Covered Business Method : CAFC Alert

PTAB Decision to Institute a CBM is Final and Non-Appealable

| December 17, 2015

SightSound Technologies, LLC v. Apple Inc.

December 15, 2015

Precedential Opinion by Dyk, joined by Lourie and Hughes.


Apple filed petitions with the PTAB seeking CBM review of patents owned by SightSound under AIA. In the petitions, Apple argued that certain claims of the patents were invalid as anticipated under 35 U.S.C. § 102. The Board instituted CBM review finding that there was a reasonable likelihood that the asserted claims were anticipated or rendered obvious by prior art. However, while Apple’s petitions included alleged facts to support obviousness, the petitions did not specifically allege obviousness over the prior art. The Board initiated review on obviousness grounds anyway. During the CBM proceedings the Board gave SightSound extra time to respond to the obviousness grounds, but SightSound argued that it has been deprived due process to respond to the obviousness grounds on which the CBM review had been instituted. The PTAB entered a final decision based on the obviousness grounds from which SightSound appeals to the CAFC, but the CAFC rules that they are barred under 35 USC 314(d) and 35 USC 324(e) from reviewing the decision to initiate the CBM proceedings.

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CBM Petitions – Second Chances Can Be Tough

| June 17, 2015 L.P., Inc., and Expedia, Inc. v. Cronos Technologies, LLC (Case CBM2015-00047)

June 15, 2015

Before:  Jennifer S. Bisk, James B. Arpin, and Lynne E. Pettigrew, Administrative Patent Judges.  Opinion by Arpin.


The Patent Trial & Appeal Board (“PTAB”) decided not to institute a covered business method patent review (“CBM”) of any challenged claim of U.S. Pat. No. 5,664,110 (“the ‘110 patent”).  Travelocity, Priceline, and Expedia’s (“Petitioner”) joint request was denied because the Petition included “substantially similar arguments presented and the same references applied” in CBM2014-00082, an earlier Petition filed by Petitioner that was denied by the PTAB.

The PTAB expressly cautioned against taking a “second bite at the apple” and remarked that “a decision on a petition for covered business method review is not simply part of a feedback loop by which a petitioner may perfect its challenges through subsequent filings.”

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