Wednesday, May 27, 2015

Buying and Selling Intellectual Property Rights Constitutes “Financial Product or Service” for CBM Review

The Board granted institution of covered business method review of an IP rights management patent, finding the patent was directed to a financial product or service. "[T]he [challenged] patent states that the invention provides an integrated rights management and licensing system and method involving the buying, and selling of intellectual property rights. . . . Patent Owner contends that none of the challenged claims expressly recites a method or apparatus for performing data processing or other operations used in the practice, administration or management of a financial product or service. We do not interpret the statute as requiring the literal recitation of the terms data processing of financial products or services. . . . The suggestion to adopt a definition limiting financial services or products to a particular industry, financial services industry, was considered but not adopted during rulemaking as the statute does not limit the program expressly to financial institutions, and such a narrow construction of the statute would be contrary to the legislative history of Section 18. . . . [T]he [challenged] patent claims systems and methods that are directed to a financial activity—buying and selling intellectual property rights—that constitutes a financial product or service under § 18(d)(1)."

Petition for Covered Business Method Patent Review by Getty Images (US), Inc., CBM2015-00023 (PTAB May 21, 2015, Order) (Tierney, APJ)

Is the PTAB more likely to institute an IPR if the district court stays concurrent litigation?

A Docket Navigator subscriber recently asked us this question so we decided to investigate. As it turns out, there appears to be some correlation between a district court’s decision to stay a case pending IPR and the outcome of the PTAB’s institution decision. Click here to view a summary of our findings.

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