Post-Unwired Planet, Are Pending CBMs Safe?

Posted by Elisabeth Hunt on Dec 27, 2016

Elisabeth Hunt

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.

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Topics: CBMs

CBM Review Standard Changes, ‘Complements’ of the Federal Circuit

Posted by Stuart Duncan Smith on Nov 23, 2016

Stuart Duncan Smith

Covered business method (CBM) review is a popular alternative to IPR, but is available only for patents related to financial activities. In Unwired Planet, LLC v. Google Inc., No. 2015-1812 (Fed. Cir. Nov. 21, 2016), the Federal Circuit held that the Board has been too generous in its definition of which patents can be subject to CBM review—allowing some only because they could be used in a way that relates to financial activities.

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Topics: CBMs

To Be, or Not to Be? Shakespeare and CBMs

Posted by Ed Walsh on Oct 19, 2016

Ed Walsh

To be or not to be is an important question in classic literature as well as in defending patents that may be challenged with a Covered Business Method (CBM) review. One patent owner faced this question—not for itself, but for a dependent claim—when its patent was challenged in Plaid Technologies Inc. v. Yodlee, Inc. (CBM2016-00070, paper 8).

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Topics: CBMs

The Significance of Trial (and Error)

Posted by Charlie Steenburg on Jul 31, 2015

Charlie Steenburg

Yesterday’s Federal Circuit decision in Smartflash LLC v. Apple illustrates the difference that even a few months can make when an accused infringer seeks to stay litigation pending covered business method (CBM) reviews of the asserted patent claims. Smartflash is asserting a series of digital rights management patents against Apple and Samsung in the Eastern District of Texas. All of Smartflash’s asserted claims are the subject of CBM reviews concerning Section 101 issues. Apple and Samsung sought to stay the litigations pending completion of the CBM process, but the district court denied these requests. On appeal, the Federal Circuit affirmed the denial of Apple’s motion, but ordered that Smartflash’s case against Samsung be stayed pending the CBM reviews.

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Topics: CBMs

Federal Circuit Reluctant to Second-Guess PTAB in CBMs, But Asserts the Right to Do So If Warranted

Posted by Charlie Steenburg on Jul 23, 2015

Charlie Steenburg

The Federal Circuit’s recent decision in Versata Development Group v. SAP America, Inc. validates the PTAB’s overall approach to “covered business method” (CBM) proceedings and suggests that patent owners face an uphill battle when appealing the cancellation of claims following CBM review. Significantly, however, the Federal Circuit ruled that it has the power when reviewing a final written decision to consider whether the patent qualified for CBM review at all. The USPTO had disagreed, maintaining that the Federal Circuit lacked authority to review this threshold question because it concerned the PTAB’s decision whether or not to institute CBM review at all—a determination that by law is “nonappealable.” The Federal Circuit’s decision offers hope for other patent owners who face CBM reviews and believe that the PTAB erred in deciding that the challenged patent even qualifies. It also indicates that the Federal Circuit will not always be willing to accept the USPTO’s reading of key language in the America Invents Act.

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Topics: Patent Owners, CBMs

We Can't Stay So You Should Go Now

Posted by Daryl Achilles on Jun 24, 2015

Daryl Achilles

Post-grant proceedings, such as covered business method review (CBM) proceedings, often come hand-in-hand with a patent infringement lawsuit. Frequently, the accused infringer asks the judge to stay the patent infringement suit until the validity of the patents can be determined by the PTAB via the CBM proceeding. However, the timing of the request for the stay can affect the ability to have the court’s decision reviewed by the Federal Circuit, as was recently determined in the ongoing clash between Intellectual Ventures and JPMorgan Chase.

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Topics: CBMs

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This blog is intended to promote thought and debate on developing areas of the law. The opinions, commentary and characterizations of cases provided on this blog are not legal advice and do not represent the opinions of Wolf Greenfield or its clients.