Unwired Planet prevails over Google, with CAFC invoking image of a novel lighbulb
Unwired Planet, LLC (“Unwired”) appeals from the
final written decision of the Patent Trial and Appeal
Board (“Board”) in Covered Business Method Patent
Review No. 2014 -00006.
Google Inc. v. Unwired Planet, LLC, CBM2014-00006,
2015 WL 1570274 (P.T.A.B. Apr. 6, 2015) (“
CBM Final Decision ”). Because the Board
relied on an incorrect definition of covered business
method (“CBM”) patent in evaluating the
challenged patent, U.S. Patent No. 7,203,752 (the “’752 patent”), we
vacate and remand.
The Board's application of the "incidental to" and "complementary to" language
from the PTO policy statement instead of the statutory definition renders
superfluous the limits Congress placed on the definition of a CBM patent.
CBM patents are limited to those with claims that are directed to methods
and apparatuses of particular types and with particular uses "in the practice,
administration, or management of a financial product or service." AIA § 18(d).
The patent for a novel lightbulb that is found to work particularly well in
bank vaults does not become a CBM patent because of its incidental or complementary use in banks.
Bottom line: We hold that the Board's reliance on whether the patent claims
activities "incidental to" or "complementary to" a financial activity as the
legal standard to determine whether a patent is a CBM patent was not in accordance with law.
We do not reach the patentability of the challenged claims under section 101.
We vacate the Board's final written decision and remand the case
for a decision in the first instance, [*15] and in accordance with this opinion,
whether the '752 patent is a CBM patent.
See: 2016 U.S. App. LEXIS 20764