Federal Circuit rejects Google’s petition for rehearing


On April 4, 2017, the United States Court of Appeals for the Federal Circuit issued a brief order denying panel rehearing and denying rehearing en banc in Unwired Planet, LLC v. Google, Inc.

Google filed a petition for both panel rehearing and rehearing en banc. A response to the petition was invited by the court and filed by Unwired Planet, LLC. No reason for the denial of Google’s petition was provided by the Federal Circuit, which is typical. The original panel decision, authored by Judge Reyna and issued on November 21, 2016, found that the Patent Trial and Appeal Board (PTAB) was using the wrong definition for what constitutes a covered business method (CBM) patent.

A covered business method patent is defined as a patent that claims a method for performing data processing or other operations used in the practice, administration, or management of a financial product or service. Specifically excluded from the definition of a covered business method patents are those that relate to technological inventions. See 37 C.F.R. 42.301(a). To determine whether a patent is for a technological invention, the PTAB is supposed to consider whether the claimed subject matter recites a technological feature that is novel and unobvious over the prior art, and solves a technical problem using a technical solution. See 37 C.F.R. 42.301(b). Nevertheless, the PTAB had been finding patents to be CBM patents when they covered matter incidental to a financial activity or complementary to a financial activity. For more see Federal Circuit slams PTAB.

Judge Hughes did issue a separate concurring opinion in the decision denying the petition for panel rehearing. Hughes explained that he continues to believe that Versata Development Group, Inc. v. SAP America, Inc., 793 F. 3d 1306 (Fed. Cir. 2015) was incorrectly decided and that only in rare circumstances where the USPTO acts unconstitutionally or in complete disregard of the statutory limitations should review by the Federal Circuit extend to institution determinations.

Ultimately, Hughes concluded:

The en banc court is set to revisit the scope of an analagous bar on judicial review from inter partes proceedings in light of the Supreme Court’s decision in Cuozzo. Our decision there and any subsequent Supreme Court review will likely affect the question of whether Versata is and should remain good law. Thus, rehearing here is unnecessary.

Stay tuned.

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