POST-GRANT REVIEW
“A VARIETY OF INDUSTRIES HAVE AVAILED THEMSELVES OF CBM REVIEW. OVER 40 PERCENT OF CBMs HAVE BEEN FILED BY TECHNOLOGY COMPANIES, AS OPPOSED TO
FINANCIAL ENTITIES.”
eligibility. Even if the claims don’t recite financial activity, the PTAB is considering whether financial activity is contemplated by the specification, or whether a financial organisation could use the subject matter at issue. In one case involving an organisational hierarchy for a database, the claims weren’t specific to any industry. But the PTAB decided that the financial services industry could still benefit from organising data in a database, so the subject matter was sufficiently financial.
10. Narrow technological exception prong. Patent owners have difficulty identifying a technological invention. To satisfy the §112 ground in the general examination process, some applicants say their soſtware process uses conventional computer components. Tat way, they don’t have to explain them in detail to satisfy enablement. However, this makes it difficult to rely on the same computer components to satisfy the technological invention exception in a CBM.
Te PTAB has responded to this situation time and again by saying that, even though the patent owner has argued in the preliminary response that technological aspects of the invention make the patent ineligible for CBM review, the original specification said that they are conventional. Te patent owner can’t have it both ways.
11. CBM eligibility distinct from patentable subject matter. Just because a claim is eligible for CBM review, that doesn’t mean claims under scrutiny will fail a §101 analysis. With the eligibility analysis focused on the technical components, many were originally concerned that if a claim failed that test it would automatically fail a §101 analysis. Yet the PTAB is considering the analyses separately.
Two CBM petitions involving Apple v SightSound were denied because the claims satisfied §101, even though
the claims were 26 considered otherwise eligible for CBM. Such analyses are World Intellectual Property Review Annual 2014
www.worldipreview.com
Michelle K. Holoubek is active in many aspects of IP strategy and portfolio development, as well as contested cases. She is lead counsel on a number of contested cases including inter partes reviews and covered business method patent reviews, and also has experience in re-examinations of patents as part of an overall litigation strategy in a variety of technologies, including biomedical, mechanical, and software technologies.
Michael V. Messinger handles complex patent matters involving inter partes and post-grant review, re-examination, reissue and appeals. He works with company managers, directors and employees to identify and leverage IP assets, and is a leader in the area of fast-track patent examination in the US and abroad.
reconcilable, because with eligibility, the PTAB looks to individual claim elements for novelty. But in a §101 analysis, the PTAB looks to see whether the claims, as a whole, are abstract. In the SightSound case, even though the computer components were conventional, the PTAB found that they were combined in a claim and used in such a way that they were not abstract. Tat’s a ray of hope for patent owners.
12. CBM after re-examination. A petitioner may revisit the same grounds and arguments used in a prior re-examination. In CBM2013-00009, the same art and same arguments had been overcome in re-exam, but when the petitioners refiled the art and arguments in a CBM, the PTAB instituted trial. Te PTAB said that the previous proceeding had happened under a different authority, and that the PTAB had the opportunity here to re-review that decision.
13. No §102(e). §102(e) art is not available to CBM petitioners. Although some practitioners suspected this, it wasn’t entirely clear from the AIA whether art that qualified under §102(e), but which wasn’t published a full year before the patent’s filing date, would be available under CBM. In CBM2013-00008, the petitioner filed using §102(e) art, and the patent owner did not raise the issue when filing its preliminary response. Te PTAB didn’t even recognise the issue when it instituted CBM based on those §102(e) grounds. When the PTAB later admitted the error, it asked the patent owner whether it would be acceptable to continue with the CBM including those art-
based rejections. Unsurprisingly, the patent owner said no. Since the §102(e) art formed the basis of all the art rejections, they were leſt with only §101 grounds in the CBM. Shortly thereaſter, the parties agreed to terminate the CBM.
