June 16, 2015 Articles

Combating a Petition for CBM Review on Section 101 Grounds

Ensure that the patent challenge is valid

By Stan Schlitter

A transitional (i.e., for eight years only) program for the post-grant review of covered business method (CBM) patents is established under section 18 of the Leahy-Smith America Invents Act (AIA). Pub. L. No. 112-29, 125 Stat. 284 (2011). The grounds on which a petitioner may challenge the validity of a claim of a CBM patent include, among others, 35 U.S.C. section 101. 35 U.S.C. § 321(b); AIA § 18(a)(1), 125 Stat. at 329–31; see, e.g., U.S. Bancorp v. Ret. Capital Access Mgmt. Co., No. CBM2013-00014, Paper No. 33, at 9–10 (P.T.A.B. Aug. 22, 2014).

There is a high likelihood of a patent challenged under 35 U.S.C. section 101 in a CBM review proceeding being found invalid. In all of the initial 12 final written decisions that the Patent Trial and Appeal Board (PTAB) issued in CBM reviews, in which trial was instituted on the ground that the claimed invention was not patent-eligible on section 101 grounds, not a single challenged claim was held to be patent-eligible.

The overwhelming success to date of petitioners in challenging business method patents on section 101 grounds in CBM reviews is not surprising, considering that those patents issued from applications filed before relatively recent United States Supreme Court decisions that sharply narrowed the subject matter deemed patent-eligible under section 101. All of the patents involved in CBM review proceedings in which the PTAB issued the initial 12 final written decisions were filed, or claim priority to an application filed, before the Supreme Court decisions in Alice Corp. Pty. Ltd. v. CLS Bank International, 134 S. Ct. 2347 (2014), Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132 S. Ct. 1289 (2012), and Bilski v. Kappos, 561 U.S. 593 (2010). The PTAB has noted that the "specified purpose of the covered business method review program was to allow the [U.S. Patent and Trademark] Office to revisit business method patents post-Bilski and evaluate whether the patents were too abstract to be patentable under § 101." U.S. Bancorp, No. CBM2013-00014, Paper No. 33, at 10 (citing 157 Cong. Rec. S1367 (daily ed. Mar. 8, 2011)).

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