Share this e-Alert:

Polsinelli Intellectual Property & Technology Litigation
         

  

July 2015

  

Federal Circuit Affirms Unpatentability in Much Anticipated First Review of CBM Decision

  

 
 

  

     

  

 
 

For more information about this alert, please contact:

  

Robyn Ast-Gmoser

Author

314.622.6614

Email | Bio

  

Additional Intellectual Property & Technology Litigation Practice Leadership:

  

Keith J. Grady

Practice Area Chair

314.552.6883

Email | Bio

  

Gary E. Hood

Practice Area Vice Chair

312.873.3653

Email | Bio

  

To view a full list of our Intellectual Property & Technology Litigation professionals, click here.

  

For current Intelligence or to learn more about our Intellectual Property & Technology Litigation practice, click here.

  


View Polsinelli documents on JD Supra  

SUBSCRIBE

LinkedIn Twitter Facebook Polsinelli Podcast Connect with us on LinkedIn. Connection with us on Twitter. Connect with us on Facebook.

 

   

Since the America Invents Act (AIA) passed in 2012, Covered Business Method (CBM) reviews have become the Sword of Damocles hanging over the heads of non-practicing entities, also referred to as patent trolls. Many CBM reviews have been filed seeking to invalidate patents which the owners have asserted against seemingly anyone conducting business on the internet. The first filed CBM review, which involved Versata's product pricing method, has finally made it through the patent office and through appeal in Versata Development Group Inc. v. SAP America Inc. et al.

CBM proceedings challenge whether patents which cover a business method are unpatentable for being directed to an abstract idea or for failing to meet the requirements of Section 101. SAP America Inc., who had been sued by Versata Development Group Inc., filed for CBM the first day the AIA took effect. The Patent Trial and Appeal Board held that Versata's patent was unpatentable as claiming the abstract idea of using a computer to determine price. "The claims recite unpatentable abstract ideas and the claims do not provide enough significant meaningful limitations to transform these abstract ideas into patent-eligible applications of these abstractions," the Board concluded. The Federal Circuit affirmed the Board's decision.

Beyond the impact to the parties in this particular case, the ruling also gives important guidance to all those seeking to initiate CBM reviews by addressing a number of issues of first impression. Prior to the Federal Circuit's decision there was disagreement whether CBM reviews should be limited to review of whether the patent covered an abstract idea, or whether the review could also include any challenge under Section 101. The Federal Circuit held that a broader approach was more appropriate and in keeping with the spirit of the established law. The Federal Circuit's decision also endorsed the Patent and Trade Office (PTO)'s interpretation of which patents are eligible for review as those business method patents used in the practice or management of a financial product or service, and not merely those related to banks or brokerage, etc., as Versata and others argued. In addressing Versata's arguments regarding how claims are construed by the Patent office and on appeal, the Court referred to its recent Cuozzo decision approving of the PTO's practice of reading claims according to their broadest reasonable interpretation. Finally, the Federal Circuit ruling cleared up how the decision to institute a CBM is reviewed and how the final written decision is reviewed.

For More Information

With the clarity provided by the long awaited Federal Circuit ruling, we expect that CBM reviews will continue to be popular when businesses are faced with suits from non-practicing entities. For more information on this ruling or how it may impact your business concerns, please contact the author or your Polsinelli attorney.

 
 

  

     

  

 
         

 

 

 

  

     

  

 
 

Atlanta  Chattanooga  Chicago  Dallas  Denver  Kansas City  Los Angeles  Nashville  New York
Overland Park  Phoenix  Raleigh  St. Joseph  St. Louis  San Francisco  Springfield  Washington, D.C.  Wilmington
polsinelli.com

 
 

  

     

  

 
 

  

ABOUT POLSINELLI

real challenges. real answers.SM  
Polsinelli is an Am Law 100 firm with more than 750 attorneys in 18 offices, serving corporations, institutions, entrepreneurs and individuals nationally. Ranked in the top five percent of law firms for client service and top five percent of firms for innovating new and valuable services*, the firm has risen more than 100 spots in Am Law's annual firm ranking over the past six years. Polsinelli attorneys provide practical legal counsel infused with business insight, and focus on health care, financial services, real estate, life sciences and technology, and business litigation. Polsinelli attorneys have depth of experience in 100 service areas and 70 industries. The firm can be found online at www.polsinelli.com. Polsinelli PC. In California, Polsinelli LLP.

* BTI Client Service A-Team 2015 and BTI Brand Elite 2015

  

 
 

  

     

  

 
 

Polsinelli provides this material for informational purposes only. The material provided herein is general and is not intended to be legal advice. The choice of a lawyer is an important decision and should not be based solely upon advertisements.

Copyright © 2015 Polsinelli PC.

 
             
Connect with us on LinkedIn. Connection with us on Twitter. Connect with us on Facebook. Intellectual Property & Technology Litigation Polsinelli