{"id":1064,"date":"2016-12-21T13:18:29","date_gmt":"2016-12-21T19:18:29","guid":{"rendered":"http:\/\/63.247.142.118\/?p=1064"},"modified":"2019-06-03T16:48:55","modified_gmt":"2019-06-03T21:48:55","slug":"federal-circuit-holds-ptab-exceeded-statutory-authority-in-using-the-broader-incidental-or-complementary-definition-of-covered-business-method","status":"publish","type":"ip_blog","link":"https:\/\/dunlapcodding.com\/ip_blog\/federal-circuit-holds-ptab-exceeded-statutory-authority-in-using-the-broader-incidental-or-complementary-definition-of-covered-business-method\/","title":{"rendered":"FEDERAL CIRCUIT HOLDS PTAB EXCEEDED STATUTORY AUTHORITY IN USING THE BROADER “INCIDENTAL” OR “COMPLEMENTARY” DEFINITION OF COVERED BUSINESS METHOD"},"content":{"rendered":"\n

In Unwired Planet v. Google<\/em>, the Federal Circuit vacated a PTAB Covered Business Method (CBM) review decision holding that the PTO\u2019s definition of a \u201ccovered business method\u201d was \u201cnot in accordance with the law.\u201d<\/p>\n\n\n\n

Covered Business Method review (CBM) is one of a group of post-issuance administrative review procedures created as part of the America Invents Act (AIA). CBM review allows certain patents to be challenged on almost any patentability ground, including subject matter eligibility (under 35 U.S.C. \u00a7 101). The term \u201ccovered business method\u201d is particularly defined to include any patent \u201cthat claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service, except that the term does not include patents for technological inventions.\u201d AIA \u00a7 18(d)(1).<\/p>\n\n\n\n

In its rules implementing the statute, the PTO did not further define or explain the CBM definition, however, in a policy statement, the PTO asserted that the program applies to patents that are \u201cincidental to a financial activity, or complementary to a financial activity.\u201d It is under this more expansive definition that the PTAB has been instituting many CBM reviews. In Unwired Planet v. Google<\/em>, the Federal Circuit rejected this more far-reaching definition as contrary to the statute.<\/p>\n\n\n\n

Unwired\u2019s patent claims a method of using a privacy policy associated with a wireless device to determine if applications are permitted to access the wireless device\u2019s location information. The PTAB held the claims were a CBM by finding that businesses may want \u201cto know a wireless device is in its area so relevant advertising may be transmitted.\u201d The PTAB\u2019s findings were based on the patent\u2019s written description. The PTAB also found the patent claims to be invalid in the CBM under 35 U.S.C. \u00a7 101 as being directed to unpatentable subject matter. On appeal, however, the Federal Circuit found the required \u201cfinancial product or service\u201d link too tenuous and reversed the PTAB\u2019s determination that the patent claims were a CBM. The court explained:<\/p>\n\n\n\n

The Board\u2019s application of the \u201cincidental to\u201d and \u201ccomplementary to\u201d language from the PTO policy statement instead of the statutory definition renders superfluous the limits Congress placed on the definition of a CBM patent.<\/p>\n\n\n\n

This is great news for Unwired because the challenges based on \u00a7 101 are not allowed in inter partes<\/em> review. In a broader sense, this decision by the Federal Circuit is important for two reasons. 1) The current definition of CBM under which the PTO has been instituting CBM review is too broad, and the Court gave no deference to the \u201cpolicy statement\u201d made by the PTO in its notice of the final rules. However, the Court does implicitly suggest that implementation of a more thorough definition in the CFR rules may be given deference. 2) While the decision to initiate a CBM is not appealable, in the present case the Federal Circuit held that it still has jurisdiction to review the CBM initiation question on appeal. In Versata<\/em>, the Federal Circuit held that the initial question of whether a patent is a CBM patent may be reviewed on appeal. Despite the statutory language and the intervening Supreme Court decision in Cuozzo<\/em>, the present case shows that the Federal Circuit is sticking to their guns and will continue to review CBM initiation questions on appeal.<\/p>\n","protected":false},"excerpt":{"rendered":"

In Unwired Planet v. Google, the Federal Circuit vacated a PTAB Covered Business Method (CBM) review decision holding that the PTO\u2019s definition of a \u201ccovered business method\u201d was \u201cnot in accordance with the law.\u201d Covered Business Method review (CBM) is one of a group of post-issuance administrative review procedures created as part of the America Invents […]<\/p>\n","protected":false},"author":11,"featured_media":1065,"comment_status":"open","ping_status":"open","template":"","categories":[24,60,68],"ip_tags":[],"coauthors":[59],"acf":[],"_links":{"self":[{"href":"https:\/\/dunlapcodding.com\/wp-json\/wp\/v2\/ip_blog\/1064"}],"collection":[{"href":"https:\/\/dunlapcodding.com\/wp-json\/wp\/v2\/ip_blog"}],"about":[{"href":"https:\/\/dunlapcodding.com\/wp-json\/wp\/v2\/types\/ip_blog"}],"author":[{"embeddable":true,"href":"https:\/\/dunlapcodding.com\/wp-json\/wp\/v2\/users\/11"}],"replies":[{"embeddable":true,"href":"https:\/\/dunlapcodding.com\/wp-json\/wp\/v2\/comments?post=1064"}],"version-history":[{"count":0,"href":"https:\/\/dunlapcodding.com\/wp-json\/wp\/v2\/ip_blog\/1064\/revisions"}],"wp:featuredmedia":[{"embeddable":true,"href":"https:\/\/dunlapcodding.com\/wp-json\/wp\/v2\/media\/1065"}],"wp:attachment":[{"href":"https:\/\/dunlapcodding.com\/wp-json\/wp\/v2\/media?parent=1064"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/dunlapcodding.com\/wp-json\/wp\/v2\/categories?post=1064"},{"taxonomy":"ip_tags","embeddable":true,"href":"https:\/\/dunlapcodding.com\/wp-json\/wp\/v2\/ip_tags?post=1064"},{"taxonomy":"author","embeddable":true,"href":"https:\/\/dunlapcodding.com\/wp-json\/wp\/v2\/coauthors?post=1064"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}