Disclaimed Claims May Be Considered When Determining Eligibility For CBM Review

Compass Bank et al. v. Maxim Integrated Products, Inc.

Addressing the issue of whether disclaimed subject matter may be considered in determining if a patent is eligible for a covered business method (CBM) review, the Patent Trial and Appeal Board (PTAB or Board) found that a statutory disclaimed subject matter may be considered as part of a CBM review but cannot be the basis for institution. The Board also found that claims of a non-expired patent should be construed using the broadest reasonable standard at institution, even if the Phillips standard will be applied in construing the claims of that patent in a final written decision. Compass Bank et al. v. Maxim Integrated Products, Inc., Case No. CBM2015-00102 (PTAB, October 7, 2015) (Weatherly, APJ).