In Unwired Planet v. Google, the Federal Circuit vacated and remanded the Patent Trial and Appeal Board's ("PTAB") decision to invalidate US Patent No. 7,203,752 under covered business method ("CBM") review, because PTAB relied on a single statement in the legislative history rather than the statutory definition of a covered business method.
Section 18 of the America Invents Act states CBM review is only available for a "covered business method patent," which the AIA defines as "a patent that 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."
Google's lawyers argued (1) a CBM patent claims activities that are financial in nature, incidental to a financial activity, or complementary to a financial activity, (2) the patent describes systems and methods that allow users of wireless devices (e.g., cell phones) to set privacy preferences that determine whether a client application is allowed to access device location, and (3) the specification describes a service or good provider that would want to know a wireless device is in its area so relevant ads can be transmitted to the device.
Thus, Google's arguments were not based on Section 18, but a statement in the legislative history and the fact that the specification discusses advertising which relates to "financial activity." The Federal Circuit was not persuaded noting that a method being "incidental" or "complementary" to financial activity opens up the CBM review to many types of patents and PTAB erred in applying a standard not adopted by the USPTO and broader than the AIA contemplates to determine whether the '752 patent is a CBM patent.
If a company has been sued or accused of infringement of a CBM patent, it might consider CBM review because unlike inter partes review it can challenge a CBM patent under 35 USC 101, which is currently a potent defense in certain cases. However, the general language of Section 18 seems likely to invite arguments as to what is a financial product or service and/or a technological invention in the future.
Copyright © 2016 Robert Moll. All rights reserved.