Covered Business Method (CBM) patents are patents that claim a method, apparatus, or operation used in the practice, administration, or management of a financial product or service. CBM patents do not include patents for “technological inventions,” which are those patents that claim a novel and unobvious technological feature that solves a technical problem using a technical solution. Technological patents will be identified on a case-by-case basis.
CBM review is similar to post-grant review, but there are notable differences between the two. For example, only a party charged with infringement of a CBM patent can initiate a CBM challenge, although under the final rules, a party that has been served a cease and desist letter is likely to be considered to have been charged with infringement for purposes of petitioning for post-grant review of a CBM patent. Additionally, CBM review can be filed only when post-grant review is unavailable (e.g., nine months after issuance). And the prior art available for CBM review of a patent granted under the first-to-invent rules (i.e., patents filed prior to March 16, 2013) is limited to that defined in section 18(a)(1)(C) of the America Invents Act. CBM review also includes unique estoppel provisions that are less extensive than post-grant review. Specifically, estoppel under CBM review extends only to grounds actually asserted but not to grounds that reasonably could have been asserted.
The procedural schedule for CBM is included below:
In part III of our Post-Grant for Practitioners webinar series, the co-chairs of Fish & Richardson’s post-grant practice group addressed two important decisions by the Patent Trial and Appeal Board’s (PTAB) relating to CBMs, namely the Liberty Mutual Insurance Co. v. Progressive Casualty Insurance Co. and the Versata Development Group, Inc. v. Rea cases. In Liberty Mutual, the PTAB declined to grant a CBM petition on grounds it deemed redundant, setting forth a framework for its analysis that we’ll review while also exploring the implications for petition drafting. In Versata, the PTAB addressed the meaning of a “covered business method patent” while initiating a trial under the Transitional Program for Covered Business Method Patents. In addition, the webinar features a survey of early Motions for Stay that follow from parallel post-grant proceedings, and a discussion of some early discovery-related issues. View the full webinar below: