Retirement Capital Access Mgm’t Co. v. U.S. Bancorp and Michelle Lee, on petition for writ of certiorari 2015.
The question presented here stems directly from the posts that Prof Hricik and I wrote back in 2012 and 2013.
- David Hricik, Are the Courts Correct in Their Assumption that a Patent Issued on Non-patentable Subject Matter is Invalid?
- David Hricik, Why Section 101 is Neither a “Condition of Patentability” nor an Invalidity Defense
- Dennis Crouch, Can a Third Party Challenge Section 101 Subject Matter Eligibility in the USPTO’s new Post-Grant Review Procedure?
RCAM presents the following question:
The AIA limits the [PTAB’s] jurisdiction with respect to CBM review to challenges based on any ground that could be raised under paragraph (2) or (3) of 35 U.S.C. § 282(b). Paragraph 2 provides that a party may seek to invalidate a patent or claim on any ground specified in part II of Title 35 as a condition for patentability.
The questions presented arise from the Federal Circuit affirming, without comment, the Board’s holding that 35 U.S.C. § 101 is a ground specified in part II of Title 35 as a condition for patentability and therefore constitutes a proper basis for review in a CBM proceeding, and from the Federal Circuit affirming the Board’s application of § 101 to the patent claims at issue.
1. Whether subject matter eligibility under 35 U.S.C. § 101 is a ground specified as a condition for patentability under 35 U.S.C. § 282(b)(2).
2. Whether the Board errs when it invalidates issued patent claims posing no risk of pre-emption under the abstract idea exception to patent eligibility.
Read the petition: Petition101.