Institution of CBM Review Denied CBM2015-00184

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Takeaway: When showing that a patent does not recite a technological feature that is novel or unobvious over the prior art, the petitioner must analyze the question by looking at how each claim of the patent combines the individual components into an ordered whole.

In its Decision, the Board found that it was not more likely than not that at least one of the challenged claims (1-49) of the ’002 Patent is unpatentable, and denied institution of covered business method patent review. The ’002 Patent describes a system and method for using a mobile interface agent (“MIA”) to access information of a user.

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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 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

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

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

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

Granting Institution in Part Where Intervening Case Law Was Found Insufficient to Prevent Estoppel as to One Challenged Claim CBM2015-00131

Takeaway:  A petitioner may be estopped from challenging a claim that was raised or reasonably could have been raised in a previous post-grant review, even in the face of intervening case law.

In its Decision granting in part institution of a covered business method patent review, the Board determined that “Petitioner has demonstrated that it is more likely than not that the challenged claims are unpatentable” under 35 U.S.C. § 101.  However, the Board also determined that Petitioner “is estopped from challenging claim 26 in this proceeding,” and instituted review of claims 3–6, 8–14, 16–25, 27–30, and 32–41, but not claim 26, of the ’598 patent.  The ’598 patent “relates to ‘a portable data carrier for storing and paying for data and to computer systems for providing access to data to be stored,’ and the ‘corresponding methods and computer programs.’” Continue reading

Claims Unpatentable Under Alice CBM2015-00070

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.

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