In the final written decision for J.P. Morgan Chase & Co. v. Intellectual Ventures II LLC, CBM2014-00157, Paper 40 (Jan. 12, 2016), the PTAB determined the Petitioner had standing on the basis that at least one claim was directed to a method for performing data processing used in the practice of a financial product or service.… More
Tag Archives: CBM
In many cases brought before the Board, the Petitioner is defending against a real-party-in-interest challenge. In Acxiom v. Phoenix Licensing, LLC, CBM2015-00134 et seq., which involved a covered business method review, the Petitioner was attempting to show that it was a real party in interest, and it failed.
In Acxiom, the Petitioner claimed that it was a real-party-in-interest or privy to third parties that had been sued for infringement of the subject patents.… More
Parties harness the PTAB’s authority to compel third parties only in rare situations.
The PTAB’s tight trial schedule allows no room for protracted discovery fights. That usually doesn’t matter, because parties rarely seek more than routine cross-examination of the opponent’s witnesses. And even when they seek other evidence, such as when investigating a real-party-in-interest issue, the evidence sought usually is in the control of a party to the proceeding.… More
Often overlooked due to its late timing and limited scope, the Motion for Observations provides a mechanism for introducing dispositive evidence when there’s little further the opponent can do about it.
The motion is limited to addressing cross-examination testimony of the opponent’s reply witnesses. There are normally at most two substantive Replies in a proceeding: the Petitioner’s Reply in support of the Petition,… More
In Google Inc. v. Network-1 Technologies, Inc., CBM2015-00113, the Board instituted a Covered Business Method Review (CBM) of a computer software patent under § 103, but denied the petitioner’s request to review the patent under § 101, counter to the Board’s propensity to invalidate patents under § 101.
An old joke about patent litigation among trial counsel that produces cringes when told to clients is that patent litigation is known as the “sport of kings.” That is because of the great expense of investigating, pleading, discovery, motion practice, expert discovery, pretrial preparation, and trial in a traditional patent case. Like that other sport of kings,… More
Unlike other types of post-grant challenges, in order to invoke a covered business method challenge, a petitioner must establish that it has been sued or threatened with a charge of infringement. A petitioner will have standing to file a petition for covered business method review if it has been sued already or if it “has been charged with infringement.” So exactly what does the phrase, “has been charged with infringement” mean?… More
The Board has once again applied the Mayo/Alice test for patent eligibility, this time in the final written decision for United States Postal Service v. Return Mail Inc., CBM2014-00116, finding all six challenged claims unpatentable under 35 U.S.C. § 101. The patent bar as a whole, and this blog in particular, have noted how deadly § 101 has become post-Alice.… More
The Supreme Court’s Alice v CLS Bank decision (2013) restricted categories of patentable subject matter in both the courts and in the Patent Office, including at the Patent Trial and Appeal Board. A look at the statistics at the PTAB shows just how effective a § 101 challenge can be.
The Supreme Court in Alice held that patents claiming “abstract ideas” are invalid and not eligible subject matter. … More
In Symphony Health Solutions Corp. v. IMS Health Incorporated, CBM2015-00085, the Board instituted Covered Business Method patent review (CBM) for an IMS patent having claims in the healthcare field. The IMS patent “relates to a system and method for the gathering and analysis of health-care related data” and “techniques for de-identifying the individuals from such pharmaceutical data, in order to maintain privacy.”
In its Preliminary Response,… More