The Post-Grant Strategist

The standard governing which patents can be attacked in covered business method (CBM) patent review proceedings has received renewed attention recently. The Federal Circuit’s decision last month in Unwired Planet v. Google was a stern reminder to petitioners (and to the Patent Office) that not all patents that seem to be directed to “business methods” can be challenged in CBM proceedings.

IPR challenges can only be based on prior art patents and printed publications; the PTAB does not have authority to invalidate claims for being indefinite, much as it might want to. So when a claim is indefinite and therefore cannot be construed, the PTAB can only dismiss the petition. Sound like a win for the patent owner? Maybe. But the district court may be paying attention, and it may not be long before the claim that survived IPR gets killed in court under the indefiniteness roadmap already laid out before the Board.