Category: Covered Business Method

Is Uncle Sam a “Person”? Supreme Court Grants Cert to Consider Government Standing in CBM Proceedings

Return Mail Inc. v. United States Postal Service, Case No. 17-1594 (U.S. Oct. 26, 2018) The U.S. Supreme Court granted certiorari in a case concerning a government agency’s standing to challenge the patentability of an issued patent by filing a petition under the America Invents Act’s Transitional Program for Covered Business Method Patents (“CBM”). The case raises interesting issues involving standing under the AIA and the limits of sovereign immunity. The petitioner, Return Mail, Inc., […]

Patent Claims, Not Embodiments Disclosed in Specification or Litigation Strategy, Determine Eligibility for Covered Business Method Review

A divided Federal Circuit panel recently vacated a Patent Trial and Appeal Board final decision ruling that challenged patent claims were unpatentable, by holding that the patent was not eligible for review under the transitional program for covered business method (“CBM”) patents. The appeals court held that a CBM patent must “have a claim that contains, however phrased, a financial activity element.” Secure Axcess, LLC v. PNC Bank N.A., Case No. 2016-1353 (Fed. Cir. Feb. […]

PTAB Remains Consistent from Institution to Final Decision in First Group of IPRs Decided Together

On February 10, 2014, the Patent Trial and Appeal Board (PTAB) issued a group of four final written decisions to inter partes review (IPR) trial proceedings involving Intellectual Ventures Management, LLC (“IVM”) and Xilinx, Inc. (“Xilinx”).  IVM filed four IPR petitions challenging the patentability of claims in four patents owned by Xilinx.  The four final written decisions were entered just prior to the one year anniversary of the institution date, as required by statute. The […]