LexisNexis® Legal Newsroom
Patents Post-Grant: Section 101 as a Basis for a Post Grant Patent Challenge

USPTO Clarifies Stance on 101 Challenges Before the PTAB Over the past few weeks, commentators have been buzzing about the ability/inability to challenge a patent on the grounds that the claims are not directed to statutory subject matter ( 35 U.S.C. § 101 ). Under the discussed theories, a 101...

Patents Post-Grant: Pay to Stay….The Game Changing Impact of Business Method Patent Challenges

New CBM Challenges to Derail Business Method Patent Assertions? Last September 16th marked the one year anniversary of the enactment of the America Invents Act (AIA). This "patent reform" legislation introduced several new post grant avenues to challenge an issued patent at the USPTO. One...

Patents Post-Grant: The Asymmetric Estoppel of Business Method Patent Challenges

Unsuccessful CBM Challengers Forced Back into Court? As discussed last week [Oct. 8th - 12th], the Transitional Program for Covered Business Method Patents, or "CBM" proceeding offers significant advantages to qualifying patent challengers . While technically a Post Grant Review (PGR) proceeding...

Patents Post-Grant: PTAB Expedites First Covered Business Method (CBM) Trial

101 Issue Fast Tracked to April Oral Argument at PTAB The very first petition for a Covered Business Method Patent Challenge (CBM) was filed on September 16th by SAP (CBM2012-00001). The petition ( here ) challenged U.S. Patent 6,553,350 of Versata Development Group. In May of 2011, Versata secured...

Congress Considers Reformulation of Business Method Patent Definition

Congress to Choose Between Competing Definitions One of the more intriguing mechanisms of the America Invents Act (AIA) is the Transitional Program for Covered Business Method (CBM) Patents. To date, these specialized post grant patent challenges have been pursued in relatively limited numbers...

Bar Associations Set to Oppose Changes to CBM Statute

Key CBM Revision Unpopular with Bar Associations One of the more intriguing mechanisms of the America Invents Act (AIA) is the Transitional Program for Covered Business Method (CBM) Patents. To date, these speciailized post grant patent challenges have been pursued in relatively limited numbers as...

The Statutory Defect That May Doom Your CBM Petition

CBM Statute Inadvertently Excludes Best Source of CBM Prior Art In fashioning the Covered Business Method (CBM) statutes of the America Invents Act (AIA), Congress was sensitive to the resources of the USPTO. That is, Congress realized that certain types of ”secret prior art” would be...

Leahy Bill Released, Drops Goodlatte Provision on Scope of CBM Art

Critical Technical Fix to CBM Statute Left out of Leahy Bill Wasting no time…the Senate has quickly introduced a companion bill to H.R. 3309 . The senate bill ( here ), sponsored by Senator Leahy of Leahy-Smith America Invents Act (AIA) fame, largely tracks the post grant related provisions...

Recalibrated Patent Reform Bill Unveiled Thursday?

Leahy/Cornyn Compromise Hammered Out? Last week, the Senate Judiciary Committee generally considered bill S. 1720 entitled Patent Transparency and Improvements Act of 2013 but held over the matter for this week . It seems there was a bit of a stalemate on the topic of litigation fee shifting and expansion...

Speed of PTAB Fuels Criticism of Initial Trial Results

Critics Ignore Long Standing Realities Critics of the Patent Trial & Appeal Board (PTAB) are out in force decrying the work of the PTAB as anti-patent. This criticism flows from the unfavorable outcomes of the 30 or so concluded Inter Partes Review (IPR) and Covered Business Method (CBM) proceedings...

CBM Patent Need Not be Directed to Financial Sector

Last week, the CAFC issued its long awaited decision in the dispute between Versata and SAP ( here ). The appeal stemmed from the very first Covered Business Method (CBM) patent challenge proceeding. On appeal, one of Versata's (patentee) main challenges was directed to the statutory definition of...

Federal Circuit Upholds Broadest Reasonable Interpretation in CBMs but Revisits Reviewability of Institution Decisions

In its second case in as many days touching on both the broadest reasonable interpretation (BRI) standard and the reviewability of institution decisions, the U.S. Court of Appeals for the Federal Circuit both agreed and disagreed with itself. On July 9, 2015, in Versata Development Group, Inc. v. SAP...

USPTO Proposes Extensive Changes to AIA Post-Grant Proceedings

by Stephen B. Maebius Yesterday, the USPTO released a 113-page set of proposed changes to AIA post-grant proceedings, including IPR, PGR and CBM proceedings. The USPTO has been attempting to address concerns expressed by the public, having implemented an earlier set of “quick fix” rules...

PTAB Issues Rule Long Awaited Rules Package

Expected Changes to Patentee Preliminary Response Among Noteworthy Changes The USPTO has now published its promised Patent Trial & Appeal Board (PTAB) Rule Package (advance copy here ). The proposed changes are largely expected given the d iscussion coming out of the agency for months on these...

Federal Circuit Affirms PTAB in First Decision on an Appeal of America Invents Act Business

by K. Patrick Herman and Christopher W. Glynn Digest of Versata Dev. Group, Inc. v. SAP Am., Inc. , No 2014-1194 (Fed. Cir. July 9, 2015) (precedential) [subscribers can access an enhanced version of this opinion: lexis.com | Lexis Advance ]. On appeal from the United States Patent and Trademark...