Posts Tagged: "covered business method review"

PTAB Invalidates Nasdaq Patent Claims on Automated Securities Trading in Series of CBMs

On October 9, the Patent Trial and Appeal Board issued a final written decision in a covered business method (CBM) review which invalidated all 38 claims of Nasdaq’s U.S. Patent No. 7747506, Recipient Status Indicator System and Method, challenged by Miami International Holdings (MIAX), on Section 101 grounds for being directed to unpatentable subject matter. The decision is the latest in a series of CBM reviews at the PTAB which stem from a district court patent infringement proceeding targeting fintech technologies employed by MIAX’s technological securities trading platform.

O’Malley and Chen Disagree in Part with PTAB Determination in CBM Review, Distinguishing Chamberlain

The Federal Circuit issued a precedential decision on Wednesday reversing-in-part, vacating and remanding a decision of the Patent Trial and Appeal Board that had found certain claims of U.S. Patent No. 8,908,842 (the ’842 patent) subject to covered business method review, patent ineligible and unpatentable for obviousness. SIPCO LLC v. Emerson Electric (Fed. Cir., Sept. 25, 2019). Judge Reyna dissented in part. In a footnote, the Court distinguished its reasoning from its finding in the garage door-opener case, Chamberlain Group, Inc. v. Techtronic Industries Co., in which the Court found claims reciting wireless communication of status information about a movable barrier operator to be directed to an abstract idea. “Unlike in Chamberlain, SIPCO’s claimed invention does not simply use “well understood,” off-the-shelf wireless technology for its intended purpose of communicating information,” said the Court.

Trading Technologies Files New Request for En Banc Rehearing of ‘Ladder Tool’ Patent Decision at Federal Circuit

On August 15, Trading Technologies International, Inc. (TT) petitioned the Federal Circuit again for panel rehearing and rehearing en banc of its recent decision that found TT’s Ladder Tool invention to be subject to the USPTO’s Covered Business Method (CBM) review process and abstract under Section 101. TT argues that the PTAB did not follow the precedent of the Supreme Court or Court of Appeals for the Federal Circuit (CAFC) when reviewing its patent claims. The latest brief relates to U.S. Patent No. 7,725,382 (the ‘382 patent), while TT’s request for rehearing filed July 31 related to U.S. Patent No. 7,693,768.

Forging Ahead After Losing an Alice Appeal

It’s tough to fight on after losing an Alice appeal, but that’s just what most applicants are doing. An “Alice appeal” is an appeal of a patent rejection under 35 U.S.C. 101 for lack of statutory subject matter. The major field of these patents is business methods (class 705). More than half of business method applicants that are losing Alice appeals are taking action to keep their applications alive. The reasons for renewed hopes include the new 2019 Subject Matter Eligibility Guidance that came out in January, as well as the current movement in Congress to clarify 35 U.S.C. 101. With hope on the horizon, now is not the time to give up. The table below gives some recent examples of how both large and small applicants are continuing to prosecute their patent applications after losing an Alice appeal.

Federal Circuit Affirms PTAB Ruling Finding Graphical User Interface Claims Patent Ineligible

In Trading Technologies International, Inc. v. IBG LLC, Interactive Brokers LLC (2018-1063), the Federal Circuit agreed with the Patent Trial and Appeal Board (PTAB) that the contested claims of Trading Technologies International, Inc’s patents for graphical user interfaces (GUI) for electronic trading, numbers 7,533,056, 7,212,999, and 7,904,374, were eligible for covered business method (CBM) review and also patent ineligible. The claims at issue were claims 1–15 of the ’056 patent, claims 1–35 of the ’999 patent, and claims 1–36 of the ’374 patent. To be eligible for CBM review, a patent must 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, except that the term does not include patents for technological inventions.” In previous Federal Circuit cases, Trading Technologies (TT) patents had been determined not eligible for CBM review as they were technological inventions or were found patent eligible. The court rejected the argument that this weighed in favor of finding similarly in the present case. “We are not bound by non-precedential decisions at all, much less ones to different patents, different specifications, or different claims,” wrote the Court.