The Software IP Report

Disclaimer Stops CBM Review for Electronic Billboard Patent

Here is another case showing how patent owners are effectively using statutory disclaimers to stop CBM review of patents at the PTAB – and showing that the USPTO’s Patent Trial and Appeal Board (PTAB) continues to decline to take an expansive view of what is a “covered business method patent.”  In Broadside International LLC v. T-Rex Property AB, Case CBM2017-00008, Patent 6,430,603 B2 (PTAB April 26, 2017), the Board declined to institute a Covered Business Method (CBM) Review of the ’603 patent, entitled (probably somewhat enticingly for the challenger “System for direct placement of commercial advertising, public service announcements and other content on electronic billboard displays.”

To determine whether the ’603 patent was a “covered business method” patent under Section 18 of the America Invents Act, Pub. L. No. 112–29, 125 Stat. 284, 331 (2011), the PTAB considered representative claims directed to “presenting video or still-image content at selected times and locations on a networked connection of multiple electronic displays.”  There were no claim terms needing construction, so the PTAB got right down to the business of considering whether the claims fell within the statutory definition of covered business method claims.

The Patent Owner had, wisely, it turns out, provided a statutory disclaimer of some of the claims of the ’603 patent.  For example, if you look at the ’603 patent, you will see many claims that certainly seem “financial” in nature, such as claim 1, which recites a system that allows advertisers to control when their electronic advertisements are displayed.  Having been disclaimed, these claims could not be used as a basis for instituting CBM Review.

The Petitioner had relied on the disclaimed claims to establish the financial nature of the ’603 patent.  With the disclaimer of those claims, the remaining claims “on their face do not evince claiming a financial product or service, and the written description describes the invention as being broader than placement of commercial advertising.”  Hence, the PTAB declined to institute a CBM Review.

Lessons for Practice

One easy lesson from this case is that, as we have recently seen in other cases, statutory disclaimers are an effective weapon for patent owners whose patents are challenged in AIA proceedings at the PTAB.  But there is also a good lesson here for patent prosecutors in the PTAB’s comments that the specification described more subject matter than the disclaimed claims.  Drafting the Specification to clearly delineate different subject matter, as was done here, can clearly be helpful.  Also potentially helpful are multiple claim sets directed to different aspects of a system – if one claim set is directed to something that could be characterized as a business method, that claim set can be disclaimed.  Moreover, the disclaimer may highlight a favorable contrast with non-disclaimed claims as directed to more technical – or at least not “business method” subject matter.