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23 February 2017Patents

Fed Circuit tackles CBM scope in Secure Axcess suit

The US Court of Appeals for the Federal Circuit concluded that the Patent Trial and Appeal Board (PTAB) adopted a statutory definition of covered business method (CBM) patents that went too far.

In an opinion handed down on Tuesday, February 21 in Secure Axcess v PNC Bank, the court reversed the finding that a patent owned by internet security company Secure Axcess was a CBM.

Secure Axcess challenged a final written decision of the PTAB that held that its patent was a CBM.

The dispute concerned US number 7,631,191, called “System and method for authenticating a web page”.

According to the patent, the “invention relates generally to computer security, and more particularly to systems and methods for authenticating a web page”.

The board also held that claims 1–32 of the ‘191 patent were unpatentable because they would have been obvious in light of the cited prior art.

However, on appeal, Secure Axcess challenged the board’s determination on the CBM patent and obviousness.

The court said: “We agree with Secure Axcess on the first point and therefore do not reach the second,” adding that it recently concluded in Unwired Planet v Google (November 2016) that the board’s adopted characterisation of CBM scope in that case was contrary to the statute.

In Unwired Planet, the court said that the PTAB’s interpretation of which patents are subject to CBM reviews renders the limits that Congress placed on the definition as “superfluous”.

The court in Secure Axcess added that it drew the same conclusion as Unwired Planet, and that the ‘191 patent is outside the definition of CBM that Congress provided.

Circuit Judge Jay Plager, providing the opinion for the court, added that the court would not remand the case to the PTAB for further consideration of whether the patent qualifies as a CBM.

He said that remanding would be a “wasteful act, since an affirmative finding, applying the proper statutory definition, that this patent so qualifies would be … arbitrary or capricious”.

In a dissenting opinion, Circuit Judge Alan Lourie said he recognised that the PTAB’s “overly broad language” has now been “cabined” by Unwired Planet.

“That curtailment should not cause this panel to topple over an otherwise sound decision by the board in this case that the ‘191 patent is directed to financial management,” he said.

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22 November 2016   The Patent Trial and Appeal Board’s interpretation of which patents are subject to covered business method reviews renders the limits Congress placed on the definition as “superfluous”.