Federal Circuit Continues to Review Determination of Patents as Covered Business Method Patents from a Final PTAB Decision

Author: Ming Wai Choy
Editor: Lauren J. Dreyer

In Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306 (Fed. Cir. 2015), the Federal Circuit considered its jurisdiction to review the PTAB’s determination of whether patents are CBM patents.  In Versata, the Court held that it lacks jurisdiction to review the PTAB’s institution decision, including the determination that a patent is a CBM patent.  In SightSound Technologies v. Apple, No. 2015-1159, 2015-1160 (Fed. Cir. Dec 15, 2015), the Court returned to the tenets of Versata, holding that the Court has jurisdiction to review, from a final decision, the PTAB’s determination that the petitioned patents are CBM patents.

Accordingly, the Court affirmed the PTAB’s decision that U.S. Patent No. 5,191,573 and 5,966,440, characterized as directed to “the electronic sale of digital audio,” are CBM patents. According to the PTAB, “the electronic sale of something, including charging a fee to a party’s account, is a financial activity, and allowing such a sale amounts to providing a financial service,” which falls under the scope of CBM review. Finally, the Court agreed with the PTAB that the patents did not claim a “technological invention,” even though they claimed technical components, like memory, telecommunications line, transmitter, and receiver, finding that those components were “generic hardware devices known in the prior art.”

 

 

DISCLAIMER: Although we wish to hear from you, information exchanged in this blog cannot and does not create an attorney-client relationship. Please do not post any information that you consider to be personal or confidential. If you wish for Finnegan, Henderson, Farabow, Garrett & Dunner, LLP to consider representing you, in order to establish an attorney-client relationship you must first enter a written representation agreement with Finnegan. Contact us for additional information. One of our lawyers will be happy to discuss the possibility of representation with you. Additional disclaimer information.

Tagged , ,

Leave a Reply

Fill in your details below or click an icon to log in:

WordPress.com Logo

You are commenting using your WordPress.com account. Log Out / Change )

Twitter picture

You are commenting using your Twitter account. Log Out / Change )

Facebook photo

You are commenting using your Facebook account. Log Out / Change )

Google+ photo

You are commenting using your Google+ account. Log Out / Change )

Connecting to %s

%d bloggers like this: