Companies considering challenging patents under the America Invents Act’s covered business method patent review program may need to reconsider after a Federal Circuit ruling Monday restricted the scope of the program, likely making fewer patents subject to review, attorneys say.
The appeals court ruled that the Patent Trial and Appeal Board’s expansive view of what types of patents can be challenged in so-called CBM reviews runs afoul of limits Congress set in the AIA, and vacated a decision in which Google Inc. secured the invalidation of an Unwired Planet LLC patent.
The AIA states that the program was designed for patents related to financial products or services, but the PTAB and the U.S. Patent and Trademark Office have interpreted it broadly to cover many patents related to money. The program has been a popular way for accused infringers to challenge patents, but the Federal Circuit ruling could shut down many such reviews.
“This decision makes the covered business method review program much less attractive,” said Kia Freeman of McCarter & English LLP. “Unless you have a patent that very clearly qualifies, I think you want to consider a different type of review.”
Petitioners now face a risk of successfully invalidating a patent at the PTAB, only to have the decision thrown out on appeal if the Federal Circuit believes the patent wasn’t eligible for review, which “really doesn’t look good for covered business method reviews,” she said.