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ARTICLE · 03 AUGUST 2018

Eligibility For A Covered Business Method Review

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The Patent Owner responded that the '967 patent is not a CBM patent because its claims only cover "post-sale" activity. Id.

United StatesIntellectual Property
Michael A. Lavine
Michael A. Lavine
Matthew Johnson
Matthew Johnson
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The PTAB recently clarified eligibility for a covered business method review (CBM). See Xerox Corp. v. Bytemark, Inc., No. CBM2018-00011 (P.T.A.B. July 12, 2018) (Paper 12). To establish standing for CBM review, a petitioner must show that the patent in question is a CBM patent. 37 C.F.R. § 42.304. CBM patents "claim[] a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service . . . ." Leahy-Smith America Invents Act (AIA), Pub. L. No. 112-29, § 18(d)(1), 125 Stat. 284, 329-31 (2011).

In Xerox Corp., the Petitioners requested CBM review of U.S. Patent No. 8,494,967 ('967 patent), which claims a system that allows human ticket-takers to verify already-purchased electronic tickets without having to use a barcode scanner. See No. CBM2018-00011, Paper 12 at 2, 4. Petitioners argued that the '967 patent is a CBM patent because (1) the utilization and

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