Covered business method reviews are an important component of AIA patent trials, but the extent of patents eligible for CBM review has not been subject to a consistent standard. In Part 1, we discussed the Federal Circuit's decisions narrowing the scope of CBM eligibility, eliminating from CBM review patents claiming activities that are only "incidental to" or "complementary to" financial activity, and its most recent order denying en banc rehearing in Secure Axcess — which may have settled the legal question of CBM scope. In Part 2 (herein), we discuss recent PTAB decisions showing how the Board has adjusted its approach in evaluating whether a patent is eligible for CBM review in view of the Federal Circuit's guidance, along with considerations for parties and practitioners going forward.
PTAB Decisions after Unwired Planet and Secure Axcess Applying Narrower CBM Scope:
One would expect that the PTAB would now follow the Federal Circuit's clear, and rather forceful, guidance, even in an inquiry as case-dependent as determining whether a patent claims a covered business method. Recent decisions, discussed below, show that the PTAB is indeed following the Federal Circuit's lead, and no longer is relying on the former standard of activities that are only "incidental to" or "complementary to" financial activity.
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