Eligibility of Patents for CBM Review is Narrowed: Unwired Planet v. Google

Covered Business Method (CBM) Patent Review is a special PTO procedure designed to allow reexamination of a certain class of patents popularly criticized for their overbreadth and lack of “true innovation.” These are the so-called “business method patents.”

By statute a patent is eligible for CBM review if it claims a method for “data processing . . . used in the practice, administration, or management of a financial product or service” but specifically excepting patents for “technological inventions.” This is sort of vague, and that leads us to the Unwired Planet v. Google decision.

Unwired Planet sued Google on a patent for restricting an app’s access to location information. Google asked the PTO to reexamine the patent in a CBM proceeding because the patent says the app might be associated with sales services such as a restaurant or store. The PTO decided that the patent was in fact “incidental or complementary to the financial activity” because location services could involve an eventual sale of services.

This analysis didn’t work for the Federal Circuit panel.

The main problem was the PTO never adopted this “incidental or complementary” language in a formal regulation. That language isn’t in the statue, and applying it now against Unwired Planet was improper.

But perhaps more importantly, the panel emphasized:

[I]t cannot be the case that a patent covering a method and corresponding apparatuses becomes a CBM patent because its practice could involve a potential sale of a good or service. All patents, at some level, relate to potential sale of a good or service.

(emphasis added)

Thus, “[i]t is not enough that a sale has occurred or may occur, or even that the specification speculates such a potential sale might occur.”

Net result: the PTO should not have accepted the patent for CBM review. Reversed and remanded.

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