Recent covered business method (CBM) review decisions by the
Patent Trial and Appeal Board (PTAB or Board) demonstrate that the
US Court of Appeals for the Federal Circuit’s Enfish
decision (
IP Update, Vol. 19, No. 6) will not act as a panacea
to save the patent eligibility of software inventions. Rather,
Enfish’s impact will be limited to cases involving
software that improves the functioning of computers, as opposed to
using generic computers to facilitate business practices. Life
Techs. Corp. v. Unisone Strategic IP, Inc., Case No.
CBM2015-00037 (PTAB, June 28, 2016) (Bonilla, APJ); Informatica
Corp. v. Protegrity Corp., Case No. CBM2015-00021 (May 31,
2016) (Turner, APJ). Another recent decision declining to institute
CBM review on eligibility grounds is not to the contrary. HP
Inc. v. Big Baboon, Inc., Case No. CBM2016-00020 (PTAB, June
28, 2016) (Ward, APJ).
