Instituting Covered Business Method Review CBM2014-00155

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Takeaway: A patent is eligible for covered business method review if the subject matter of at least one claim is directed to a covered business method.

In its Decision, the Board is instituting covered business method patent review of certain claims of the ’245 patent based on the following grounds: claims 1-16 as directed to non-statutory subject matter under 35 U.S.C. § 101; claim 12 as indefinite under 35 U.S.C. § 112, second paragraph; claims 1-4 and 6-16 as having been obvious over Murray under 35 U.S.C. § 103(a); claim 5 as having been obvious over the combination of Murray and Con Edison under 35 U.S.C. § 103(a); and claims 1, 2, 5-9, 13, and 14 as having been obvious over the combination of Brewster and Con Edison under 35 U.S.C. § 103(a). The Board denied all other grounds raised in the Petition. Continue reading

Final Written Decision CBM2013-00040

all challenged claims found unpatentable

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Takeaway: In proving patent-ineligibility of claim under 35 U.S.C. § 101 in a covered business method review proceeding, the petitioner’s burden of proof is under the “preponderance of the evidence” standard, rather than the “clear and convincing evidence” standard.

In its Final Written Decision, the Board ordered that claims 1-6 and 8-23 of the ’944 patent were held unpatentable. It was the Board’s position that Petitioner had proven by a preponderance of the evidence that claims 1–6 and 8–23 of the ’944 patent were not patent-eligible under 35 U.S.C. § 101. Continue reading

Final Written Decision CBM2013-00030

all challenged claims found patent ineligible

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Takeaway: Recitation of generic computer limitations does not make an otherwise ineligible claim patent-eligible.

In its Final Written Decision, the Board ordered that each of challenged claims 1-21 of the ’524 patent was unpatentable as not being directed to patent-eligible subject matter. Also, the Board dismissed Patent Owner’s Motion to Exclude. Continue reading

Final Written Decision CBM2013-00025

All challenge claims found to be unpatentable under 35 U.S.C. 101

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Takeaway: Under the Alice decision, the Board may find a claim to be patent-ineligible if it is directed to one of the patent-ineligible concepts and does not include additional limitations that transform the nature of the claim into a patent-eligible application.

In its Final Written Decision, the Board concluded that Petitioner had proven by a preponderance of the evidence that each of claims 1-3, 5-7, 9-11, and 13-15 of the ’430 patent are unpatentable under 35 U.S.C. § 101. Also, the Board denied Patent Owner’s Motion to Exclude the Declaration of Dr. Freedman. Continue reading