{"id":1303,"date":"2016-11-21T18:31:41","date_gmt":"2016-11-21T23:31:41","guid":{"rendered":"https:\/\/patents.harnessip.com\/?p=1303"},"modified":"2016-11-23T19:31:43","modified_gmt":"2016-11-24T00:31:43","slug":"a-patent-does-not-become-a-cbm-patent-because-its-practice-could-involve-a-potential-sale-of-a-product-or-service","status":"publish","type":"post","link":"https:\/\/patents.harnessip.com\/?p=1303","title":{"rendered":"A Patent Does Not Become a CBM Patent Because its Practice Could Involve a Potential Sale of a Product or Service"},"content":{"rendered":"

In Unwired Planet, LLC, v. Google, Inc.<\/em>, [2015-1812] (November 21, 2016) the Federal Circuit vacated and remanded the PTAB\u2019s final written decision in Covered Business Method Patent Review No. 2014-00006, that found the claims of U.S. Patent No. 7,203,752 invalid, because the patent was not directed to a business method patent<\/p>\n

The only issues on appeal was whether the patents are CBM patents and whether the challenged\u00a0claims are directed to patentable subject matter under section 101. The Federal Circuit\u2019s jurisdiction was based on 28 U.S.C. \u00a71295(a)(4)(A) and 35 U.S.C. \u00a7 329, and included whether the \u2019752 patent is a CBM patent. Under the Administrative Procedure Act, the the Board\u2019s actions are to be set aside if \u2018arbitrary, capricious, an abuse of discretion, or otherwise not in accordance with law\u2019 or \u2018unsupported by substantial evidence.\u2019\u201d<\/p>\n

In accordance with the statute, a CBM review is available only for a \u201ccovered business method patent,\u201d which the AIA defines as \u201ca 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.\u201d AIA \u00a7 18(d)(1).\u00a0 The Federal Circuit said that while it might have been helpful if the PTO had used its authority to elaborate on its understanding of the definition of CBM provided in the statute, it did not do so, instead adopting by regulation the statutory definition of a CBM patent.<\/p>\n

The Federal Circuit found that the Board did not apply the statutory definition, instead inquiring whether the patent claims activities that are financial in nature, incidental to a financial activity, or complementary to a financial activity.\u00a0 The Federal Circuit said that the Board determined that the \u2019752 patent was a CBM patent because the claimed location service could involve an eventual sale of services.\u00a0 The finding that sales could result from advertising related to the practice of the patent was the sole evidence the Board relied on to find that the \u2019752 patent is\u00a0a CBM patent.<\/p>\n

The Federal Circuit rejected the use of general policy statements, or the legislative history, noting\u00a0 neither the legislators\u2019 views nor the PTO policy statement provides the operative legal standard. The authoritative statement of the Board\u2019s authority to conduct a CBM review is the text of the statute. \u00a0The Board is only empowered to review \u201cthe validity of covered business method patents.\u201d AIA \u00a7 18(a)(1). \u00a0Patents that fall outside the definition of a CBM patent\u00a0are outside the Board\u2019s authority to review as a CBM patent, and the PTO\u2019s regulatory authority does not permit it to adopt regulations that expand its authority beyond that granted by Congress.<\/p>\n

The Federal Circuit criticized the incidental or complementary language in the test applied by the Board, noting that a patent for a novel lightbulb that is found to work particularly well in bank vaults does not become a CBM patent because of its incidental or complementary use in banks. \u00a0Likewise, a patent covering a method and corresponding apparatuses does not become a CBM patent because its practice could involve a potential sale of a good or service. All patents, at some level, relate to potential sale of a good or service.<\/p>\n

The Federal Circuit vacated the Board\u2019s decision.<\/p>\n","protected":false},"excerpt":{"rendered":"

In Unwired Planet, LLC, v. Google, Inc., [2015-1812] (November 21, 2016) the Federal Circuit vacated and remanded the PTAB\u2019s final written decision in Covered Business Method Patent Review No. 2014-00006, that found the claims of U.S. Patent No. 7,203,752 invalid, … Continue reading →<\/span><\/a><\/p>\n","protected":false},"author":2,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[39],"tags":[],"class_list":["post-1303","post","type-post","status-publish","format-standard","hentry","category-cbmr"],"post_mailing_queue_ids":[],"_links":{"self":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1303","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/users\/2"}],"replies":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=1303"}],"version-history":[{"count":3,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1303\/revisions"}],"predecessor-version":[{"id":1306,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1303\/revisions\/1306"}],"wp:attachment":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=1303"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=1303"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=1303"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}