IP Blog
Covered Business Method Patent Review
Federal Circuit Affirms § 101 Ineligibility of Set-Top Box Advertising Claims: Customedia Techs., LLC v. Dish Network Corp.
Claims of two patents directed to “data management and on-demand rental and purchase of digital data products,” e.g., selling advertising to be displayed via a set-top box, recites patent-ineligible subject matter under 35 U.S.C. § 101 and the Alice/Mayo test, held the Federal Circuit in Customedia Techs., LLC v. Dish Network Corp., No. 2018-2239 (March 6, 2020) (precedential). The Federal Circuit, in...
No CBM: Check Deposit Patent Claims Technological Invention
Patent claims reciting a “medium comprising computer-readable instructions for depositing a check” included a “technological invention,” and thus were not eligible for Covered Business Method (CBM) review, held the Patent Trial and Appeal Board (PTAB) in Wells Fargo Bank, NA et al v. United Services Automobile Ass’n., Case CBM2019-00004, Patent 8,977,571 B1 (May 15, 2019). Even though U.S. Patent No....
Lack of Technical Solution in Patent Claims Justifies CBM Review and Alice Ineligibility
Finding that claims of patents directed “to a graphical user interface (‘GUI’) for electronic trading” lacked a technical solution to a technical problem, the Federal Circuit affirmed a Patent Trial and Appeal Board decision holding the claims ineligible under 35 U.S.C. § 101 and the Mayo/Alice test. Trading Technologies International, Inc. v. IBG, LLC, No. 2018-1063 (Fed. Cir. April 18,...
NASDAQ Patent Doesn’t Claim Covered Business Method
The PTAB has declined to institute a Covered Business Method (CBM) review for a patent, owned by NASDAQ, claiming a computerized system for executing securities transactions. Investors Exchange LLC v. NASDAQ, Inc., Case CBM2018-00038 (Patent 7,895,112 B2). According to the PTAB, the Petitioner did not meet its burden of showing that the claims were not a technical solution to a technical...
Covered Business Method Patent Survives Alice
Patent claims can survive a patent-eligibility challenge under Alice and 35 U.S.C. § 101 even without a showing of a technological improvement. In Dailygobble, Inc. v. SCVNGR, Inc., Case No. CBM2018-00002 (May 8, 2018), the USPTO’s Patent Trial and Appeal Board declined to institute a Covered Business Method Review (CBM). The PTAB found that claims of U.S. Patent No. 8,924,260B1...
CBM Estoppel Limited to Substantially Identical References
A district court recently held the scope of estoppel from covered-business-method (CBM) review encompasses the references used in the CBM as well as almost-identical references. (Solutran, Inc. v. U.S. Bancorp et al. (D. Minn. 2018).) This dispute started with Solutran suing U.S. Bank for infringement of U.S. Patent No. 8,311,945. The ’945 patent covers a method of processing checks. U.S....
Patent Eligibility and Obviousness in a Covered Business Method Patent Review
The limits of patent eligibility continue to be a major hurtle for patent owners whose patents are subject to Covered Business Method Patent Review (CBM) at the USPTO’s Patent Trial and Appeal Board (PTAB). In IBG LLC v. Trading Tech. Int. Inc., Case CMB2016-00090 (PTAB December 7, 2017) the PTAB issued a Final Written Decision holding that US Patent 7,725,382...
Patent Claims to Selecting Ads for Display Denied Covered Business Method Review
The USPTO’s Patent and Trial Appeal Board has declined to institute a Covered Business Method review of two patents with claims to “directing electronic advertisements” based on user profile attributes with the goal of maximizing profits. Yahoo! Inc. v. AlmondNet, Inc., CBM2017-00056 and CBM2017-00058 (Nov. 22, 2017). The PTAB’s decision turned on its interpretation that the term “condition” encompassed more...
PTAB Invalidates Construction "Price Schedule" Patents
Autodesk, Inc. petitioned for covered business method review of two “Automated pricing system” patents of Uniloc USA, Inc. and Uniloc Luxembourg, S.A. CBM 2016-00042 re USPN 7783523; CBM 2016-00043 re USPN 8515820. In parallel September 2017 decisions, the PTAB invalidated the patents for claiming patent-ineligible subject matter. The patents (the ‘820 Patent is a continuation of the ‘523 Patent) are...
No Covered Business Method Patent Review for Software Based Trading Turret
The Patent Trial and Appeal Board (PTAB) has denied institution of covered business method patent review, as a claimed trading turret system did not constitute a financial activity. Cloud9 Tech. LLC v. IPC Systems, Inc., CBM2017-00037 (Pat. 8, 189,566 B2). Cloud9 sued IPC for patent infringement and in response, IPC petitioned for covered business method patent review. The test of whether a...