In similar situations, we’re finding that CBMs are being used in combination with inter partes review (when available) so that the §102(e) art, for now, can properly be presented.
14. Pace steadily increasing. All CBMs filed so far have been filed by parties engaged in concurrent
patent litigation. By
a party filing a CBM can take advantage of special provisions when requesting a stay of the concurrent litigation.
Given the ambiguity in the USPTO’s rules at the outset and stricter eligibility criteria, it is unsurprising that CBM review has not caught on as quickly as some of the other post-grant proceedings. However, the pace at which CBMs are being filed is steadily increasing, and an understanding of these nuanced issues will be even more important as more CBMs head to trial.
Michelle K. Holoubek is a director at Sterne, Kessler, Goldstein & Fox PLLC. She can be contacted at:
holoubek@skgf.com
Michael V. Messinger is a director at Sterne, Kessler, Goldstein & Fox PLLC. He can be contacted at:
mikem@skgf.com
design,
Page 1 |
Page 2 |
Page 3 |
Page 4 |
Page 5 |
Page 6 |
Page 7 |
Page 8 |
Page 9 |
Page 10 |
Page 11 |
Page 12 |
Page 13 |
Page 14 |
Page 15 |
Page 16 |
Page 17 |
Page 18 |
Page 19 |
Page 20 |
Page 21 |
Page 22 |
Page 23 |
Page 24 |
Page 25 |
Page 26 |
Page 27 |
Page 28 |
Page 29 |
Page 30 |
Page 31 |
Page 32 |
Page 33 |
Page 34 |
Page 35 |
Page 36 |
Page 37 |
Page 38 |
Page 39 |
Page 40 |
Page 41 |
Page 42 |
Page 43 |
Page 44 |
Page 45 |
Page 46 |
Page 47 |
Page 48 |
Page 49 |
Page 50 |
Page 51 |
Page 52 |
Page 53 |
Page 54 |
Page 55 |
Page 56 |
Page 57 |
Page 58 |
Page 59 |
Page 60 |
Page 61 |
Page 62 |
Page 63 |
Page 64 |
Page 65 |
Page 66 |
Page 67 |
Page 68 |
Page 69 |
Page 70 |
Page 71 |
Page 72 |
Page 73 |
Page 74 |
Page 75 |
Page 76 |
Page 77 |
Page 78 |
Page 79 |
Page 80 |
Page 81 |
Page 82 |
Page 83 |
Page 84 |
Page 85 |
Page 86 |
Page 87 |
Page 88 |
Page 89 |
Page 90 |
Page 91 |
Page 92 |
Page 93 |
Page 94 |
Page 95 |
Page 96 |
Page 97 |
Page 98 |
Page 99 |
Page 100 |
Page 101 |
Page 102 |
Page 103 |
Page 104 |
Page 105 |
Page 106 |
Page 107 |
Page 108 |
Page 109 |
Page 110 |
Page 111 |
Page 112 |
Page 113 |
Page 114 |
Page 115 |
Page 116 |
Page 117 |
Page 118 |
Page 119 |
Page 120 |
Page 121 |
Page 122 |
Page 123 |
Page 124 |
Page 125 |
Page 126 |
Page 127 |
Page 128 |
Page 129 |
Page 130 |
Page 131 |
Page 132 |
Page 133 |
Page 134 |
Page 135 |
Page 136 |
Page 137 |
Page 138 |
Page 139 |
Page 140 |
Page 141 |
Page 142 |
Page 143 |
Page 144 |
Page 145 |
Page 146 |
Page 147 |
Page 148 |
Page 149 |
Page 150 |
Page 151 |
Page 152 |
Page 153 |
Page 154 |
Page 155 |
Page 156 |
Page 157 |
Page 158 |
Page 159 |
Page 160 |
Page 161 |
Page 162 |
Page 163 |
Page 164 |
Page 165 |
Page 166 |
Page 167 |
Page 168 |
Page 169 |
Page 170 |
Page 171 |
Page 172