Final Written Decision

The U.S. Supreme Court’s decision this week in SAS Institute v. Iancu has upended a major provision of the U.S. Patent and Trademark Office (PTO) regulations for inter partes and post grant review proceedings conducted by its Patent Trial and Appeal Board (PTAB).  By concluding in a 5-4 decision that the agency lacks the authority

In SightSound Technologies, LLC v. Apple, Inc. (CBM2013-00020), the Court of Appeals for the Federal Circuit (the patent appellate court) recently affirmed the decision of Patent Trial and Appeal Board (PTAB) to invalidate certain claims of SightSound’s patents 5,191,573 and 5,966,440 in a covered business method (CBM) proceeding based on an obviousness ground that was not expressly raised by the petitioner (Apple).

The ‘573 and ‘440 patents relate to methods for electronic sale and distribution of digital audio and video signals. Each of the relevant claims required forming a connection, through telecommunications lines, between a party’s first memory and a second party’s second memory, selling the desired digital signals for a fee through the telecommunications lines, transmitting the desired signal from the first memory to the second memory through the telecommunications lines, and storing the transmitted signal in the second memory.

In instituting the review of the challenged claims, PTAB found that the patents qualified for CBM review because they involved an activity that was “financial in nature,” namely, the electronic movement of money between financially distinct entities. The PTAB further found that the challenged claims did not include inventive technological features that would have otherwise excluded them from CBM review. The PTAB instituted the review not only based on anticipation grounds advanced by Apple but also based on an obviousness ground that was not specifically alleged by Apple, though the evidence upon which the PTAB relied for the obviousness ground was included in Apple’s petition. This evidence involved a series of disclosures relating to a computer system developed by CompuSonics in 1980’s. The Board reasoned that its reliance on this evidence was proper because while Apple’s petitions did no explicitly assert obviousness based on those disclosures, they nonetheless supported such a ground based on Apple’s detailed explanation of the CompuSonics references.
Continue Reading Fed. Circuit Affirms PTAB’S CBM Decision Based on a Ground Not Raised By Petitioner

On January 21, 2014, the Patent Trial and Appeal Board issued its second Final Written Decision in a Covered Business Method (CBM) Proceeding under the America Invents Act. CBM Proceedings allow for the review of a business method patent on any ground of patentability, and fill a gap between Inter-Partes Review (IPR) which only allows for review based obviousness or novelty, and Post-Grant Review (PGR), which is applicable only to patents issued based on applications filed on or after March 15, 2013, though it allows for review on any ground of patentability.

In this proceeding, CRS Advanced Technologies alleged that certain claims of U.S. Patent No. 6,675,151 were invalid as patent ineligible subject matter under 35 U.S.C. § 101. Broadly, the patent covers systems and methods for placing temporary workers in open positions. The PTAB granted review of all of the challenged claims and held a hearing in August, 2013. The Final Written Decision invalidated all six challenged claims as “directed to abstract, and, therefore, unpatentable, methods for substitute fulfillment.” This is the second time in as many decisions in which the PTAB invalidated business methods claims.

Broadly, the claims are directed toward a method of using a computer to find temporary workers. Claim three, specifically, provides:

Continue Reading PTAB Rejects Covered Business Method Claims