How Fed. Circ. Missed The Intent Behind CBM: Part 1

By Robin McGrath (August 14, 2017, 11:37 AM EDT) -- On June 6, 2017, the Federal Circuit denied several petitions seeking either panel rehearing or a rehearing en banc in connection with the Federal Circuit's decision in Secure Axcess LLC v. PNC Bank National Association et al., 2016-1353, (Fed. Cir. June 6, 2017), the case in which the court greatly limited the type of patents eligible for review under the covered business method (CBM) patent program, §18 of the America Invents Act. In the petitions, several banking entities that had been sued in district court for infringement of a patent owned by Secure Axcess asked the court to reconsider its narrow interpretation of §18(d)(1) — which defines CBM patents — to require that a CBM patent contain at least one claim that recites a use in the "practice, administration or management of a financial product or service." The petitioners argued that under a proper interpretation of the statutory definition of a CBM patent, as adopted verbatim by U.S. Patent and Trademark Office regulation, a CBM patent need only claim a "method or corresponding apparatus for performing data processing or other operations" that is in fact "used in the practice, administration or management of a financial product or service," even if such use appears nowhere in the claims. That is, the petitioners asserted that as long as the claimed method or apparatus for data processing or other operations is one that is actually used in the "practice ... of a financial product or service," the claims need not limit the method or apparatus to such use for the patent to qualify as a CBM patent....

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