Federal Circuit refuses to rehear Google CBM case

The full US Court of Appeals for the Federal Circuit has refused to rehear a decision that set limits on which patents fall within the scope of the covered business method (CBM) review regime.

The court denied an appeal from Google to rehear en banc a November 2016 decision which had vacated the invalidation of a patent owned by Unwired Planet, a technology company and licensing platform.

According to the previous decision, the Patent Trial and Appeal Board’s (PTAB) interpretation of which patents are subject to CBM reviews was too “broad”, rendering the limits Congress placed on the definition as “superfluous”.

Under the America Invents Act, a CBM patent is defined as one that “claims 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”.

The PTAB, when reviewing Unwired Planet’s patent, had applied the “incidental to” and “complementary to” language from a US Patent and Trademark Office policy statement, instead of the statutory definition, according to Circuit Judge Jimmie Reyna.

Yesterday, the court refused to rehear the dispute en banc and rejected a panel rehearing.

Circuit Judge Todd Hughes, speaking for the court, said that rehearing the case was “unnecessary”.

The en banc court is set to revisit the scope of an “analogous bar on judicial review” from inter partes review proceedings in Wi-Fi One v Broadcom Corp.

This is in light of the US Supreme Court’s decision in Cuozzo Speed Technologies v Lee, which held that it was reasonable for the PTAB to use the broadest reasonable interpretation standard when assessing patent claims.

“Our decision there and any subsequent Supreme Court review will likely affect the question of whether

Versata Development Group v SAP America  is and should remain good law. Thus, rehearing here is unnecessary,” said Hughes.

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