Survey: Should We Extend the Covered Business Method Review Program?

The Covered Business Method Review program is a transitional program that sunsets in 2020.  These AIA trails have been extremely effective at knocking-out patents that qualify for review.   The question of the day is whether Congress should extend and possibly expand the program beyond the 2020 deadline and beyond the non-technological financial services limitations.

Dennis Crouch

About Dennis Crouch

Law Professor at the University of Missouri School of Law. Co-director of the Center for Intellectual Property and Entrepreneurship.

41 thoughts on “Survey: Should We Extend the Covered Business Method Review Program?

  1. One cannot even get an CBM instituted unless the claims violate 101.

    A court, on motion of the patent owner, should require parties seeking to file a CBM to also file a motion for summary judgment under 101. The court could rule on that motion, and provide summary judgment, long before the CBM is instituted either invalidating the claims concerned under 101, or providing guidance to the PTAB as to why the claims are directed to technology and therefor are not properly subject to a CBM. While the PTAB is not “estopped” by rulings of a court, the petitioner certainly is. A court could and should order the petitioner to withdraw from further participation in the CBM in order to respect the holding of the court.

    This would set up a nice constitutional crisis if the PTO went amok and began defying court orders.

    1. Please forgive the possible naïveté of this question, but is it within a court’s inherent powers to order one party to file a summary judgment motion? Maybe this is perfectly ordinary, but I have never been involved in a litigation where party A tried to compel party B to seek summary judgement against party A. That seems strange to me.

      1. Well, Greg, the Court could order the infringer not to file a CBM unless they have previously filed a motion to dismiss under 12(b)(6) alleging the claims are invalid under 101.

        If the court holds the patent invalid, no CBM, no waste of public resources.

        1. Doubled down is all that you have done, Ned – and you did not answer Greg’s question.

          Combined with your apparent disregard for Due Process for those on your Windmill Chase list, your credibility here suffers immensely.

      2. Well Greg, I was actually part of a case that went to the Supreme Court (I wrote the petition for writ of certiorari) where the District Court had enjoined a party from proceeding in an action filed in another court involving a different infringer, but essentially the same issues were going to be litigated in both fora. The issue was prejudice because the plaintiff/infringer would have to litigate in both fora, one of them inconvenient, but for the injunction.

        Codex Corp. v. Milgo Electronic Corp., 553 F.2d 735 (1st Cir. 1977).

    2. One cannot even get an CBM instituted unless the claims violate 101.

      Because “instituted” means “violated,” so why continue?

      And this is coming from the guy crying out for Due Process…?

      Ned, your Windmill is showing.

      1. anon, business methods are not statutory unless the claims include novel technology, and that might include novel software specifically claimed. (I am thinking here of Versata.)

        Thus, a CBM cannot even be instituted properly unless the claims are already judged to be invalid under 101.

          1. cannot even be instituted properly unless” <== this is clear error.

            The institution decision point is just not how you are attempting to portray it.

    1. Now here is an interesting question.

      Suppose that there are a lot of votes for the IPO proposal to revise 101, but not quite enough to reach 50%+1. A few of the hold-outs—a large enough number to put the bill over the top—are willing to vote for the proposal if it is revised to open IPRs to consider 101 challenges.

      Would you support that compromise bill, where each side gets something that they want?

      1. ? Why would he accept such a pyrrhic victory?

        The 101 that would be expaneded into would not be the 101 that he envisions is needed to quash all those bad people threatening those playing in the fields of rye under his self-appointed watch.

        He constantly evinces an Ends justify the Means approach to this topic, and it matters not to him how he gets what he feels, only that he gets what he feels.

      2. LOL

        That’s your idea of a “compromise”?

        We’re going to gut the statute that’s doing most of the heavy lifting right now to get rid of the worst junk that’s out there. But after it’s gutted and toothless, we’ll “open up” IPRs so you can theoretically use the statute to challenge on that basis. Sure. Great “compromise.”

        Again, Greg: can you demonstrate to everyone that you have at least an ounce of understanding of the actual issues relating to subject matter eligibility? You’ve been on the blog for a couple years now and I’ve yet to see you come to terms with the fundamentals.

        And that’s setting aside your bizarre statements about the “art” of instructing computers to process data and what we can expect from programmed computers in 20 years.

