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ARTICLE · 06 DECEMBER 2019

PTAB Reconciles Its Prior §101 Ruling With CBM Institution

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Following guidance from the Federal Circuit, the PTAB has vacated a previous Board decision granting Covered Business Method review in Apple, Inc. v. Universal Secure Registry LLC

United StatesIntellectual Property
Timothy Heverin
Timothy Heverin
Morgan K. Restaino
Morgan K. Restaino
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Following guidance from the Federal Circuit, the PTAB has vacated a previous Board decision granting Covered Business Method review in Apple, Inc. v. Universal Secure Registry LLC (P.T.A.B. Dec. 3, 2018).

The PTAB's decision to vacate was prompted by the Federal Circuit's recent opinion in IBG LLC v. Trading Technologies International, Inc. (Fed. Cir. Feb. 2019). There, the PTAB found certain of the patent claims at issue to be not abstract under 35 U.S.C. § 101 because they were "directed to a specific improvement to the way computers operate." IBG at *1007. At the same time, however, the Board held that the patents were not for technological inventions, and thus eligible for CBM review, which is not available for technological patents. The Federal Circuit reversed, finding the PTAB decision to be internally inconsistent: "the claimed subject matter is directed to a specific improvement to the way computers operate… the patents are also for a

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