Whither (more likely wither) CBMs

Under the America Invents Act, the USPTO is to stop accepting petitions for review of covered business method patents after September 16, 2020. Given the various other priorities Congress will be dealing with between now and then, it appears virtually certain that Congress will not do anything to prevent the scheduled sunset of this transitional proceeding.

Two years ago, the House Judiciary Committee’s Subcommittee on Courts, Intellectual Property and the Internet held hearings on the upcoming sunset of the CBM program, and even back then the statistics did not bode well for its continuance. Now, the writing on the wall is even clearer. According the USPTO statistics, 589 CBM petitions have been filed since inception of the program in 2012, but in only three of the last twelve months have any CBM petitions been filed at all. In the 2018 hearings, both subcommittee members and witnesses espoused a wide range of views, but with relatively little vehemence. Other than a few blog post/law review commentaries, virtually nothing happened in the wake of the hearings.

The 2018 commentators opined on whether the CBM procedure was successful in knocking out the truly low quality business method patents in the early days or whether CBMs went largely unused because of the uncertainties and prerequisites (e.g., which patents qualified as CBM patents, whether the petitioner had been charged with infringement), coupled with the frequency with which the district courts have been dismissing infringement complaints based on Rule 12(b)(6) motions.

One question that Congress could look at in the future is whether to allow IPRs to address ineligibility, an issue that may be driven in part based on how the Federal Circuit comes out in the Uniloc v. Hulu dispute (regarding whether the PTAB has the power to deny a patent owner’s motion to amend claims in an IPR based solely on a Section 101 patent eligibility challenge). Oral argument in that case remains scheduled for May 7, 2020, though of course it is unclear whether this date will hold due to virus-based disruptions to the court’s normal operations.

To the extent the PTAB becomes involved in IPR-based patent eligibility determinations in deciding whether to allow or reject proposed substitute claims, there could be opportunity to see whether the PTAB is considered successful in how it handles this issue. If so, the AIA could be amended to allow 101-based arguments in the petitions themselves.

For now, though, all we can say is: CBMs, we hardly knew ye.

*The perspectives expressed in the Bilski Blog, as well as in various sources cited therein from time to time, are those of the respective authors and do not necessarily represent the views of Fenwick & West LLP or its clients.