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VLP Intellectual Property Partner Richard Bone quoted in the Law360 article “CBM Reviews May Fade Away as Fed. Circ. Limits Reach”

Posted on Mar 14, 2017 in News by Richard Bone

VLP Intellectual Property Partner Richard Bone was quoted in the Law360 article “CBM Reviews May Fade Away as Fed. Circ. Limits Reach.”

The article reported that the covered business method (CBM) review program under the America Invents Act has been a popular way for accused infringers to target patents they believe are invalid, however, recent Federal Circuit rulings restricting when the program can be used may cause interest to dwindle.

The article explained that the CBM program allows the Patent Trial and Appeal Board (PTAB) to review the validity of patents used in financial products and services under grounds not available in inter partes reviews. But in two recent decisions, the Federal Circuit has faulted the PTAB for applying the program too broadly.

The article also noted that over 500 CBM petitions have been filed to date, but the restrictions on the program will mean that fewer CBM reviews are going to be instituted. Given the higher risk of rejection, petitioners may shy away from using the program.

Mr. Bone said, “The fact that the PTAB was so ready to institute trials for patents that were only tangentially related to financial services suggests that the number of patents for which trial can be justifiably instituted will drop significantly.”

The article went on to site recent rulings that make clear that unless the claims of the patent are uniquely limited to financial products and services, it is unlikely to be CBM-eligible, and that the patent’s written description and the owner’s litigation history are no help in securing CBM review.

Mr. Bone commented, “Really the most important thing is the language of the claims,”

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