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Articles

PTAB First! CBM Review Denied on Jurisdictional Grounds

May 1, 2014

Articles

PTAB First! CBM Review Denied on Jurisdictional Grounds

May 1, 2014

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Written by John Phillips

Experian Marketing Solutions, Inc. v. RPOST Communications Ltd, CBM2014-00010, Paper No. 20 (PTAB Apr. 22, 2014)

In a first for the Patent Trial and Appeal Board (“PTAB”), the Board found a patent challenged under the Covered Business Method (“CBM”) Review procedure to be ineligible for review because Petitioner failed to establish that the challenged patent did not claim a “technological invention.” This decision is notable because it marks the first time in 69 CBM institution decisions from inception of CBM review to date that the Board has found a challenged patent ineligible for CBM review.

By statute, a patent is eligible for CBM review only if the following jurisdictional prerequisites are established by the CBM Review Petitioner (i.e., the party seeking CBM Review): (1) the patent claims are directed to “financial products or services,” and (2) the patent claims do not recite a “technological invention.” Here, the Board found that Petitioner had sufficiently established that the patent satisfied the “financial” prong of the jurisdictional inquiry but failed to establish that the patent did not claim a “technological invention.”

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