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.”



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