Petition for Covered Business Method Patent Review by Liberty Mutual Insurance Company, CBM2012-00002 (PTAB January 23, 2014, Order) (Chang, APJ)
Monday, January 27, 2014
Patent May be Subject to CBM Review With Only One Claim Directed to Covered Business Method
In a Final Written Decision, the Board rejected the patent owner's argument that "the Board must conduct a claim-by-claim analysis and determine that every challenged claim is directed to a covered business method, before it is authorized . . . to review all of the challenged claims." "[The patent owner] asserts that the Board exceeded its 'statutory authority to institute review of any patent claim which the Board has not determined to be directed to a covered business method.' [Patent owner's] argument is based on an erroneous statutory construction that interprets the word 'patent' in the statutory provision on what is subject to review as 'claim.' We decline to adopt such an interpretation. . . . [W]hen specifying the subject matter for review, Congress could have used the language 'a claim that is directed to a method or corresponding apparatus' rather than 'a patent that claims a method or corresponding apparatus.' Section 18(d)(1) of the AIA sets forth a single threshold based on just one claim—the satisfaction of which qualifies an entire patent as eligible for review—rather than a test that must be applied on a claim-by-claim basis to justify review of each claim. Therefore, a patent is eligible for a covered business method patent review if the subject matter of at least one claim is directed to a covered business method."