        1. LOL That’s your idea of a “compromise”?

          So that is a “no,” then? Fair enough, of course. I confess, I cannot know what you think on the point except by asking. It is no good trying to put on my “MM thinking cap.” It just does not fit my head. In any event, not all compromises are acceptable compromises, and if this not an acceptable compromise then that is all that is to be said on the subject.

          Greg: can you demonstrate to everyone that you have at least an ounce of understanding of the actual issues relating to subject matter eligibility?

          Of course not. As you have already sussed out, I am both stupid and evil, as are all your interlocutors who disagree with you on any point at any time. We both know this, so there is no sense in maintaining any sort of pretense to the contrary.

          Surely the Lord has sent you among your colleagues as a latter day Jeremiah to chastise us for our scelerity. Perhaps regrettably, my heart is—as yet—too hard to turn from my wickedness. You will have to maintain the streams of vituperation a bit longer, it seems.

        2. You’ve been on the blog for a couple years now and I’ve yet to see you come to terms with the fundamentals.

          My, the Accuse Others Of That Which Malcolm Does are in full bloom this fine spring day.

      3. Suppose that there are a lot of votes for the IPO proposal to revise 101

        ROTFLMAO

        All it takes is a couple simple questions to destroy the credibility of anybody who supports that bill.

        Please, more laughs! It’s Friday.

        1. You and Greggie Weggie should hold hands and tell everyone the issue presented by Prometheus’ claims in plain English.

          Let’s see you do it.

          If you can’t do it, then you’re not very intelligent. If you won’t do it, then you’re just dishonest hacks. Or both. So step up. Put on those big boy pants. Gosh knows the cl0wns who wrote the bill are never going to find the brains or the guts to come clean. Maybe you two can surprise everyone.

          1. If you can’t do it, then you’re not very intelligent. If you won’t do it, then you’re just dishonest hacks. Or both.

            [Raising hand and jumping up and down in his seat] “Oh, oh, I know. Call me. It’s ‘both,” isn’t it?”

  2. Assuming, arguendo, that one believes the CBM review program was a good idea in the first place:

    How many CBM reviews are pending? Has that number been trending up or down? If it’s been trending down and is also low in absolute terms, then the program would appear to have done its job and could sunset. Otherwise a limited extension would seem sensible.

    1. If it’s been trending down and is also low in absolute terms, then the program would appear to have done its job and could sunset.

      Or it could be that the CAFC has been actively neutering the CBM statute.

      Gee, I wonder which is correct?

        1. What, do you think the CAFC has been expanding what’s covered under CBM?

          LOL

          Go ahead, “anon.” You’re a very serious person! A real “expert.” Explain it to everyone.

          1. Expanding and neutering are not the full sets of possible actions.

            Your “so serious” poker tell confirmed.

            C’mon man, at least pretend to try to post something inte11igent.

            1. Expanding and neutering are not the full sets of possible actions.

              LOL

              Tell everyone the “full sets”, “anon”, and tell everyone what you think has happened over the past few years as the CAFC has interpreted the statute.

              Go ahead! You’re a very serious person! We’re all just dying to know what you think.

              LOL

  3. So, if I see it right, the program is currently limited to:

    “….non-technological financial services”

    OK. Why is “financial” in there? What is the reason for having it in there? Does one want to shut patents out of the world of finance or the world of non-technology?

    My 2 cents: Congress thought it wanted to keep patents out of finance but now, with the passage of time, people are realising that they want patents limited to technology, and it is no longer relevant, whether they impinge on the world of finance.

      1. And, for my part, anon, I’m still waiting for the courts to come up with a non-circular definition of “obvious”. They have surely by now had enough time to dream one up, haven’t they? But, of course, I expect the wait to continue as long as there is patent law.

        As to the word “invention”, back in 1973 Europe wisely and deliberately refrained from including one in the EPC. Why? Because its drafters were very much aware that any attempted definition would soon go out of date and inappropriate, given any continuation in the voracious advance of what they were pleased to identify as “technology”.

        For that very reason, it is also very wise of the courts not to attempt any definition of “technology”.

        If your deprivation burns so much, anon, I suppose you could always consult a dictionary.

        It’s what the reasonable person would do, isn’t it? Anybody who is unsure what the word “technology” means.

