A patent owner does not deprive a petitioner of standing in a
covered business method ("CBM") patent review by
disclaiming the claim directed to a financial product or
service.
In the final written decision for
J.P. Morgan Chase & Co. v. Intellectual Ventures II
LLC, CBM2014-00157, Paper 40 (Jan. 12, 2016), the PTAB
determined the Petitioner had standing on the basis that at least
one claim was directed to a method for performing data processing
used in the practice of a financial product or service. Following
institution of trial, the Patent Owner disclaimed claim 12 which
recited "payment requirements," and argued that the
Petition should be dismissed for lack of standing because, after
the disclaimer of claim 12, the challenged patent is no longer a
covered business method patent. Intellectual Ventures asserted,
"like a plaintiff before a federal court, Petitioners maintain
their burden to show standing throughout the proceeding"
(citing Lujan v. Defenders of
