Stay jurisprudence from the Federal Circuit is a legacy of the Transitional Program for Covered Business Method (“CBM”) Review. Prior to the America Invents Act (AIA), the Federal Circuit rarely heard appeals related to stay motions because of the final-judgment rule. However, under the CBM statute, a party to a CBM review was allowed to take an immediate interlocutory appeal from a district court’s decision regarding whether to stay an infringement case pending a CBM review. The CBM statute was intended to increase the predictability of context-dependent stay decisions and to increase the grant rate of CBM-related stay motions. At the sunset of the eight-year CBM program on September 16, 2020, we reflect on the CBM stay jurisprudence developed around this statute.
Online Symposium: The CBM Program Should Expire This Week as Provided by Law—Effective Alternatives for Robust Administrative Reviews of Issued Patents Remain
Guest post by Ron D. Katznelson, Ph.D.
The Transitional Program for Covered Business Method Patent Review (CBMR) was enacted in § 18 of the America Invents Act (AIA) for reviewing issued Covered Business Method (CBM) patents – patents that claim “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 AIA also set a sunset expiration date for CBMR on September 16, 2020. For the reasons explained below, CBMR should expire this week as intended and enacted in the AIA. As further explained below, those who wish to challenge CBM patents after that date, can effectively do so using any of the three alternative administrative proceedings at the US Patent & Trademark Office (PTO) that remain available with no sunset expiration, or by federal court action.
Guest post by Saurabh Vishnubhakat
As the Transitional Program for Covered Business Method (“CBM”) Review reaches its sunset date, it is useful to consider the design and implementation of this program and what lessons can be drawn from its eight-year run. Of particular interest are two unusual aspects of CBM review that have interacted with each other in instructive ways.
As we previously reported, last week in Facebook, Inc. v. Windy City Innovations, LLC the Federal Circuit granted panel rehearing, issued a modified panel opinion, and denied en banc rehearing. Facebook sought rehearing to challenge the panel’s decisions concerning joinder in inter partes review proceedings, as well as the broader question of whether the Federal Circuit owes deference to interpretations of statutory provisions made by the U.S. Patent and Trademark Office’s Precedential Opinions Panel. Here we summarize the modified panel opinion.
The Transitional Program for Covered Business Method (“CBM”) Review will come to an end on September 16, 2020, after eight years. In our view, the CBM program’s brief history is a cautionary tale about the costs that are imposed on the system when the Supreme Court delays in rectifying a mistake.
I’m pleased to announce that, this week and next, Fed Circuit Blog will host its first online symposium. This symposium will focus on the anticipated sunset of the Patent Trial and Appeal Board’s statutory directive to hold “covered business method review” proceedings—hearings to review the patentability of claims included in “covered business method patents.” The Federal Circuit, of course, hears appeals from parties dissatisfied with judgments rendered by the PTAB in these CBMR proceedings, and over the last several years the court has issued a number of opinions in this context. Here, I provide background on these proceedings and introduce some of the topics participants in our symposium will address in their guest blog posts.
The Federal Circuit and Court of Federal Claims entered a joint order today extending their prior order of June 26, which limited access to the National Courts Building, until September 14. The Federal Circuit also issued a notice with additional information related to the order. Here is text from the court’s notice.
Jeffrey A. Lefstin serves as a Professor of Law at the University of California, Hastings College of the Law. Prior to serving as a professor, he clerked for Federal Circuit Judge Raymond C. Clevenger III. Prof. Lefstin holds a Ph.D. in Biochemistry from the University of California San Francisco and a J.D. from Stanford Law School. He has written extensively and testified before Congress concerning the doctrine of patent eligibility.
Though described by the majority as “narrow,” the American Axle v. Neapco panel opinion sets forth two far-reaching expansions in the law of patent eligibility.
Paul R. Michel served as a Circuit Judge of the U.S. Court of Appeals for the Federal Circuit from 1988 to 2010, including a six year tenure as Chief Judge from 2004 to 2010. Here, he reflects on judicial treatment of patent eligibility law—from the Supreme Court’s decision in Mayo Collaborative Services v. Prometheus Laboratories, Inc. in 2012 through Friday’s set of opinions in American Axle & Manufacturing, Inc. v. Neapco Holdings LLC.
This morning the Federal Circuit issued an announcement reminding the public that its most recent amendments to its Rules go into effect today and apply to all cases filed or pending on or after today. Based on new provisions in the Rules, the Clerk of Court today also issued updated versions of the court’s forms, Electronic Filing Procedures, Guide for Oral Argument, and Guide for Unrepresented Parties. The Clerk also issued two notices, one establishing rates for taxation of costs and another addressing electronic filing for unrepresented parties. Here is the text of this morning’s announcement.