J.P. Morgan Chase LLC V. Intellectual Ventures II LLC: CBM Jurisdiction Survives Abandonment of CBM Claims
Addressing the issue of whether a patent owner can divest the Patent Trial and Appeal Board (PTAB or Board) of covered business method (CBM) jurisdiction, the Board found that a determination of initial jurisdiction for CBM patent review holds regardless of whether a petitioner has standing throughout the proceeding. J.P. Morgan Chase LLC V. Intellectual Ventures II LLC, Case No. CBM2014-00157 (PTAB, Jan. 12, 2016) (Droesch, APJ).
The Board “determined that the Petitioner had standing to file the petition for covered business method patent review on the basis that at least one claim was directed to a method for performing data processing used in the practice of a financial product or service.” Subsequently, the patent owner canceled a particular claim and argued that “the Petition should be dismissed for lack of standing because, after the disclaimer of [the canceled claim], the challenged patent is no longer a covered business method patent.”
The Board was not persuaded. Instead, the Board looked to the America Invents Act (AIA) § 18, which establishes the limitation on whomay file a petition, but states no other jurisdiction impediment.
In light of the lack of statutory language imposing a subject-matter limitation on jurisdiction other than at the time a CBM petition is filed, or persuasive authority challenging the plain meaning of the statue, the Board found that the “statutory requirements necessitate evaluation of Petitioner’s standing to file a petition for CBM patent review based on the point in time when the petition was filed.”
Accordingly, the Board concluded that despite the cancelation of the CBM claim, “the plain language of the AIA requires [the Board] to determine whether petitioner had standing to file a petition for CBM patent review at the time the petition was filed; not whether petitioner has standing throughout the proceeding.” Finding that the challenged patent contained at least one CBM claim at the time the petition was filed, the Board rejected the patent owner’s jurisdictional challenge.