CAFC Rejects Broad Eligibility For CBM Review, Adds To Program Uncertainty

We have previously written about the uncertainty in CBM reviews resulting from the PTAB's inconsistent approaches in determining whether patents qualify for CBM review.¹ What had been consistent, however, was the PTAB's broad definition of a CBM patent. In a recent decision, however, the Federal Circuit has rejected the PTAB's broad reading of eligibility for CBM review, finding that the standard applied by the PTAB did not follow the statutory definition. The case, Unwired Planet, LLC v. Google Inc.,² ruled that the Board could not apply a CBM standard that queried whether a patent claimed activities "incidental to" or "complementary to" a financial activity.

Key Takeaway:  The Federal Circuit's rejection of the PTAB's broad standard for CBM eligibility means greater uncertainty for the CBM program. The Board will need to revisit its application of the statutory definition for covered business method patents and develop a new body of case law over time. Patent