In an appeal from a final written decision of a “covered business method patent” review under Section 18 of the AIA holding the patent-at-issue invalid as claiming non-patent eligible subject matter, the Federal Circuit addressed a number of issues of first impression regarding covered business method patent review procedures in addition to affirming the PTO’s ultimate holding of invalidity. First, the court held that any issue may be reviewed on appeal, even if decided in the PTABs initial decision to proceed, so long as that issue is a part of or a predicate to the ultimate merits, e.g., the issue of whether the claims are covered business method claims (not “technological inventions”) is an appealable issue even though it is decided at the outset when the PTAB is merely making its initial decision whether to proceed. Here, the court affirmed the PTABs finding that the claims at issue are covered business method claims. Next, the court held that, in covered business method patent review proceedings, the PTAB shall use the broadest reasonable interpretation standard, and, in this case, its constructions were correct. The court next held that the requirements of Section 101 apply in a covered business patent review. Lastly, the court held that the claims at issue were properly held invalid under Section 101 as improperly claiming non-patent eligible subject matter, because the claims were directed to price determination and merely use a computer to improve the performance of that determination – not the performance of a computer. In his dissent, Judge Hughes argues that the determination that the claims at issue are covered business method patent claims, being made in the initial determination of whether to proceed with the review, should not have been subject to appeal.
Versata Development Group, Inc. v. SAP America, Inc., Case No. 2014-1194 (July 9, 2015); Opinion by: Plager, joined by Newman; Hughes, concurring in part and dissenting in part; Appealed From: USPTO, Patent Trial and Appeal Board. Read the full opinion here.