United States: Non-CBM Claims May Be Subject To CBM Review

In Liberty Mutual Insur. Co. v. Progressive Casualty Insur. Co., CBM2012-00002, Paper 66 (Jan. 23, 2014), the Patent Trial and Appeal Board ("PTAB") affirmed that where at least one claim of a patent is directed to a covered business method ("CBM"), the PTAB has statutory authority to institute a CBM review as to any claim of that patent.

The claims of U.S. Patent No. 6,064,970 ("the '970 patent") relate to methods for determining automobile insurance premiums using monitored driving characteristics such as speed, miles driven, and rates of acceleration and braking. Liberty Mutual challenged claims drawn to methods of generating a database, insuring a vehicle operator, determining cost of insurance, and monitoring human operators. Although the these claims had survived an earlier ex parte reexamination, also initiated by Liberty Mutual, the PTAB found all challenged claims unpatentable in the CBM proceeding.

In its prior decision initiating the CBM review, the PTAB concluded that "a patent having one claim directed to a covered business method is eligible for review even if the patent includes additional claims." Paper 10. The PTAB relied primarily upon the statutory definition a CBM patent, which refers to "a patent that claims a method or corresponding apparatus." 37 C.F.R. § 42.301; Section 18(a)(1) of the Leahy-Smith America Invents Act.

In its Final Written Decision, the PTAB affirmed its earlier determination, rejecting Progressive's statutory construction that every challenged claim must be directed to a CBM. The PTAB commented that Congress could have phrased Section 18(d)(1) to refer to "a claim that is directed to a method or corresponding apparatus," but did not. Thus, a single claim meeting the requirements of Section 18(d)(1) qualifies the entire patent for CBM review.

Both patent owners and challengers should find the PTAB's analysis informative, as covered business method patent reviews will remain available until 2020. Given the broader scope of attacks available in CBM proceedings versus inter partes reviews (e.g., Sections 101 and 112), patent owners who are still prosecuting applications should consider segregating CBM and non-CBM claims in separate applications. Likewise, challengers who would otherwise file an inter partes review should consider whether any claim in the patent that may qualify as a CBM.

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