Here’s the latest.

CBM Review: A Postmortem

Reported by Randy J. Pummill and George E. Quillin at National Law Review

The covered business method (CBM) review statutorily expires on September 15th as a part of the Smith-Leahy America Invents Act passed in 2011. Randy J. Pummill and George E. Qullin examine the decline of CBM review as the PTAB received only eight CBM filings this year. The statutory language indicated a narrow reading of a “business method patent” (and subsequently a limited use), but the Federal Circuit’s decision in Versata Development Group, Inc. v. SAP America, Inc. allowed more patents to fall under the designation. The broad reading increased the number of CBM filings which peaked in 2015 with over 200 filings. However, this breadth ultimately caused confusion which was compounded as the PTAB and Federal Circuit clashed about the outcome of several CBM reviews.

[T]he lack of clarity leaves many patent owners and would-be challengers without a clear understanding of the risks involved in pursuing CBM review.  As a result, many are unwilling to spend the resources to file a CBM review when the risks that the challenged patent would be found to be not eligible for CBM review are too great.  

Oracle Loses JEDI Appeal

Reported by Kirsten Errick at Law Street Media

Kirsten Errick recaps a decision issued by the Federal Circuit this week. Oracle protested the award of a cloud-computing contract, the Joint Enterprise Defense Infrastructure (“JEDI”), to a single provider, Microsoft, as opposed to multiple providers. Oracle claims that the Department of Defense impermissibly tailored the requirements for the contract reward to Amazon and Microsoft. However, the Federal Circuit ruled that the Department of Defense correctly followed procedure and fairly evaluated all bidders. The Federal Circuit also noted Oracle’s complaints about potential conflicts of interest, but ultimately did not find them meritorious.

In sum, the Federal Circuit affirmed and held that Oracle was not harmed in the JEDI contract bid process or by alleged conflicts of interest because Oracle did not satisfy the requirements and would not have qualified to bid regardless.  

For more information, see our coverage.

Federal Circuit Has Jurisdiction over Constitutional Questions in AIA Appeals

Reported by Brian Jones at JD Supra

The Federal Circuit issued an opinion in a case of first impression that addressed whether a district court has jurisdiction over constitutional challenges to the PTAB’s decision in an inter partes review. Security People posited that a district court, and not the PTAB, can review findings of fact forming the basis of a constitutional challenge. According to Security People, the Federal Circuit must resolve the merits of its claim before addressing the constitutional challenge.

The Court found that in the rare instances where fact finding would be necessary for resolving a constitutional challenge, the Federal Circuit had authority to decide those factual issues through judicial notice.

The Federal Circuit ultimately relied on the text, structure, and history of the America Invents Act which grants authority to the Federal Circuit over PTAB decisions without exceptions for constitutional issues. The Court also pointed out that this framework overrides the APA’s general authorization for the district courts to review actions by administrative agencies.

For more information, see our coverage.