S.C. § 101. Continue reading