IP Blog
Covered Business Method Review
Patent Owner Loses under § 101 in CBM Where Claims Not Limited to Technological Innovation Allegedly Disclosed in Patent Specification
All claims of a patent directed to a “security-based order processing technique” are unpatentable under 35 U.S.C. § 101, said the Patent Trial and Appeal Board (PTAB) in a final written decision in a Covered Business Method Review. Miami Int’l. Holdings, Inc. v. NASDAQ, Inc., CBM2018-00030, Patent 7,921,051 B2 (PTAB October 3, 2019). The decision is instructive for two reasons....
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...
Click-Fraud Prevention Patent-Ineligible in CBM Review
Two patents directed to “detect[ing] invalid and fraudulent impressions and clicks in web-based advertisement systems” are Covered Business Method Patents under Section 18 of the America Invents Act, and moreover are patent-ineligible under 35 U.S.C. § 101, the PTAB has held in two companion cases. Google, Inc. v. Zuilli, Case CBM2016-00022, Patent 8,326,763 B2 (PTAB May 5, 2017); Google, Inc. v....
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,...
No CBM Patent Review for Delivering Files to a Cell Phone
A patent directed to wirelessly “delivering an audio and/or visual media file” was not a covered business method patent, leading the USPTO’s Patent Trial and Appeal Board (PTAB) to deny a petition to institute a covered business method review. FaceBook, Inc. v. Skky LLC, Case CBM2017-00006, US Patent No. 9,215,310 (PTAB April 11, 2017). Interestingly, one tactic that allowed the...
Statutory Disclaimer Moots Covered Business Method Review
When a patent owner disclaims patent claims for which another party petitions for Covered Business Method Review, the petition is moot. The rule is pretty clear on this point: “[t]he patent owner may file a statutory disclaimer under 35 U.S.C. 253(a),” and “[n]o post-grant review will be instituted based on disclaimed claims.” 37 C.F.R. § 42-207(e). So when the Patent...
PTAB: Internet Advertising Patent Not Subject to CBM Review
The PTAB has denied Google’s petition for Covered Business Method (CBM) review of an Internet advertising patent, finding that Google failed to show that the patent is directed to “performing data processing or other operations used in the practice, administration, or management of a financial product or service.” Google Inc. v. KlausTech, Inc., Case CBM2016-00096 (PTAB February 27, 2017). Accordingly,...