CBM Review Keeps its Narrow Scope: Narrowly Surviving En Banc Challenge

Secure Axcess v. PNC Bank (Fed. Cir. 2017) (en banc denied)

In its original panel decision, the Federal Circuit narrowly construed the Covered Business Method statute – holding that CBM review is only available when the claims themselves are directed toward a financial service.  I previously wrote:

In its decision, the court walked through the statute – noting that the focus is on the claimed invention rather than the asserted marketplace or potential uses of the invention.  Thus, the relevant question is not how the invention is used, but rather whether the claims are directed to a financial service.  According to the court, any other reading, would “give the CBM program a virtually unconstrained reach.”

The challengers then petitioned for en banc review.  That petition has now been denied – although over vigorous dissent.  (6-5 denial, with Judge Stoll not participating). As the Federal Circuit continues to be divided, it is most interesting to consider the sides that have formed:

  • Supporting Rehearing (and broader scope of CBM review, and broader 101 application): Chief Judge Prost and Judges Lourie, Dyk, Wallach, and Hughes
  • Against Rehearing (for narrower CBM review and reduced 101 application): Judges Moore, Taranto, O’Malley, Reyna, Newman, and Chen.

Judge Plager also sat on the original panel, but his senior status precluded his voting on the en banc rehearing question.


For CBM Review: _Claims_ Must be Directed to Financial Service

CBM Review: Must the Claims Be Expressly Limited to Financial Services?


30 thoughts on “CBM Review Keeps its Narrow Scope: Narrowly Surviving En Banc Challenge

  1. 5

    “Dearest Colleagues:
    This afternoon, I submitted my letter of resignation from my position as the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office.
    It has been a tremendous honor to serve our country for the past several years, first as Director of the Silicon Valley office, then as Deputy Director of the USPTO, and finally as Director of the USPTO. I am tremendously proud of all that we have accomplished together, and appreciate all of your support and dedication during my tenure.
    It is no exaggeration to say that the employees of the USPTO rival the best employees of any government agency or private company. The USPTO truly is a “best place to work”– because of you.
    I am confident that the leadership team in place will serve you well during this transition. In the meantime, I wish you all the best in your future endeavors at the USPTO.
    With affection and deep gratitude,

    Lee resigned. Heard here first.

      1. 5.1.1

        I have yet to hear what she has done to earn the ire of certain folks. All I have heard is hysteronics and half-baked conspiracy theories.

    1. 5.2

      Translation: I have done enough damage to the patent system to reach the $100 million dollar bonus from Google, and I have decided to take the Google bucks now and enjoy the rest of my life. So long s#ckers.


          We should make a list of all the things that she has done that weaken patents.

      1. 5.3.1

        Who is the person who can benefit them most from the position and can add to Trump’s fortune in the position? Name that person and you know the next Director. (Peter Thiel?)


          I am going to suggest an alternative possibility. Pres. Trump is already having a hard time staffing positions about which he really cares. I doubt that PTO director is a position about which he is all that concerned. I expect that the position just stays empty for a while (2018 at the earliest would be my guess, and I would not be surprised if the vacancy lasts all the way to 2020).


            Pres. Trump is already having a hard time staffing positions about which he really cares.

            Truly the least of his problems, although it’s a huge problem for everybody else.

            But then again he never cared about anybody else.

            Amazing to contemplate how naïve and ign0rant you had to have been to have not been able to see right through this p@ th etic con artists. Also amazing to contemplate how morally bankrupt you’d have to be to pretend that what’s going on now is “politics as usual.”

            But a lot of human beings are just walking sacks of excrement. Pretty much true of every Republikkkan, that’s for sure.

    2. 5.4

      Heard here first.

      Boy, you are right about that. I thought you were having me on when I read this an hour ago, but I see that you are right. You scooped all the major patent news outlets.

  2. 4

    anon, what we learn from interpretation of the AIA is that the law is anything but clear. First, there is the inherent incapability of statute to be drafted that would unambiguously apply in unforeseen situations. Second, and as a corollary, even when attempting to codify existing law, unforeseen interpretations can and often do operate to introduce dramatic changes.