        But perhaps you need a definition of “dictionary”. I would say “A book you should consult, whenever you encounter a word and simply cannot advance until you have got hold of a definition of that word”.

        1. As to defining “obviousness” I am not sure that such is the duty of the courts, MaxDrei (leastwise, in the US, where our Congress acted to remove the ability of the courts to fashion a common law definition of “invention.”

          Our Congress had reached a point in which they were fed up with the courts (the Court, in particular, had turned venomous to patents in the 1930s and 1940s – recall the Court’s own statement of “The only valid patent is one that has not yet appeared before us.”)

          It was in that context that Congress (under the input from a certain man named Rich) opted instead to go to an obviousness requirement.

          It is doubtful that Congress would take away a power and then turn around and effectively give that same power back to the courts.

          given any continuation in the voracious advance of what they were pleased to identify as “technology”.

          Sorry MaxDrei, but even this attempt resolves into a circular reasoning.

          As to consulting a dictionary – likewise, (and only too often) we find circularity there as well. Further, my consulting a dictionary does not and will not provide the context of understanding for a legal discussion. Your attempt at being smarmy falls short. At least you were “polite” about it, eh?

          1. Ned I forget which one was Hotchkiss. But did it attempt a dictionary definition of “obvious” or did it just offer a way of approaching the question: Obvious Y/N?

              1. Well yes, Ned. An early example of a mere collocation (a list of technical features which, in aggregate, does what one would expect it to do) as opposed to a new combination which delivers something interesting. That’s trite banal unremarkable stuff isn’t it Ned, and not enough to dispose of all cases where obviousness is alleged.

                Paul Cole’s book encapsulates patentability as “A difference that makes a difference”. The first mention of “difference” alludes of course to novelty and the second to what it takes to distance the claimed subject matter from obviousness.

                1. Unfortunately, MaxDrei,

                  “A difference that makes a difference”

                  The first difference is objective.
                  The second difference is necessarily subjective.

                2. I thought the most interesting point was that it was known that clay could be useful in doorknobs and therefore the combination was merely the work of an ordinary mechanic. This support your notion that the trier of obviousness must find in the prior art some suggestion/teaching that the combination/difference was of a type known.

                  I find it interesting also that Supreme Court in Graham said that Congress was intending to enact the holding in Hotchkiss, in the cases following it. But then they overturned the Federal Circuit that had adopted a requirement time that proof of obviousness must involve some showing in the prior art that the difference/combination was known, taught, suggested or motivated.

                3. interesting also that Supreme Court in Graham said that Congress was intending to

                  ALWAYS to be taken with a grain of salt when an addict is saying what someone else (with actual authority) was “intending.”

    1. The explanation is easy enough, although I hope you are not eating lunch right now, because it is kind of nauseating.

      The AIA created two kinds of post-grant trials: IPRs; and PGRs. IPRs are available for any patent, but only on novelty or obviousness grounds (and then only for printed document art, not on-sale or public knowledge art). PGRs are only available for patents with an AIA filing date, but they are empowered to consider not only novelty and obviousness, but also 101 subject matter eligibility and 112 enablement/support/clarity concerns.

      There are, of course, a whole mess of patents out there that are easier to tank under 101 than under 102/103, and all sorts of industries wanted existing, pre-AIA patents to be subject to 101 challenge in these AIA trials. The financial industry, however, was unique in being willing to pay for a special carve out that would make pre-AIA patents subject to 101 challenge. Therefore, Congress wrote a carve out for them alone.

      You see, if they had made this 101-challengeability available to everyone (regardless of whether they pay), then why would anyone pay in the future. You will not buy the cow if you can get the milk for free, as they say. So the carve out is restricted to “financial” patents.

      If you cannot understand what that means, do not worry. Congress understands (it means “any patent that is a nuisance to the ones who paid up”), and the courts have been broadly able to understand the “intention” of Congress, at least for as long as they need to (given that these things will sunset in 2020).

      There is really no need to keep the program alive past 2020. The financial industry has already used the program to clear out most of the pre-AIA patents about which they care. That is why CBM petitions are declining in recent months. From here on out, there are only post-AIA patents remaining for them to challenge, and the post-AIA patents can be PGR’ed anyway, even without a special CBM carve-out.

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