    I give you as an example, 217(a)-(c) that have been interpreted in a way arguably inconsistent with the common law.

    I give you 103 that speaks about “prior art” in 102, and at the time of invention. There is only one portion of 102 that was considered to be prior art and that considered time of invention in ’52; and that was 102(a).

    Whatever the drafters had in mind in drafting 103 was ripped asunder by Judge Rich and crew. His interpretations had to be legislatively overturned or limited a number of times, the AIA being the most recent.

    1. 4.1

      “Inconsistency with common law” is far less of a concern for true statutory law, Ned.

      Leastwise, well written and self contained statutory law.

      Given your past predilections for elevating the Supreme Court to the (obviously incorrect) role of the branch of the government authorized by the Constitution to write the statutory law that is patent law, I must look askew at any of your inputs that appear to put common law on a pedestal.

      Whatever signal may be contained in your posts is surely lost in the noise of your incorrect adulation.

  3. 2

    According to the court, any other reading, would “give the CBM program a virtually unconstrained reach.”

    Pure unadulterated b@l0ney. Heckuva job, CAFC.

    Hopefully the Supremes will seize this easy opportunity for another severe beating. Sure, the CBM proceedings might disappear entirely shortly after the beating. It’d still be incredibly satisfying and worthwhile.

    1. 2.1

      Why would the Supreme Court take a case that has no importance just to thrash the Federal Circuit on what obviously is a close question?

      1. 2.1.1

        It’s a distraction. He thinks he is clever.

        Oil States. Oil States. Oil States.


          His own repeated calls to greatly expand the non-CBM options show his duplicity in his comment here.

          Malcolm being Malcolm.


          Could you please ID the amicus supporter the three different cert questions raised in the Oil States cert petition garnered to date?



          No. 16-712
          Oil States Energy Services, LLC, Petitioner
          Greene’s Energy Group, LLC, et al.
          Docketed: November 29, 2016
          Linked with 16A365
          Lower Ct: United States Court of Appeals for the Federal Circuit
          Case Nos.: (2015-1855)
          Decision Date: May 4, 2016
          Rehearing Denied: July 26, 2016

          ~~~Date~~~ ~~~~~~~Proceedings and Orders~~~~~~~~~~~~~~~~~~~~~
          Oct 13 2016 Application (16A365) to extend the time to file a petition for a writ of certiorari from October 24, 2016 to November 23, 2016, submitted to The Chief Justice.
          Oct 14 2016 Application (16A365) granted by The Chief Justice extending the time to file until November 23, 2016.
          Nov 23 2016 Petition for a writ of certiorari filed. (Response due December 29, 2016)
          Dec 12 2016 Waiver of right of respondent Michelle K. Lee, Director, Patent and Trademark Office to respond filed.
          Dec 19 2016 Order extending time to file response to petition to and including January 30, 2017.
          Jan 30 2017 Brief of respondent Greene’s Energy Group, LLC in opposition filed.
          Feb 14 2017 Reply of petitioner Oil States Energy Services, LLC filed.
          Feb 15 2017 DISTRIBUTED for Conference of March 3, 2017.
          Feb 27 2017 Response Requested from Michelle K. Lee, Director, Patent and Trademark Office. (Due March 29, 2017)
          Mar 22 2017 Order extending time to file response to petition to and including April 28, 2017.
          Apr 28 2017 Brief of Federal Respondent in opposition filed.
          May 15 2017 Reply of petitioner Oil States Energy Services, LLC filed.
          May 16 2017 DISTRIBUTED for Conference of June 1, 2017.
          Jun 5 2017 DISTRIBUTED for Conference of June 8, 2017.

      2. 2.1.2

        Because CAFC bashing is a fun family activity. But they won’t grant cert unless by some miracle (or curse) CBM is continued beyond intended sunset via Congressional action.

  4. 1

    Another vestige of abysmal Congressional law making that invites judicial “interpretations,” when the clearly better path for statutory law is to reduce need (and thus opportunity) for judicial muckery.

Comments are closed.